DCT

3:23-cv-11123

Seasonal Specialties LLC v. National Christmas Products Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Seasonal Specialties, LLC v. National Christmas Products, LLC, 3:23-cv-11123, D.N.J., 02/05/2024
  • Venue Allegations: Venue is alleged to be proper as Defendant is a New Jersey entity with its principal place of business in the district, where it has also allegedly committed acts of patent infringement.
  • Core Dispute: Plaintiff alleges that Defendant’s pre-lit artificial holiday trees, which feature user-selectable lighting modes, infringe two patents related to systems and methods for switching decorative lights between a steady-on state and a special effects state.
  • Technical Context: The technology addresses a desire in the decorative lighting market for products that can display both a constant illumination and dynamic effects like twinkling, without requiring costly, complex wiring.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement via a letter on June 29, 2022, followed by detailed claim charts on January 27, 2023. This filing is a Second Amended Complaint.

Case Timeline

Date Event
2014-10-09 Priority Date for ’437 and ’265 Patents
2017-01-24 U.S. Patent 9,554,437 Issues
2018-09-18 U.S. Patent 10,080,265 Issues
2022-06-29 Plaintiff alleges providing Defendant with notice of infringement
2023-01-27 Plaintiff alleges providing Defendant with detailed claim charts
2024-02-05 Second Amended Complaint Filed

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

U.S. Patent No. 9,554,437 - "Decorative Light String Switchable Between Different Illumination States", Issued January 24, 2017

The Invention Explained

  • Problem Addressed: The patent describes the high cost and complexity of manufacturing decorative light strings that can switch between a simple "steady-on" mode and a "special effect" mode (e.g., twinkling or flashing) (Compl. ¶12; ’437 Patent, col. 1:44-53). Conventional solutions required either multiple conductors to each bulb or expensive addressable circuits, making them impractical for the mass market (Compl. ¶12; ’437 Patent, col. 1:30-53).
  • The Patented Solution: The invention proposes a system that uses a standard two-wire power supply to achieve two distinct lighting modes. A "first switching circuit" (typically an integrated circuit, or IC, within a bulb) is programmed to produce a special lighting effect. However, its program cycle begins with a brief, initial "steady-on" state. A separate "second switching circuit" can rapidly and periodically interrupt the power flowing to the first circuit. These high-frequency interruptions repeatedly "reset" the first circuit to its initial steady-on state, preventing it from ever proceeding to the special effect part of its cycle. To the human eye, this rapid pulsing appears as continuous, steady illumination (Compl. ¶¶14-15; ’437 Patent, col. 4:21-56).
  • Technical Importance: This technology allows for the creation of dual-function decorative lighting products using low-cost components and standard wiring, a significant efficiency in a cost-sensitive market (Compl. ¶24).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a system) and 11 (a method) (Compl. ¶¶37, 43).
  • Independent Claim 1 (System) requires: (a) an electrically powered illumination element; (b) a "first switching circuit" containing a controller that produces a special lighting effect which initiates from a "steady on illuminated state"; and (c) a "second switching circuit" that periodically interrupts the current to the first circuit at a frequency sufficient to cause it to reset to its steady-on state, producing a plurality of steady-on pulses (Compl. ¶21; ’437 Patent, col. 7:21-col. 8:24).
  • Independent Claim 11 (Method) requires: (a) powering an illumination element; (b) controlling the current to produce a special effect that starts from an initial steady-on state; and (c) periodically interrupting that current at a frequency sufficient to maintain the steady-on state without proceeding to the special effect (Compl. ¶19; ’437 Patent, col. 9:6-27).
  • The complaint reserves the right to assert dependent claims 2-5 and 10 (Compl. ¶37).

U.S. Patent No. 10,080,265 - "Decorative Light String Switchable Between Different Illumination States", Issued September 18, 2018

