DCT

1:19-cv-00328

Lumenpulse Group Inc v. Insight Lighting Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00328, D.N.M., 04/08/2019
  • Venue Allegations: Venue is based on Defendant being a New Mexico corporation with its principal place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s in-ground and projection lighting products infringe two utility patents related to asymmetric wall-wash illumination and fixture installation mechanisms, and one design patent for an ornamental projection fixture design.
  • Technical Context: The dispute involves specification-grade LED lighting systems used in architectural and commercial environments to achieve specific illumination effects and simplify installation.
  • Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history between the parties.

Case Timeline

Date Event
2010-06-30 U.S. Patent No. D693,500 Priority Date
2013-11-12 U.S. Patent No. D693,500 Issue Date
2014-05-27 U.S. Patent No. 9,291,334 Priority Date
2014-05-27 U.S. Patent No. 9,638,381 Priority Date
2016-03-22 U.S. Patent No. 9,291,334 Issue Date
2017-05-02 U.S. Patent No. 9,638,381 Issue Date
2019-04-08 Complaint Filing Date

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

U.S. Patent No. 9,291,334: “Wall Wash Lighting System” (issued Mar. 22, 2016)

The Invention Explained

  • Problem Addressed: The patent describes a difficulty in conventional "wall wash" systems in achieving a uniform distribution of light on a vertical surface; such systems often create "non-uniform" illumination and unwanted "glare" by spilling light away from the target wall (’334 Patent, col. 1:10-16, col. 2:48-53).
  • The Patented Solution: The invention proposes a multi-component optical system to solve this. It combines an asymmetric optic that uses total internal reflection (TIR) to preferentially direct light toward the wall, an elliptical diffuser to spread the light horizontally, and a cover lens with a specially "etched portion." This etched portion scatters a fraction of the light to illuminate the area at the base of the wall, eliminating "dark spots" without needing to tilt the entire fixture (’334 Patent, Abstract; col. 3:7-15).
  • Technical Importance: This design provides a method for achieving more uniform and efficient wall illumination by precisely shaping the light output to counteract common lighting artifacts. (’334 Patent, col. 3:16-20).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶29).
  • Claim 1 requires:
    • An optical source.
    • An asymmetric optic device using TIR to create an asymmetric light output.
    • A diffuser to receive and diffuse light from the asymmetric optic.
    • A cover lens with an "etched portion" and a "non-etched portion," where the etched portion "asymmetrically scatter[s] only a portion" of the light to create an asymmetric output pattern.
    • The illuminated surface is substantially parallel to the axis of the asymmetric optic device.
  • The complaint reserves the right to assert additional claims (Compl. ¶29).

U.S. Patent No. 9,638,381: “In-Ground Light Fixture System With Improved Installation Closure Mechanism And Drainage” (issued May 2, 2017)

The Invention Explained

  • Problem Addressed: The patent identifies that conventional in-ground linear lighting systems can be "difficult to install" and often require "special tools and hardware." They are also "susceptible to water damage" due to their outdoor environment (’381 Patent, col. 1:20-25).
  • The Patented Solution: The invention is a two-part system comprising a linear light fixture and a "linear blockout structure" (an in-ground housing). A key feature is the installation mechanism, which includes a hinge on one side and a corresponding fastening structure on the other. The fixture is rotated into the blockout on the hinge, and a "flexible clip" on the fixture snaps into an opening in the blockout structure, locking it in place without requiring separate tools (’381 Patent, Abstract; col. 2:56-65).
  • Technical Importance: This tool-less, rotational, snap-in mechanism is intended to simplify and accelerate the installation of in-ground lighting fixtures (’381 Patent, col. 1:20-22).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶44).
  • Claim 1 requires:
    • A linear light fixture.
    • A linear blockout structure with a chamber for the fixture.
    • A hinge structure with a first component on the blockout's sidewall and a second component on the fixture's flange, allowing the two to rotate relative to each other.
    • A fastening structure with a first component on the fixture's second flange and a second component on the blockout's second sidewall, which engage to hold the assembly together.
  • The complaint reserves the right to assert additional claims (Compl. ¶44).

