DCT
5:18-cv-00392
Aqua Lighting Tech LLC v. Pentair Water Pool Spa Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aqua Lighting Technologies, LLC (Virginia)
- Defendant: Pentair Water Pool and Spa, Inc. (Delaware)
- Plaintiff’s Counsel: Trego, Hines & Ladenheim, PLLC; Sheridan Ross P.C.
- Case Identification: 5:18-cv-00392, E.D.N.C., 08/08/2018
- Venue Allegations: Venue is alleged to be proper because Defendant has its principal place of business in the State of North Carolina and has committed alleged acts of infringement, including manufacture, use, and sale, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s underwater LED lighting products for pools and spas infringe a patent related to controlling multi-color light assemblies using a standard power switch.
- Technical Context: The technology concerns the replacement of traditional, failure-prone incandescent pool lights with more durable and versatile multi-color LED systems designed to work with existing electrical infrastructure.
- Key Procedural History: The complaint alleges that during the prosecution of its own U.S. Patent No. 7,514,884, Defendant Pentair was made aware of the patent-in-suit when the USPTO examiner rejected Pentair's claims as anticipated by it. The complaint further alleges Pentair amended its application to distinguish its invention as having an external controller, while continuing to sell the accused products which allegedly feature an on-board controller as taught by the patent-in-suit. This history forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-23 | Priority Date for U.S. Patent No. 6,616,291 |
| 2003-09-09 | Issue Date for U.S. Patent No. 6,616,291 |
| 2003-10-28 | Provisional Application filed for Pentair's '884 Patent |
| 2005-04-28 | Non-provisional Application filed for Pentair's '884 Patent |
| 2009-04-07 | Issue Date for Pentair's U.S. Patent No. 7,514,884 |
| 2018-08-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,616,291, "Underwater Lighting Assembly," issued September 9, 2003.
- The Invention Explained:
- Problem Addressed: The patent describes conventional incandescent underwater lights for spas and pools as being unreliable, prone to failure from heat and jarring, and difficult to service, often requiring complex rear access or draining the pool for bulb replacement (Compl. ¶7; ’291 Patent, col. 1:29-44). Adding color variation required cumbersome snap-on lenses (’291 Patent, col. 1:26-28).
- The Patented Solution: The invention is an underwater lighting assembly using long-lasting LEDs arranged in "banks" (e.g., by color) on a circuit board within a waterproof housing (’291 Patent, col. 2:13-17). The key innovation is a controller, mounted on the same board, that interprets the cycling of a standard on/off power switch to change colors or activate pre-programmed "light shows," such as fading between colors (’291 Patent, col. 5:26-40). This allows for advanced lighting features using simple, existing two-wire electrical systems without the need for new multi-conductor wiring or switches (Compl. ¶10, 13).
- Technical Importance: This approach enabled a drop-in replacement for older incandescent lights that offered significantly enhanced functionality (multiple colors, dynamic effects) without requiring costly retrofitting of pool and spa electrical systems (Compl. ¶8).
- Key Claims at a Glance:
- The complaint asserts infringement of claims including independent claims 1 and 7 (Compl. ¶17, 20).
- Independent Claim 1 of the ’291 Patent recites the following essential elements:
- An underwater lighting assembly comprising: a waterproof housing for underwater submersion;
- a round front access LED board disposed within a water proof chamber of the housing;
- a plurality of LEDs and a programmable controller mounted on said board within the housing, the LEDs arranged in a plurality of banks; and
- a power supply that powers the controller and the LEDs, the controller configured to control the LEDs in response to switching of the power supply between on and off states.
- The complaint reserves the right to assert other claims, including dependent claims 2 and 3 (Compl. ¶15, 17).
III. The Accused Instrumentality
- Product Identification: The accused products are Pentair's IntelliBrite 5G, GloBrite, and AmberBrite lines of color-changing underwater LED lighting fixtures and replacement bulbs (Compl. ¶22, 26, 30).
- Functionality and Market Context: The complaint alleges these products are underwater LED lights for pools and spas that contain a plurality of LEDs on a circuit board, grouped into banks (Compl. ¶22, 26, 30). The core accused functionality is the products' method of control, whereby a user cycles the main power switch on and off a specific number of times to select different fixed colors or pre-programmed "light show modes" (Compl. ¶24). The complaint provides an image of the IntelliBrite 5G circuit board, showing an array of LEDs. (Compl. ¶23). A similar image is provided for the GloBrite product, showing its internal LED arrangement (Compl. ¶27). The complaint asserts these products utilize the patented technology to provide modern lighting features while using pre-existing two-wire systems (Compl. ¶18).
