DCT
2:17-cv-03389
Telebrands Corp v. 1byone Products Delaware Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Telebrands Corp. (New Jersey)
- Defendant: 1byone Products (Delaware) Inc. (Delaware)
- Plaintiff’s Counsel: Walsh Pizzi Oreilly Falanga LLP; Cooper & Dunham LLP
- Case Identification: 2:17-cv-03389, D.N.J., 05/11/2017
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant regularly transacts and/or solicits business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s decorative laser light projector infringes patents related to systems for creating moving light patterns and for securely housing optical components.
- Technical Context: The technology involves consumer-grade laser projection devices designed as a convenient and dynamic alternative to traditional decorative lighting like string lights, particularly for holiday displays.
- Key Procedural History: The complaint certifies that this case is related to a prior action filed on April 26, 2017, Telebrands Corp. et al. v. Everstar Merchandise Co., Ltd., also pending in the District of New Jersey.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-01 | Plaintiff's STAR SHOWER® product line launched for holiday season |
| 2015-12-03 | Priority Date for U.S. Patent No. 9,546,775 |
| 2015-12-03 | Priority Date for U.S. Patent No. 9,562,673 |
| 2017-01-17 | U.S. Patent No. 9,546,775 Issued |
| 2017-02-07 | U.S. Patent No. 9,562,673 Issued |
| 2017-04-26 | Related action filed against Everstar Merchandise Co., Ltd. |
| 2017-05-11 | 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"
The Invention Explained
- Problem Addressed: The patent describes existing decorative laser lights as having shortcomings, including inconveniently located switches and the use of unreliable adhesives or tapes to affix lenses that scatter the laser light, which can lead to failure (ʼ775 Patent, col. 1:32-44).
- The Patented Solution: The invention is a decorative lighting apparatus with two distinct laser sources and a motion assembly. This assembly includes at least one motor-driven "articulating optical element" placed in the path of both laser beams, which causes the projected light to move across a surface in a predetermined pattern, such as an "exploding firework" effect (ʼ775 Patent, Abstract; col. 2:20-38).
- Technical Importance: This approach allows a single, compact device to project dynamic, multi-colored light patterns, offering consumers a novel and convenient alternative to installing static or traditional string lights (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 5 and 15 (Compl. ¶16).
- Independent Claim 1 requires:
- A first laser light source generating a first light.
- A second laser light source generating a second light.
- A motion assembly that includes:
- At least one articulating optical element disposed in the path of both the first and second lights.
- At least one motor coupled to the articulating element to drive it.
- The motion assembly is configured so that the motor's movement causes both lights to move across a projection surface in a predetermined pattern.
- The complaint does not explicitly reserve the right to assert other claims but notes infringement of "at least" the identified claims (Compl. ¶16).
U.S. Patent No. 9,562,673 - "Decorative Lighting Apparatus Having An Attenuation Assembly"
The Invention Explained
- Problem Addressed: The patent identifies a need for a more robust method of securing optical components in decorative laser lights, noting that many existing devices use "unreliable adhesives and tapes" to affix lenses that scatter light from potentially dangerous lasers (ʼ673 Patent, col. 1:30-33).
- The Patented Solution: The invention is an "attenuation assembly" that mechanically secures an attenuator (an optical element that scatters or reduces light power). The solution comprises a four-part structure: a first housing couples to a second housing to form a recess holding the attenuator, and a first base couples to a second base to form another recess that holds the coupled housing assembly in a "substantially fixed position" (ʼ673 Patent, Abstract; col. 2:3-14).
- Technical Importance: This design provides a secure, mechanical means of holding optical safety components in place, addressing the reliability and safety issues associated with using adhesives in such devices (Compl. ¶9; ’673 Patent, col. 1:21-33).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 9 (Compl. ¶17).
- Independent Claim 1 requires:
- 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 first and second housings form a recess that is designed and dimensioned to hold the attenuator in a substantially fixed position.
- The coupled first and second bases form a further recess that is designed and dimensioned to hold the coupled housing assembly in a substantially fixed position.
- The complaint notes infringement of "at least" the identified claims (Compl. ¶17).
III. The Accused Instrumentality
Product Identification
- The "GARDEN LASER LIGHT MOTION" product line (Compl. ¶15).
Functionality and Market Context
- The complaint alleges that the accused product is a decorative lighting device that directly competes with Plaintiff's STAR SHOWER® line of products (Compl. ¶19). The allegations state that the product contains functionality corresponding to both asserted patents, including first and second laser light sources, a motion assembly with a motor-driven articulating element, and an attenuation assembly where coupled members form recesses to hold attenuators (Compl. ¶¶16-17).
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 product includes a first laser light source. | ¶16 | col. 10:35-36 |
| a second laser light source generating a second light; and | The product includes a second laser light source. | ¶16 | col. 10:37-38 |
| a motion assembly including: at least one articulating optical element disposed in a first path of the first light being generated by the first laser light source and a second path of the second light being generated by the second laser light source; | The product includes a motion assembly with an articulating element configured to secure an optical element in the path of light from the first and second laser sources. | ¶16 | col. 10:40-45 |
| 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, | The product's motion assembly includes a motor coupled to the articulating element to impart movement to the optical element. | ¶16 | col. 10:46-49 |
| the motion assembly being configured such that the movement driving the articulating optical element by the motor causes the first light and the second light to move across a surface onto which the first light and the second light are being projected... | The movement imparted by the motor causes the light passing through the optical element to be articulated as it is projected onto a surface. | ¶16 | col. 10:50-55 |
- Identified Points of Contention:
- Technical Question: The claim requires a single "articulating optical element" to be in the path of both the first and second lights, driven by a motor to create a pattern. The complaint's allegations are conclusory. A key question for the court will be whether the accused product's mechanical structure, as illustrated in an exemplary embodiment in the patent's Figure 5B (Compl., Ex. A), actually uses one shared, motor-driven optical element for both light sources or employs a different mechanism.
