Tektite Industries Inc v. Sirius Signal LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Tektite Industries, Inc. (New Jersey)
  • Defendant: Sirius Signal, LLC (California)
  • Plaintiff’s Counsel: Fox Rothschild LLP
• Case Identification: 2:24-cv-05941, D.N.J., 05/09/2024
• Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant contracted with Plaintiff in the district, had products manufactured there, sold products to consumers there, and initiated an Amazon patent enforcement proceeding against the New Jersey-based Plaintiff.
• Core Dispute: Plaintiff seeks a declaratory judgment that its electronic distress signal device does not infringe Defendant's patent, and further contends that the patent is invalid for obviousness and unenforceable due to incorrect inventorship and inequitable conduct during prosecution.
• Technical Context: The technology concerns electronic visual distress signal devices (eVDSDs), which are LED-based products designed as safer, reusable alternatives to traditional pyrotechnic marine flares.
• Key Procedural History: The complaint states this action was precipitated by an April 19, 2024, notification from Amazon, initiated by Defendant Sirius Signal, alleging that Plaintiff Tektite’s SOSEFLARE product infringes U.S. Patent No. 10,227,114. The complaint details a prior business relationship where Tektite designed and manufactured products for Sirius, which forms the basis for its allegations of incorrect inventorship and inequitable conduct.

Case Timeline

Date	Event
2014-06-06	U.S. Patent No. 10,227,114 Priority Date
2015-01-01	Approximate start of Tektite and Sirius product design collaboration
2015-08-15	Sirius C-1001 product launch on Amazon.com
2016-04-11	’727 Application filed, allegedly the first to disclose the "Pedestal Circuitry Design"
2018-06-11	’987 Application (which matured into the ’114 Patent) filed
2019-03-12	U.S. Patent No. 10,227,114 issued
2024-04-19	Tektite received Amazon patent infringement notice from Sirius
2024-05-09	Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,227,114 - "Visual Distress Signal Device"

The Invention Explained

• Problem Addressed: The patent’s background section describes the significant drawbacks of pyrotechnic flares used for maritime distress signals, including safety hazards for users, fire risk for vessels, and problems with storage and environmental disposal ('114 Patent, col. 2:1-6).
• The Patented Solution: The patent discloses an electronic, floatable visual distress signal device intended as a replacement for flares. The core of the claimed invention is an internal circuit assembly featuring an electrically conductive "elongated pedestal" that positions a light source (e.g., an LED) at a specific location relative to a lens member. This structure is designed to create a specific, regulated light pattern for signaling, as illustrated in embodiments like the one shown in Figure 45 of the patent family ('114 Patent, Abstract; col. 26:21-41; Compl. ¶41). The complaint reproduces a figure from a related patent to show this pedestal design, which it alleges is central to the dispute (Compl. ¶41, p. 15).
• Technical Importance: The described technology aims to create a durable, reusable, and regulation-compliant electronic distress beacon that overcomes the safety and logistical issues associated with single-use pyrotechnic flares ('114 Patent, col. 5:48-54).

Key Claims at a Glance

• The complaint asserts non-infringement of independent claim 12 (Compl. ¶46).
• The essential elements of independent claim 12 are:
  • A floatable visual distress signal device comprising a floatable body with a waterproof internal cavity.
  • A lens member coupled to the body.
  • An electrical circuit within the internal cavity, which includes a light source and a power source.
  • The circuit has first and second electrical contacts for the power source.
  • The circuit further comprises a first circuit assembly at a first axial position with a central opening, and a second circuit assembly with the light source located above the first.
  • An "elongated pedestal" made of conductive material connects the assemblies, forming the second electrical contact at one end.
  • The pedestal's first portion extends through the central opening of the first circuit assembly.
  • The light source is disposed at the other end of the pedestal to emit light through the lens member.
• The complaint reserves the right to address claims dependent on claim 12 (Compl. ¶48).

III. The Accused Instrumentality

Product Identification

• The Tektite SOSeFLARE product (Compl. ¶46).

Functionality and Market Context

• The SOSeFLARE is an electronic visual distress signal device sold by Tektite on platforms including Amazon.com (Compl. ¶2). The complaint provides photographs depicting it as a handheld, battery-operated device consisting of an orange, waterproof body and a transparent lens that encloses an LED light source (Compl. ¶48, p. 18). One of these photographs shows the accused SOSeFLARE disassembled into its primary components, illustrating the physical relationship between the orange body, the lens, and the light source module (Compl. ¶48, p. 18). The complaint alleges that this product was the target of an Amazon infringement report filed by Sirius Signal (Compl. ¶2).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,227,114 Infringement Allegations

Claim Element (from Independent Claim 12)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A floatable visual distress signal device comprising a floatable body comprising a waterproof internal cavity...	The SOSeFLARE device has an orange, floatable body which contains batteries in an internal cavity.	¶49	col. 26:5-7
a lens member coupled to the floatable body;	The SOSeFLARE device has a transparent lens member coupled to the orange floatable body.	¶49	col. 26:8-9
an electrical circuit disposed within the internal cavity, the electrical circuit comprising... a light source;	Plaintiff Tektite alleges this element is not met, contending the SOSeFLARE’s light source (LED) is located outside of the "internal cavity" of the orange "floatable body."	¶¶48-49	col. 26:10-15
...a first circuit assembly having a central opening...and a second circuit assembly comprising the light source...	The complaint does not provide sufficient detail for analysis of these elements.		col. 26:21-27
an elongated pedestal extending from a first end to a second end...the first portion extending through the central opening of the first circuit assembly;	The complaint does not provide sufficient detail for analysis of this element in the accused product, but alleges this "Pedestal Circuitry Design" was invented by its President.	¶54	col. 26:28-38