IV. Analysis of Infringement Allegations
- ’291 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An underwater lighting assembly comprising: a waterproof housing for underwater submersion; | The IntelliBrite 5G, GloBrite, and AmberBrite product lines allegedly consist of a waterproof housing for underwater submersion. | ¶22, ¶26 | col. 13:36 |
| a round front access LED board disposed within a water proof chamber of the housing; | The accused products are alleged to have a "round front access, LED board." The AmberBrite is specifically described as a replacement bulb for standard sockets. | ¶22, ¶30 | col. 13:38 |
| a plurality of LEDs and a programmable controller mounted on said board within the housing, the LEDs arranged in a plurality of banks; | The accused products allegedly contain a plurality of LEDs on a board, grouped into banks, and a controller located on the same board. An image of the Pentair AmberBrite 602065 shows an array of LEDs on a circuit board (Compl. ¶31). | ¶22, ¶24, ¶30 | col. 13:39-41 |
| and a power supply that powers the controller and the LEDs, the controller configured to control the LEDs in response to switching of the power supply between on and off states. | The controller in the accused products is allegedly configured to control the LEDs based on the cycling of the power supply. A product manual excerpt states: "turn the wall switch off/on a specific number of times" to select a color or show mode. | ¶22, ¶24 | col. 13:42-44 |
- Identified Points of Contention:
- Scope Questions: A central question may be the interpretation of "round front access LED board." The patent specification discusses "front access" in the context of replacing a bulb in a pre-existing housing without needing to access the rear of the fixture (e.g., ’291 Patent, col. 1:50-59). The litigation may explore whether the accused products, particularly those sold as integrated, sealed units, meet this limitation.
- Technical Questions: The complaint alleges the accused products contain a "programmable controller" on the LED board (Compl. ¶22). The case may require evidence establishing the presence and specific function of this component, and whether its operation of responding to power cycles to change modes aligns with the claim language and the patent's description of a controller that can "remember the last illumination color" and "advance to the next mode" (’291 Patent, col. 5:45-53).
V. Key Claim Terms for Construction
The Term: "programmable controller"
Context and Importance: This term is at the heart of the invention. The definition will determine whether the logic circuits used in Pentair's products fall within the claim scope. The dispute will likely center on what level of functionality and programmability is required to meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves use the general term "programmable controller" without specifying a particular type (e.g., microprocessor, ASIC) or requiring field-programmability, which may support a construction covering any controller with pre-set logic for responding to power cycles (’291 Patent, col. 13:39).
- Evidence for a Narrower Interpretation: The specification describes a specific implementation using a "preprogrammed computer algorithm" that can perform complex functions like fading and retaining memory of the last state through power-off cycles using a capacitor (’291 Patent, col. 4:58-62; col. 5:42-53). A defendant could argue this context limits the term to a controller capable of such specific, memory-based, algorithmic functions.
The Term: "arranged in a plurality of banks"
Context and Importance: This term defines how the LEDs are grouped. Its construction is important for determining if the physical layout of LEDs in the accused products infringes. Practitioners may focus on this term because the patent suggests banks correspond to different colors to enable color-switching and mixing (’291 Patent, col. 3:34-36; col. 7:9-11).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "banks" is not explicitly defined, which could support a broad interpretation covering any logical or physical grouping of LEDs that are controlled together. The complaint alleges the accused products' LEDs are "grouped into banks" (Compl. ¶22).
- Evidence for a Narrower Interpretation: The specification and claims consistently link the concept of "banks" to distinct colors (e.g., Claim 9 refers to three banks, "each of the banks having a plurality of LEDs being allocated for a different color") (’291 Patent, col. 14:34-36). This could support a narrower definition requiring distinct, color-specific groupings.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Pentair provides instructions and manuals that direct customers and installers to operate the accused products in an infringing manner—specifically, by cycling the power to change colors and shows (Compl. ¶24, 43).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint asserts that Pentair learned of the ’291 Patent during the prosecution of its own ’884 Patent application, when the USPTO examiner rejected its claims as being anticipated by the ’291 Patent. The complaint alleges that Pentair distinguished its own invention by arguing the ’291 Patent taught an on-board controller while its invention used an external one, and then proceeded to sell the accused products with an on-board controller, thereby knowingly infringing (Compl. ¶35-40, 45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of willfulness and pre-suit knowledge: Will the prosecution history of Pentair's own ’884 patent, where it was forced to distinguish its claims from the ’291 patent-in-suit, be deemed dispositive evidence that its subsequent sale of products with similar features constituted willful infringement?
- A second key question will be one of claim construction: Can the term "round front access LED board," which the patent specification links to the retrofitting of existing light housings, be construed to read on the design of Defendant's integrated, sealed lighting units?
- Finally, the case may turn on an evidentiary question of technical operation: Does the controller in the accused products function in a manner that fully meets the "programmable controller...configured to control...in response to switching" limitation, including the sequencing and memory functions described in the patent's specification?