U.S. Patent No. D693,500: “LED (Light Emitting Diode) Projection Fixture” (issued Nov. 12, 2013)

Technology Synopsis

  • This design patent protects the ornamental, non-functional appearance of an LED projection fixture. The claimed design encompasses the fixture's overall industrial aesthetic, including its round configuration, an aimable hinge with visible increments, a dual-compartment housing with cooling fins on one part but not the other, and the specific shape of the fins (Compl. ¶55, ¶59).

Asserted Claims

  • The single claim for the ornamental design as shown and described in the patent figures is asserted (Compl. ¶55).

Accused Features

  • The complaint alleges that the overall visual appearance of Defendant's "Pro-Spot" lights is "substantially the same as" or a "colorable imitation" of the patented design (Compl. ¶57-58).

III. The Accused Instrumentality

Product Identification

  • Defendant’s “Medley InGrade – MIG” line of in-ground mounted lighting and its “Pro-Spot” lights (Compl. ¶28, ¶43, ¶57).

Functionality and Market Context

  • The MIG product is a linear, in-ground LED lighting fixture intended for architectural applications (Compl. ¶28). The complaint specifically identifies the “Asymmetric Low Wallwash” optics option as infringing the ’334 Patent (Compl. ¶28). A graphic from the product brochure depicts this option projecting an asymmetric light pattern (Compl. p. 7). For the ’381 Patent, the complaint alleges the MIG product’s installation involves a "Luminaire Assembly" that mounts into a "Concrete Pour Box" (Compl. ¶46). An installation diagram included in the complaint shows the luminaire being connected to a housing set in the ground (Compl. p. 13).
  • The Pro-Spot product is a circular LED projection fixture with an aimable mounting bracket (Compl. p. 18). A product brochure image shows the fixture's die-cast aluminum construction, cooling fins, and rotatable mount (Compl. p. 18). The complaint alleges its ornamental design is what infringes the D’500 Patent (Compl. ¶58).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,291,334 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an optical source for generating light The MIG product contains an LED optical source. ¶30 col. 5:2-3
an asymmetric optic device for generating output light by total internal reflection (TIR)... intensity of the output light being asymmetric with respect to the axis of the asymmetric optic device The MIG product contains an asymmetric optic device that generates light by TIR; a product brochure graphic illustrates an asymmetric light pattern. ¶31 col. 5:4-9
a diffuser receiving and diffusing the output light from the asymmetric optic device to generate diffused light The MIG product's asymmetric optic device contains a diffuser, the effect of which is allegedly demonstrated in a product brochure graphic. ¶31 col. 5:10-12
a cover lens receiving the diffused light... the cover lens having an etched portion and a non-etched portion, the etched portion of the cover lens asymmetrically scattering only a portion of the diffused light... On information and belief, the MIG product cover lens has an etched and non-etched section, with the etched portion being responsible for refraction shown in photometric data files. A screenshot from an IES file viewer is provided as evidence of the refracted light pattern (Compl. p. 8). ¶32, ¶33 col. 5:13-22
wherein the surface being illuminated is substantially parallel to the axis of the asymmetric optic device The MIG product is designed for illuminating a vertical wall, as shown in a product brochure diagram illustrating a "36" SETBACK" application (Compl. p. 9). ¶34 col. 5:23-25
  • Identified Points of Contention:
    • Technical Question: A central factual question is whether the accused MIG product's cover lens contains a physical "etched portion" that performs the claimed "scattering" function. The complaint alleges this on "information and belief" (Compl. ¶33) and supports it with photometric data showing refraction (Compl. ¶32), which may or may not arise from the specific structure claimed.
    • Scope Question: Does the accused product's "asymmetric optic device... with a diffuser" (Compl. ¶31) meet two distinct limitations of the claim ("an asymmetric optic device" and "a diffuser"), or could it be argued that these are a single, integrated component?

