DCT

3:17-cv-00555

Nox Lighting LLC v. Hartman

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:17-cv-00555, D. Nev., 09/11/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Nevada as it is the judicial district where Plaintiff Nox Lighting, LLC maintains its principal place of business.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its hardscape lighting products do not infringe Defendants' utility and design patents, and that certain of those patents are invalid, following receipt of a demand letter from Defendants' counsel.
  • Technical Context: The technology involves lighting fixtures specifically designed to be integrated into hardscape structures, such as retaining walls or steps, by being mounted between the masonry elements.
  • Key Procedural History: The complaint states that the action was precipitated by a demand letter dated June 9, 2017, sent by counsel for the Defendants (patent holders) to the Plaintiff (accused infringer). This letter created the "actual and triable controversy" that provides the jurisdictional basis for this declaratory judgment action.

Case Timeline

Date Event
2006-07-07 D'763 Patent Priority Date
2006-09-07 '398, '502, '170 Patents Priority Date
2008-09-09 D'763 Patent Issue Date
2011-11-29 U.S. Patent No. 8,066,398 Issue Date
2014-03-18 U.S. Patent No. 8,672,502 Issue Date
2017-04-11 U.S. Patent No. 9,618,170 Issue Date
2017-06-09 Date of Demand Letter from Defendants to Plaintiff
2017-09-11 Complaint Filing Date

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

U.S. Patent No. 8,066,398 - "Lamp and Illuminated Hardscape," Issued Nov. 29, 2011

The Invention Explained

  • Problem Addressed: The patent notes that conventional landscape lighting uses stand-alone lamps mounted in the ground adjacent to hardscape structures, rather than being integrated within them (ʼ398 Patent, col. 1:38-41). The patent describes a desire for lamps that "form an integral part of the hardscape" (ʼ398 Patent, col. 1:42-43).
  • The Patented Solution: The invention is a lamp assembly featuring a thin plate designed to be positioned between discrete, stacked hardscape elements, like retaining wall blocks (’398 Patent, col. 1:46-52). The weight of the blocks and friction hold the plate in place without separate fasteners (ʼ398 Patent, col. 4:59-62). A light fixture is attached to a flange depending from the plate, projecting light onto the hardscape surface below (’398 Patent, Fig. 2; col. 3:6-11).
  • Technical Importance: This design allows for the seamless integration of lighting into masonry structures during or after construction, providing illumination directly from the structure itself rather than from an external source.

Key Claims at a Glance

  • The complaint seeks a declaration of non-infringement of the patent generally. Independent claim 1 is representative:
  • Claim 1: A lamp adapted for mounting on a structure, comprising:
    • a plate positionable between at least two discrete, stacked elements, where contact retains the lamp;
    • a flange attached to the plate, oriented substantially at a right angle to the plate; and
    • a light fixture positioned facing the underside of the plate and a surface of the flange.

U.S. Patent No. 9,618,170 - "Lamp and Illuminated Hardscape," Issued Apr. 11, 2017

The Invention Explained

  • Problem Addressed: As part of the same patent family, the ’170 Patent addresses the same challenge of integrating lighting into hardscape structures like steps and walls (’170 Patent, col. 1:15-18).
  • The Patented Solution: The invention describes an illuminated hardscape system, such as a step with a tread and riser, where a lamp is mounted on the riser (’170 Patent, col. 6:14-16). The lamp includes a "supporting structure" (e.g., a plate) positioned between masonry elements, and a light fixture that "distributes light substantially parallel to the riser and not perpendicular thereto" (’170 Patent, col. 6:21-24). This directs light downward onto the tread below rather than straight out.
  • Technical Importance: This method provides targeted illumination for safety and aesthetics on stepped hardscapes by controlling the direction of light distribution relative to the vertical face of the structure.

Key Claims at a Glance

  • The complaint specifically challenges the validity of claims 1, 6, 8, and 13 (Compl. ¶38). Independent claims 1 and 6 are:
  • Claim 1: An illuminated hardscape structure comprising:
    • at least one tread of a step formed of discrete elements;
    • a lamp mounted on a riser above the tread, with a supporting structure positioned between two discrete elements; and
    • a light fixture attached to the supporting structure that distributes light "substantially parallel to the riser and not perpendicular thereto."
  • Claim 6: A method of constructing an illuminated hardscape, comprising:
    • assembling a hardscape structure from discrete elements, defining an outwardly facing surface; and
    • securing a lamp by positioning a supporting structure between elements such that its light source distributes light "substantially parallel to the outwardly facing surface and not perpendicular thereto."

U.S. Patent No. 8,672,502 - "Lamp and Illuminated Hardscape," Issued Mar. 18, 2014

  • Technology Synopsis: Continuing the same theme, the ’502 Patent claims a lamp for hardscape structures comprising a plate with a defined "perimeter" and "projection portion." The key limitation requires the light source to be positioned on the underside of the plate "within the given perimeter and proximate the projection portion." (Compl. ¶30).
  • Asserted Claims: The complaint seeks a declaratory judgment of invalidity of the patent, focusing on claims 1, 10, and 11 (Compl. ¶30).
  • Disputed Language: The complaint alleges the patent is invalid because claim terms such as "within the given perimeter and proximate the projection portion" and "distributes light away from, but not forwardly parallel" are ambiguous and lack written description support in the specification (Compl. ¶¶31, 32, 34).

U.S. Design Patent No. D576,763 - "Light Fixture," Issued Sep. 9, 2008

  • Technology Synopsis: This is a design patent claiming the ornamental, non-functional appearance of a light fixture, as depicted in its figures. The design features a rectangular face plate with end caps and a mounting plate extending from the top.
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown and described.
  • Accused Features: The complaint seeks a declaration that the ornamental design of the "Nox product" does not infringe the design claimed in the D’763 patent (Compl. ¶¶25-27).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentality as the "Nox product," which it refers to as a "LED Retaining Wall Light" (Compl. ¶16).