• Identified Points of Contention:
  • Scope Questions: The central infringement dispute presented in the complaint concerns the proper construction of the claim term "internal cavity." The case may turn on whether this term is limited to the hollow space within the opaque orange handle of the device, or if it can be construed more broadly to include the entire waterproof volume created when the lens member is attached to the body.
  • Technical Questions: Based on the complaint's allegations and accompanying photograph, a key factual question is where the "internal cavity" of the "floatable body" ends and the "lens member" begins (Compl. ¶48, p. 18). The evidence regarding the physical construction and sealing mechanism of the accused SOSeFLARE will be critical to determining if the light source is "disposed within" that cavity as required by the claim.

V. Key Claim Terms for Construction

• The Term: "internal cavity"

• Context and Importance: Tektite’s entire non-infringement argument rests on this term. Practitioners may focus on this term because Tektite’s position is that its light source is located outside what it defines as the "internal cavity" of the floatable body, thereby avoiding infringement of a key limitation (Compl. ¶49).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue that because the "floatable body" and "lens member" are coupled to form a "waterproof" device, the "internal cavity" reasonably refers to the entire sealed volume that protects the electronics from water, including the space under the lens. The patent claims a "floatable body comprising a waterproof internal cavity," which may support reading these elements together ('114 Patent, col. 26:6-7).
  • Evidence for a Narrower Interpretation: The patent’s figures, such as Figure 46, depict the "internal cavity" (1105) as the space primarily within the main housing structure (1100), which is distinct from the lens member (1400). The specification states the electronic assembly is "at least partially positioned within the internal cavity," which could suggest the cavity is a discrete area rather than the entire enclosed volume ('114 Patent, Fig. 46; col. 22:30-31).

• The Term: "elongated pedestal"

• Context and Importance: This term describes the core structure that Tektite alleges was added during prosecution to secure the patent's allowance and was invented by Tektite's President, not the named inventors (Compl. ¶¶43-44, 54). Its construction is therefore critical not only to infringement but also to Tektite's invalidity and unenforceability claims.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim describes the pedestal functionally as an "electrically conductive material" that extends between two circuit assemblies and forms an electrical contact. This language may support a construction that covers any conductive post-like structure that performs these functions ('114 Patent, col. 26:28-35).
  • Evidence for a Narrower Interpretation: The specification discloses a specific embodiment where the pedestal is a "metal screw" (1322 in Fig. 45), with the head forming one electrical contact and the threaded body supporting the second circuit assembly ('114 Patent, col. 26:40-44). A party could argue the term should be limited to this disclosed embodiment, particularly given the complaint's allegation that this specific design was used to overcome prior art rejections (Compl. ¶59).

VI. Other Allegations

• Incorrect Inventorship: The complaint alleges that Tektite’s President, Scott Mele, conceived of the "Pedestal Circuitry Design" corresponding to the "elongated pedestal" limitation in claim 12 and disclosed it to Sirius during their collaboration in 2015 (Compl. ¶¶54, 57). It is alleged that Sirius subsequently filed patent applications claiming this design without naming Mele as an inventor, rendering the '114 Patent unenforceable or invalid (Compl. ¶¶58, 62). The complaint includes a diagram allegedly proposed by a Sirius engineer that was adapted from Tektite's platform (Compl. ¶21, p. 6).
• Inequitable Conduct: The complaint alleges that Sirius and its named inventors intentionally withheld material prior art from the USPTO with deceptive intent (Compl. ¶74). The allegedly withheld art includes Tektite’s own pre-existing products (the NITE-FLIGHT light and TEKNA LITE 6 Strobe), which allegedly used a circuit design "the same as or substantially similar to the Pedestal Circuitry Design" (Compl. ¶¶66, 73). It is further alleged that Sirius was aware of other material patents, such as U.S. Patent No. 6,168,288, but failed to disclose them (Compl. ¶65).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: How will the court construe the term "internal cavity"? The outcome of the non-infringement claim hinges on whether this term is limited to the opaque handle of the device, as Tektite contends, or extends to the entire volume sealed by the lens, which would likely encompass the light source.
• A key factual and legal question will be one of inventorship and prosecution conduct: Does the evidence from the 2015 collaboration between the parties demonstrate that Tektite's President was a true inventor of the claimed "pedestal" structure? And did Sirius's failure to name him as an inventor or disclose Tektite's related prior art products to the USPTO rise to the level of inequitable conduct?
• A central validity question will be one of obviousness: Did Tektite's own prior art products, such as the NITE-FLIGHT light, combined with other available references, make the invention claimed in Claim 12 of the '114 Patent obvious to a person of ordinary skill in the art at the time of the invention?