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’437 patent, this patent addresses the same technical challenge of creating cost-effective, dual-mode decorative lighting systems (’265 Patent, col. 1:18-65).
  • The Patented Solution: The ’265 patent claims a system that operates on the same principle as the ’437 patent: using high-frequency power interruptions from a second circuit to repeatedly reset a first, special-effects circuit within a bulb to its initial "on" state (’265 Patent, col. 4:22-56). The language of independent claim 1 adds the explicit functional outcome that the resulting plurality of "on illumination pulses" causes "a viewer [to perceive] the illumination element as always on," emphasizing the psycho-visual effect that masks the rapid pulsing (’265 Patent, col. 6:18-22).
  • Technical Importance: This patent refines and extends the protection for the core inventive concept of using a reset-based mechanism to achieve dual lighting modes with simple hardware (Compl. ¶24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (a system) (Compl. ¶57).
  • Independent Claim 1 (System) requires: (a) an electrically powered illumination element; (b) a "first switching circuit" with a controller to produce a special effect, starting from an "initial on illuminated state"; and (c) a "second switching circuit" that periodically interrupts current to the first circuit, causing it to reset and produce a plurality of "on illumination pulses" such "that a viewer perceives the illumination element as always on" (Compl. ¶21; ’265 Patent, col. 6:1-22).
  • The complaint reserves the right to assert dependent claims 2-5 and 10 (Compl. ¶57).

III. The Accused Instrumentality

Product Identification

  • The accused products are pre-lit artificial Christmas trees sold under the name “Dunhill Fir Tree” (Compl. ¶25). The complaint specifies that its allegations apply to multiple models, including the 7.5ft, 9ft, and 10ft versions (Compl. ¶51, n.2).

Functionality and Market Context

  • The trees feature "Dual Color LED lights" that can display both Warm White and Multi-Color light (Compl. ¶26). Certain of these LEDs are identified as "special illumination LEDs" which contain an integrated circuit (IC) that enables a default "Fading" effect (Compl. ¶¶26-27).
  • The product includes a "mode selector" on a main circuit board that allows a user to switch between the default "Fading" mode and a "Steady On" mode (Compl. ¶27). The complaint alleges that when "Steady On" is selected, the main circuit board's IC interrupts power to the special illumination LEDs, forcing them to remain in their initial on state and thus appear steadily illuminated (Compl. ¶27). The complaint references a product image from an online retailer showing the accused tree (Compl., Ex. C, p. 69).
  • The complaint alleges these products are sold through major retailers such as Amazon and Home Depot, and that advertisements instruct users on how to use the switchable functions (Compl. ¶¶31, 33).

IV. Analysis of Infringement Allegations

U.S. Patent 9,554,437 Infringement Allegations

The complaint includes images of the accused product's controller board, which it alleges is the claimed "second switching circuit" (Compl., Ex. C, p. 71). It also provides oscilloscope readings allegedly showing the continuous power supplied during the "Fading" mode versus the interrupted, or pulsed, power supplied during the "Steady On" mode (Compl., Ex. C, pp. 70, 72).

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an electrically powered illumination element The accused Dunhill Fir Tree contains "Dual Color LED lights," some of which are "special illumination LEDs" that can fade in and out. Ex. C, p. 69 col. 4:3-5
a first switching circuit in communication said illumination element for controlling the flow of current... said first circuit containing a controller for controlling the power to said illumination element to produce a predetermined special illumination visual lighting effect... initiating said lighting effect when powered up starting from an initial steady-on illuminated state... Each special illumination LED allegedly contains an integrated circuit (IC) that constitutes the "first switching circuit." This IC is alleged to control power to produce a fading effect that begins with a steady-on illumination before fading off and on. Ex. C, p. 70 col. 4:25-37
a second switching circuit, configured to periodically interrupt the flow of current to said first circuit, at an interruption frequency sufficient to cause the second circuit to reset to its steady on state without proceeding to said other special lighting effects... The product allegedly contains a controller on a circuit board, with a mode selector, that constitutes the "second switching circuit." When the user selects "Steady On" mode, this circuit is alleged to interrupt current to the ICs in the LEDs, causing them to reset to and remain in the "Steady On" state. Ex. C, p. 71 col. 4:38-44
  • Identified Points of Contention:
    • Scope Questions: A primary question may be whether the accused product's architecture—with an IC inside each LED bulb (the alleged "first circuit") and a separate controller board (the alleged "second circuit")—maps onto the claim language. The defense may argue the claims envision a more integrated system.
    • Technical Questions: The core of the dispute will likely concern the actual operation of the "Steady On" mode. The complaint's theory, supported by oscilloscope visuals, is that this mode works by high-frequency power interruption. A key question is whether the accused product's controller actually performs this specific reset-inducing interruption, or if it achieves a steady appearance through a different, non-infringing technical mechanism.