Functionality and Market Context

  • The complaint describes the Nox product as a hardscape lighting fixture that Plaintiff Nox Lighting, LLC offers for sale and sells (Compl. ¶¶5, 16). The complaint includes a reference to Exhibit 7, which contains photographs of the Nox product from the plaintiff's website (Compl. ¶16). This exhibit shows a lighting fixture with a horizontal mounting plate and a downward-facing light assembly, designed for installation in structures like retaining walls (Compl. ¶16; Ex. 7). The complaint does not provide further technical details on the product's operation or market position.

IV. Analysis of Infringement and Invalidity Allegations

As a complaint for declaratory judgment, this filing does not contain a detailed infringement analysis or claim chart from the patentee. Instead, it asserts non-infringement and/or invalidity for the patents-in-suit. Plaintiff Nox makes a blanket denial that its "Nox product" infringes any valid claims of the ’398, ’170, or D’763 patents (Compl. ¶¶18, 22, 26).

The complaint provides a more detailed narrative for its invalidity allegations against the ’502 and ’170 patents. It alleges that specific claim limitations in those patents are not supported by the written description and are ambiguous, rendering the claims invalid under 35 U.S.C. § 112 (Compl. ¶¶31, 32, 39, 40). For example, the complaint alleges that the underlined language in claim 1 of the ’170 patent, "that said light source distributes light substantially parallel to the riser," does not appear in and is not referenced by the specification (Compl. ¶¶38-39). A similar allegation is made regarding claim language in the ’502 patent (Compl. ¶¶30-31). The complaint also asserts that the claims of the ’398 patent are invalid as obvious over the prior art (Compl. ¶¶46, 48).

  • Identified Points of Contention:
    • Invalidity (Written Description & Indefiniteness): A primary dispute will be whether the claim terms "substantially parallel" (’170 Patent) and "within the given perimeter and proximate the projection portion" (’502 Patent) are adequately described and defined in their respective specifications. The complaint alleges these terms were added during prosecution without corresponding support, raising questions of validity under 35 U.S.C. § 112.
    • Infringement (Design Patent): For the D’763 patent, the analysis will turn on a visual comparison. The question for the court will be whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the Nox product believing it to be the patented design.
    • Invalidity (Obviousness): For the ’398 patent, the dispute will involve a factual inquiry into the prior art existing before the patent's priority date. The question will be whether the differences between the prior art and the claimed invention would have been obvious to a person of ordinary skill in the art at the time (Compl. ¶48).

V. Key Claim Terms for Construction

The complaint’s invalidity allegations highlight specific terms whose construction will be central to the case.

  • The Term: "substantially parallel" (’170 Patent, e.g., Claim 1)

  • Context and Importance: This term defines the required direction of light distribution. Its meaning is critical for both infringement and validity. Plaintiff Nox alleges the term is ambiguous, unclear, and lacks support in the specification, making it a focal point of its invalidity challenge (Compl. ¶¶38-40). Practitioners may focus on this term because its construction could determine the patent's enforceability.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent does not appear to explicitly define the term, which a party might argue entitles it to its plain and ordinary meaning, potentially covering a wide range of downward-angled light distributions.
    • Evidence for a Narrower Interpretation: The complaint alleges that the phrase "substantially parallel" is not present in the specification (Compl. ¶39). A defendant-patentee might point to the drawings, such as Figure 9, which shows light rays (50) projecting downward from a lamp (48) on a riser (70) onto a tread (66), to argue that the figures provide context for the term's meaning (’170 Patent, Fig. 9).

  • The Term: "within the given perimeter and proximate the projection portion" (’502 Patent, e.g., Claim 1)

  • Context and Importance: This phrase defines the required location of the light source relative to the mounting plate. Its validity is directly challenged by Nox for lacking written description support and being indefinite (Compl. ¶¶30-32, 34). The resolution of this issue may be dispositive for the ’502 patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party seeking a broad interpretation might argue that terms like "perimeter," "proximate," and "projection portion" have well-understood meanings to one of ordinary skill in the art, who could interpret the phrase by looking at the figures.
    • Evidence for a Narrower Interpretation: The complaint alleges this exact phrase is absent from the specification, which could support an argument that the claim is invalid for introducing new matter or lacking adequate description (Compl. ¶31). A court may look to figures like Figure 2, which shows the light fixture (18) positioned on the underside of the plate (12), to see if they provide the necessary support for this language (’502 Patent, Fig. 2).

VI. Other Allegations

The complaint, being a declaratory judgment action filed by the accused infringer, does not contain allegations of indirect or willful infringement.

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

This declaratory judgment action appears poised to turn on the resolution of two main categories of questions:

  1. A central issue will be one of validity under 35 U.S.C. § 112: Can the claim terms "substantially parallel" (in the ’170 Patent) and "within the given perimeter and proximate the projection portion" (in the ’502 Patent) survive challenges of indefiniteness and lack of written description, particularly given the complaint’s allegation that this specific language is absent from the patent specifications?

  2. A key question will be one of infringement scope: Assuming the patents are valid, does the specific structure and ornamental appearance of the Plaintiff's "Nox product" fall within the scope of the claims of the Defendants' patents? This will involve a technical comparison for the utility patents and a visual comparison for the design patent.

  3. A third question relates to obviousness: For the ’398 patent, the court will need to determine if the claimed invention—an integrated hardscape lamp held by a plate between masonry blocks—would have been an obvious development to a person skilled in the art, considering the prior art landscape at the time of the invention.