DCT
2:17-cv-02878
Telebrands Corp v. Everstar Merchandise Co Ltd
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Telebrands Corp. (New Jersey) and Prometheus Brands LLC (Delaware)
- Defendant: Everstar Merchandise Co., Ltd. (Taiwan)
- Plaintiff’s Counsel: WALSH PIZZI O’REILLY FALANGA LLP; Cooper & Dunham LLP
- Case Identification: 2:17-cv-02864, D.N.J., 04/26/2017
- Venue Allegations: Venue is asserted based on Defendant doing business with retailers throughout the United States, including in the District of New Jersey.
- Core Dispute: Plaintiffs allege that Defendant’s "STAR LASER" brand of decorative lighting products infringes two U.S. patents related to laser projectors that create moving light patterns and incorporate specific mechanical assemblies for optical components.
- Technical Context: The technology concerns decorative laser projectors, a consumer product category popularized for providing a convenient alternative to traditional string lights for holiday and event lighting.
- Key Procedural History: Both patents-in-suit are subject to terminal disclaimers, which may limit their effective term to that of an earlier-expiring, related patent. The complaint does not mention any prior litigation or inter partes review proceedings involving the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2015-06-18 | Plaintiff begins using STAR SHOWER mark in commerce |
| 2015-12-03 | Earliest Priority Date for '775 Patent |
| 2015-12-03 | Priority Date for '673 Patent |
| 2017-01-17 | U.S. Patent No. 9,546,775 Issues |
| 2017-02-07 | U.S. Patent No. 9,562,673 Issues |
| 2017-04-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,546,775 - "Decorative Lighting Apparatus Having Two Laser Light Sources" (Issued Jan. 17, 2017)
The Invention Explained
- Problem Addressed: The patent describes a need to improve upon existing decorative laser lights, which it characterizes as having shortcomings such as inconveniently located switches and the use of "unreliable adhesives and tapes" to affix lenses that scatter the light ('775 Patent, col. 1:31-44).
- The Patented Solution: The invention is a decorative lighting apparatus with two distinct laser light sources (e.g., one red, one green) and a "motion assembly." This assembly includes at least one "articulating optical element," such as a diffracting lens, placed in the path of the light from both lasers. A motor drives the articulating element, causing the projected points of light to move across a surface in a predetermined, dynamic pattern, such as an "exploding firework" effect ('775 Patent, Abstract; col. 2:20-48). The mechanical arrangement is detailed in figures such as the exploded view of the motion assembly ('775 Patent, Fig. 5B).
- Technical Importance: This design allows a single, compact projector to create complex, multi-colored, moving light shows, offering a more visually dynamic and convenient alternative to static laser projectors or the manual labor of hanging string lights (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 15 (Compl. ¶25) and alleges infringement of one or more claims of the patent (Compl. ¶38).
- Independent Claim 1 requires, in part:
- A first laser light source and a second laser light source.
- A motion assembly with at least one "articulating optical element" disposed in the path of the light from both the first and second sources.
- At least one motor coupled to the articulating element to drive its movement.
- The assembly is configured so this movement causes both lights to move across a surface in a predetermined pattern.
- Independent Claim 5 recites a similar apparatus with two different colored laser sources, a switch with on/off settings, and a motion assembly with a motor-driven articulating element.
- Independent Claim 15 recites an apparatus with two different colored laser sources, a switch, and an "attenuation assembly" comprising at least one attenuator held in a recess formed by a first and second member.
U.S. Patent No. 9,562,673 - "Decorative Lighting Apparatus Having An Attenuation Assembly" (Issued Feb. 7, 2017)
The Invention Explained
- Problem Addressed: The patent identifies the same problems as the '775 Patent, highlighting that many decorative laser lights use "unreliable adhesives and tapes" that are prone to failure to affix the lenses that scatter light emitted by the lasers ('673 Patent, col. 1:30-33).
- The Patented Solution: The invention is a specific mechanical "attenuation assembly" for securely holding an attenuator (a light-scattering optic) in a fixed position. The claimed structure involves a first housing coupled to a second housing, which together form a recess to hold the attenuator. This housing pair is then held by a first base coupled to a second base, which form a "further recess" to secure the entire housing unit ('673 Patent, Abstract; col. 2:2-14). An exploded view illustrates this nested structure ('673 Patent, Fig. 6).
- Technical Importance: This invention provides a robust, multi-part mechanical solution for mounting optical components within a laser projector, aiming to improve reliability and durability over simpler methods like adhesives.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9 (Compl. ¶27) and alleges infringement of one or more claims of the patent (Compl. ¶46).
- Independent Claim 1 is directed to the attenuation assembly itself, requiring, in part:
- An attenuator.
- A first housing configured to be coupled to a second housing.
- A first base configured to be coupled to a second base.
- The coupled housings form a recess to hold the attenuator in a "substantially fixed position."
- The coupled bases form a "further recess" to hold the coupled housings in a "substantially fixed position."
- Independent Claim 9 recites a decorative lighting apparatus that includes at least one light source and the attenuation assembly of Claim 1.
III. The Accused Instrumentality
Product Identification
Decorative lighting products sold under the mark "STAR LASER" (Compl. ¶23).
Functionality and Market Context
The complaint alleges the STAR LASER product contains the core features of the patented inventions, including first and second laser light sources, a motion assembly with a motor-driven optical element that projects light in a predetermined pattern, and an attenuation assembly for holding optical components (Compl. ¶¶ 25-27). No probative visual evidence provided in complaint. Plaintiffs allege the accused product directly competes with their STAR SHOWER product line and is sold through at least one major U.S. retailer and on the internet (Compl. ¶28).