U.S. Patent 10,080,265 Infringement Allegations

The infringement allegations for the ’265 patent are substantively identical to those for the ’437 patent, with additional emphasis on the visual result. The complaint includes visuals showing the tree lit in "Steady On" mode, which it alleges creates the appearance of uninterrupted light despite the underlying power pulses (Compl., Ex. D, p. 81).

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an electrically powered illumination element The accused tree contains "special illumination LEDs" that are electrically powered. Ex. D, p. 78 col. 4:3-5
a first switching circuit... containing a controller for... produc[ing] a predetermined special illumination visual lighting effect... starting from an initial on illuminated state... Each special illumination LED allegedly contains an IC ("first switching circuit") that controls the LED to produce a "Fading" effect that begins with an initial on state. Ex. D, p. 79 col. 4:25-37
a second switching circuit, configured to periodically interrupt the flow of current to said first circuit, at an interruption frequency sufficient to cause the first circuit to reset to its on state... so that a viewer perceives the illumination element as always on. The product's controller board ("second switching circuit") allegedly produces a series of illuminating pulses when in "Steady On" mode, which are sufficient to keep the LEDs in their on state and create the visual appearance of an uninterrupted "Steady On" light to an observer. Ex. D, p. 81 col. 6:12-22

V. Key Claim Terms for Construction

  • The Term: "first switching circuit"

    • Context and Importance: This term's definition is critical, as the complaint maps it to the IC located within each individual special LED. Practitioners may focus on this term because if it is construed to mean a component external to or separate from the "illumination element," the infringement theory could fail.
    • Intrinsic Evidence for a Broader Interpretation: The specification states a "bulb" may "include a circuit or chip which controls the function of the illumination element," and that the two may be "combined into a single unit." (’437 Patent, col. 4:5-9). This may support an interpretation where the circuit is integral to the bulb assembly.
    • Intrinsic Evidence for a Narrower Interpretation: The claims recite the "first switching circuit" and the "illumination element" as distinct elements. The patent's circuit diagrams (e.g., Fig. 3) depict the microcontroller (MUC) as a separate block from the output "TO LED LIGHTS," which could support an argument that the claimed circuit is conceptually and physically separate from the light-emitting component itself (’437 Patent, Fig. 3).

  • The Term: "periodically interrupt the flow of current"

    • Context and Importance: This phrase describes the central mechanism for achieving the "steady-on" mode. The dispute will turn on what level and type of power modulation qualifies as an "interruption" that causes the required "reset."
    • Intrinsic Evidence for a Broader Interpretation: The specification describes the action in various ways, including sending a "reset signal/pulse" and "disconnecting and reconnecting power," suggesting the mechanism is not limited to one specific type of signal. (’437 Patent, col. 5:10-22).
    • Intrinsic Evidence for a Narrower Interpretation: A party could argue that "interrupt" requires a complete stop of current flow to zero, as opposed to mere voltage modulation. The precise characteristics of the pulsed waveform shown in the complaint's oscilloscope evidence will be subject to scrutiny (Compl., Ex. C, p. 72).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant, with knowledge of the patents, sells the Dunhill Trees with advertisements and instructions that encourage and enable end-users to operate the products in an infringing manner (i.e., by using the mode selector) (Compl. ¶¶40-44). Contributory infringement is based on allegations that the trees are a material component of the invention, are specially made for an infringing use, and have no substantial non-infringing uses (Compl. ¶¶45-50).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit actual notice. It states that Defendant received a notice letter in June 2022 and detailed claim charts in January 2023, yet continued its allegedly infringing activities, constituting an "unjustifiably high risk of infringement" (Compl. ¶¶28, 35, 54).

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

  • A core issue will be one of claim construction and technical mapping: can the patent's two-part "first switching circuit" and "second switching circuit" structure be construed to read on the accused product's architecture, where the alleged "first circuit" is an IC inside each LED and the "second circuit" is a separate, user-controlled circuit board?
  • A key evidentiary question will be one of functional operation: does the accused product's "Steady On" mode operate by "periodically interrupting" current to "reset" the internal LED controllers as claimed, or is there a fundamental mismatch in the technical mechanism? The parties' interpretation of the electronic evidence, such as oscilloscope readings, will be central to this determination.
  • Finally, the case may turn on intent for indirect infringement: assuming end-user operation constitutes direct infringement, the court will have to determine whether Defendant, after receiving notice of the patents, possessed the requisite specific intent to encourage its customers' infringing use through its product design, marketing, and instructions.