U.S. Patent No. 9,638,381 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a linear light fixture The MIG product is a linear in-ground lighting fixture, identified as the "Luminaire Assembly." ¶45 col. 7:36
a linear blockout structure mountable in a base..., the linear blockout structure including a chamber... and side walls... engageable by flange portions... The MIG product has a "Concrete Pour Box" that acts as a linear blockout structure, into which the "Luminaire Assembly" is mountable. An installation guide diagram shows the assembly (Compl. p. 13). ¶46 col. 7:37-45
a hinge structure comprising a first hinge component on a first sidewall of the linear blockout structure and a second hinge component on a first flange portion of the linear light fixture... The complaint alleges the blockout structure has a first hinge component that rotatably engages a second hinge component on the light fixture, supported by an annotated diagram from the installation guide (Compl. p. 15). ¶47 col. 7:46-53
a fastening structure comprising a first fastening component on a second flange portion of the linear light fixture and a second fastening component on a second sidewall of the linear blockout structure... The light fixture allegedly has a first fastening component on its flange that engages a second fastening component on the blockout's sidewall to hold the assembly together, also supported by an annotated installation diagram (Compl. p. 16). ¶48 col. 7:54-61
  • Identified Points of Contention:
    • Technical Question: Will the evidence show that the components identified in the accused product's installation diagrams actually function as a "hinge structure" that permits rotation and a distinct "fastening structure" that engages to lock the fixture in place, as claimed?
    • Scope Question: Does the accused product's installation mechanism, which appears to be a form of snap-fit closure, fall within the scope of the claim terms "hinge structure" and "fastening structure" as they are used in the patent?

V. Key Claim Terms for Construction

For the ’334 Patent

  • The Term: "etched portion"
  • Context and Importance: This term appears to be a key structural limitation for the cover lens. Infringement may depend on whether the accused product literally contains a surface that has been "etched," versus achieving a similar optical effect (e.g., scattering or refraction) through other means like molding, surface texturing, or an applied film.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the function of the "etched portion 118" as "diffus[ing] the light such that the light is emitted... toward the portion of the wall closest to system 110," to eliminate "dark spots" (’334 Patent, col. 3:7-15). A party might argue that any surface feature that performs this specific light-scattering function should be considered within the scope of the term.
    • Evidence for a Narrower Interpretation: The plain meaning of "etched" implies a subtractive manufacturing process. The patent consistently uses this specific term and depicts it as a discrete feature ("18" in Fig. 1) designed to solve a specific problem at the "bottom of wall 22" (’334 Patent, col. 3:10-15), which may support a narrower construction limited to such a feature.

For the ’381 Patent

  • The Term: "hinge structure"
  • Context and Importance: The invention's goal of a simple, tool-less installation hinges on this structure. The dispute may turn on whether the mechanism connecting the accused fixture and its housing constitutes a "hinge structure" as claimed. Practitioners may focus on this term because if the connection is merely a pivot point or a friction fit, it may not meet this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim requires that the components engage "such that when the... fixture are being assembled, they are rotatable with respect to each other at the hinge structure" (’381 Patent, col. 7:49-53). This functional language could support an argument that any mechanism permitting the requisite rotation falls within the claim's scope.
    • Evidence for a Narrower Interpretation: The patent provides specific examples, such as "installation hinge 17" and "installation hinge structure 36" which mate and operate in concert (’381 Patent, col. 6:46-51). These depictions of interlocking components that define an axis of rotation may be used to argue for a narrower definition that excludes simpler pivot mechanisms.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that Defendant induced infringement by directing its "distributors, resellers and customers" to use the accused products in an infringing manner (Compl. ¶36, ¶50, ¶62). For the ’381 patent, this allegation may be supported by the referenced product installation guides, which allegedly instruct users on how to assemble the fixture in the claimed way (Compl. p. 14).

Willful Infringement

  • The complaint makes general allegations that Defendant "knew of Plaintiff, Plaintiff's patented product... or was willfully blind to its existence" for all asserted patents (Compl. ¶37, ¶51, ¶64). The complaint does not plead specific facts indicating pre-suit knowledge, such as a prior notice letter.

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

  • A primary issue for the ’334 patent will be one of factual proof and claim scope: does the accused product's cover lens physically incorporate an "etched portion," as alleged on information and belief, and does that feature perform the specific "asymmetric scattering" function required by the claim, or does it achieve its optical performance through a different, non-infringing technology?
  • For the ’381 patent, the case will likely involve a question of functional and structural equivalence: does the accused product’s snap-in installation mechanism operate as the distinct, two-part "hinge structure" and "fastening structure" claimed in the patent, or is there a fundamental mismatch in its mechanical operation that places it outside the claim scope?
  • Finally, the design patent claim will present a question for the ordinary observer: accounting for the prior art, is the overall ornamental design of the accused "Pro-Spot" light substantially the same as the D’500 patent's claimed design, such that a typical buyer would be deceived?