IV. Analysis of Infringement Allegations
'775 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first laser light source generating a first light; | The STAR LASER product includes a first laser light source. | ¶25 | col. 4:6 |
| a second laser light source generating a second light; | The STAR LASER product includes a second laser light source. | ¶25 | col. 4:6 |
| a motion assembly including: at least one articulating optical element disposed in a first path of the first light... and a second path of the second light... | The STAR LASER product's motion assembly includes an articulating element in the path of both light sources. | ¶25 | col. 7:45-53 |
| and at least one motor coupled to the at least one articulating element such that a movement generated by the motor drives the at least one articulating optical element, | A motor is coupled to and drives the articulating element. | ¶25 | col. 7:59-61 |
| the motion assembly being configured such that the movement... causes the first light and the second light to move across a surface... in a predetermined pattern. | The movement of the articulating element causes the projected light to move across a surface in a predetermined pattern. | ¶25 | col. 8:14-20 |
'673 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an attenuator; | The STAR LASER product includes an attenuation assembly with an attenuator. | ¶26, 27 | col. 8:3-5 |
| a first housing being configured to be coupled to a second housing; | The assembly includes a first housing coupled to a second housing. | ¶27 | col. 8:5-8 |
| and a first base being configured to be coupled to a second base, | The assembly includes a first base coupled to a second base. | ¶27 | col. 8:8-10 |
| the first housing being coupled to the second housing to form a recess designed and dimensioned to receive and hold the attenuator in a substantially fixed position, | The coupled housings form a recess that holds the attenuator in a fixed position. | ¶27 | col. 8:10-14 |
| and the first base being coupled to the second base to form a further recess designed and dimensioned to receive and hold the coupled first housing and second housing in a substantially fixed position. | The coupled bases form a further recess that holds the housing assembly in a fixed position. | ¶27 | col. 8:14-19 |
Identified Points of Contention
- Technical Questions: The complaint's infringement allegations closely track the language of the claims but provide limited detail on the specific structure of the accused STAR LASER product. A key factual question for the court will be whether the physical components of the accused device actually operate and are assembled in the manner required by the claims. For the '775 Patent, this involves how the "articulating optical element" is driven and whether it affects both laser beams simultaneously. For the '673 Patent, this involves a detailed comparison of the product's optical mount to the specific nested four-part "housing" and "base" structure recited in the claims.
- Scope Questions: The dispute may raise questions about the scope of the claim terms. For instance, regarding the '775 Patent, does the accused product's mechanism for creating light movement meet the definition of a "motion assembly" with an "articulating optical element" as understood in the context of the patent? For the '673 Patent, does the accused product's structure for holding an optic meet the specific limitations of two separate pairs of components (housings and bases) forming two distinct recesses?
V. Key Claim Terms for Construction
For the '775 Patent
- The Term: "articulating optical element"
- Context and Importance: This term is the central component of the claimed "motion assembly." Its construction will determine the breadth of the claim and whether various types of moving optics fall within its scope. Practitioners may focus on this term because its definition is crucial to distinguishing the invention from prior art and to determining if the accused device's specific motion-creating component infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the term is not limited to one specific structure, stating it "can include a diffracting element" ('775 Patent, col. 2:16-18) and that the resulting motion can be varied (e.g., circular, oscillating, spiral) ('775 Patent, col. 8:40-44). This may support a construction covering a range of moving optical components.
- Evidence for a Narrower Interpretation: Embodiments described in detail show specific gear-driven mechanisms ('775 Patent, Fig. 5B, col. 7:45-53). A party could argue that the term should be construed more narrowly to reflect these specific disclosed embodiments, particularly if they are presented as the solution to the problems identified in the background.
For the '673 Patent
- The Term: "a first housing being coupled to a second housing" and "a first base being configured to be coupled to a second base"
- Context and Importance: These related terms define the specific four-part mechanical structure at the core of the claimed "attenuation assembly." The infringement analysis for the '673 Patent will depend entirely on whether the accused product can be shown to have this distinct, nested structure of a housing-pair held within a base-pair.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "housing" and "base" should be interpreted functionally, to mean any components that respectively enclose the attenuator and anchor the enclosure, regardless of their specific shape or material.
- Evidence for a Narrower Interpretation: The claim language explicitly requires four distinct components forming two different recesses. The patent figures ('673 Patent, Fig. 6) show this specific arrangement with an "attenuator lower housing (602)," "attenuator upper housing (610)," "attenuator lower base (604)," and "attenuator upper base (608)." A party will likely argue that the terms must be limited to this disclosed four-part structure, and that an assembly with fewer or differently arranged components would not meet the claim limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement, stating on information and belief that Everstar encourages, markets, and promotes the infringing product, thereby causing its customers to directly infringe (Compl. ¶39, ¶47).
- Willful Infringement: Willfulness is alleged based on the assertion that Everstar’s infringement was "deliberate and intentional and with full knowledge of Telebrands' rights" (Compl. ¶29). The complaint establishes a basis for post-suit willfulness by stating that Everstar was put on notice of the patents "at least as early as the filing of this Complaint" (Compl. ¶40, ¶48). The basis for any pre-suit willfulness is not specifically detailed.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural mapping: The patents claim specific multi-part mechanical assemblies—the '775 Patent’s motor-driven "motion assembly" and the '673 Patent’s nested four-part "attenuation assembly." The case will likely turn on a factual, evidence-based analysis of whether the physical construction of the accused STAR LASER product can be mapped onto these precise claimed structures.
- A second key question will be one of claim construction: The court's interpretation of terms such as "articulating optical element" ('775 Patent) and the "housing" and "base" elements ('673 Patent) will define the legal scope of the patents. This will be critical in determining whether the accused product's design, even if functionally similar, falls within the boundaries of what the claims legally protect.