- Scope Question: The meaning of "predetermined pattern" may be at issue. The patent specification discusses specific patterns like "exploding fireworks" (ʼ775 Patent, col. 8:31-32). The court may need to determine if this language limits the claim to complex, choreographed patterns or if it covers any repeatable, motor-driven movement.
'673 Patent Infringement Allegations
Figure 6 of the '673 Patent, included as part of Exhibit B to the complaint, provides an exploded view of an exemplary attenuation assembly (620) showing the nested relationship of the claimed housings and bases (Compl., Ex. B).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an attenuator; | The product includes an attenuator. | ¶17 | col. 9:12 |
| a first housing being configured to be coupled to a second housing; and | The product includes a first and second housing. | ¶17 | col. 9:13-14 |
| a first base being configured to be coupled to a second base, | The product includes a first and second base. | ¶17 | col. 9:15-16 |
| 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, and | The product's first and second housings are coupled to form a recess that is designed and dimensioned to hold the attenuator fixed. | ¶17 | col. 9:17-20 |
| 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... | The product's first and second bases are coupled to form a further recess that is designed and dimensioned to hold the housing assembly fixed. | ¶17 | col. 9:20-24 |
- Identified Points of Contention:
- Structural Question: The claim recites a specific four-part structure: two "housings" that hold an attenuator, which are in turn held by two "bases." The infringement analysis will hinge on whether the accused product's physical construction can be mapped onto these four distinct elements or if it achieves a similar result with a different, non-infringing structure.
- Scope Question: The court will need to determine if the terms "housing" and "base" are limited to the specific nested, clamshell-like structures depicted in Figure 6 of the patent (Compl., Ex. B), or if they can be construed more broadly to cover any set of four components that perform the recited coupling and securing functions.
V. Key Claim Terms for Construction
The Term: "articulating optical element" (’775 Patent, Claim 1)
Context and Importance: This term is the core of the '775 patent's "motion assembly." The definition of "articulating" will determine the scope of infringing movements. Practitioners may focus on this term because the patent's novelty lies in creating dynamic light patterns, and the nature of that movement is defined by this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the term can cover a range of effects, stating motion can include "movement, modulation, and/or articulation" (ʼ775 Patent, col. 7:42-44) and can cause the light to "rotate in a circular manner," "oscillate linearly," or "spiral" (ʼ775 Patent, col. 8:40-43).
- Evidence for a Narrower Interpretation: The primary embodiment describes a specific pattern of "exploding fireworks" (ʼ775 Patent, col. 8:31-32), and Figure 5B depicts a specific gear-driven mechanism. A party could argue that "articulating" requires a specific, complex, choreographed movement generated by such a mechanism, not just simple rotation.
The Term: "first housing", "second housing", "first base", "second base" (’673 Patent, Claim 1)
Context and Importance: Infringement of the '673 patent hinges on whether an accused product contains this specific four-part structural arrangement. The distinction between a "housing" and a "base" is critical.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide explicit definitions for "housing" or "base," which may support an argument that the terms should be given their plain and ordinary meaning, covering any four components that meet the functional requirements of coupling and holding.
- Evidence for a Narrower Interpretation: Figure 6 of the '673 patent illustrates a specific nested structure where the "housings" (602, 610) are the outer shells and the "bases" (604, 608) are inner components that directly hold the attenuator (606). This could support a narrower construction where "base" refers to an inner support structure and "housing" refers to an outer casing that contains the base.
VI. Other Allegations
- Indirect Infringement: The complaint alleges contributory and induced infringement, stating that Defendant encourages and promotes the use of the infringing product (Compl. ¶¶24, 32). These allegations are not supported by specific facts, such as references to user manuals or marketing materials that instruct on an infringing use.
- Willful Infringement: The complaint alleges that Defendant’s infringement is "deliberate and intentional" (Compl. ¶19). However, it only pleads that Defendant was put on notice of the patents "at least as early as the filing of the Complaint" (Compl. ¶¶25, 33). This pleading structure may only support a claim for post-filing willfulness, as it does not allege pre-suit knowledge of the specific patents-in-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the '775 patent will be one of mechanical equivalency: Does the accused product's motion assembly operate in the specific manner required by Claim 1, which recites a single articulating element in the path of two distinct light sources, or does it use a different, non-infringing mechanical configuration to create its light show?
- The core question for the '673 patent will be one of structural correspondence: Can the physical components of the accused product's attenuation assembly be mapped onto the patent's specific and hierarchical four-part structure of a "first housing," "second housing," "first base," and "second base," or is the claim limited to the specific nested design shown in the patent's figures?
- A key evidentiary question for damages will be one of knowledge and intent: Given that the complaint does not allege pre-suit knowledge, the viability of a willfulness claim will depend on whether Plaintiff can produce evidence of either pre-suit awareness of the patents or post-filing conduct by Defendant that is sufficiently egregious to be considered wanton and willful infringement.