DCT
2:18-cv-01462
Mag LED Inc v. Apogee Lighting Group Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MAG-LED, INC. (New York) and Jesco Lighting Group, LLC (Delaware)
- Defendant: Apogee Lighting Group, Inc. (New York) and Frank Zarcone (New York)
- Plaintiff’s Counsel: La Reddola, Lester & Associates, LLP
- Case Identification: 2:18-cv-01462, E.D.N.Y., 03/08/2018
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York as all events giving rise to the claims purportedly occurred in Suffolk County, and all parties are alleged to reside or maintain a place of business in Suffolk County.
- Core Dispute: Plaintiffs allege that Defendants' A/C-powered flexible LED tape light products infringe two patents related to the construction and manufacturing of flexible light strips.
- Technical Context: The technology concerns flexible LED lighting strips designed to operate directly from rectified AC power, a product commonly used for architectural, accent, and under-cabinet lighting.
- Key Procedural History: The complaint alleges a contentious business history, asserting that Defendant Frank Zarcone, a former employee of Plaintiff JESCO and consultant for Plaintiff MAG-LED, misappropriated confidential technical information—including circuit designs—and provided it to Defendant Apogee to develop a competing product. The complaint references confidentiality and licensing agreements allegedly breached by the Defendants, which may be relevant to the allegations of willful and induced infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-01 | MAG-LED allegedly begins development of its A/C FlexTape product. |
| 2013-10-31 | Initial idea for custom circuit boards allegedly conceived. |
| 2013-12-01 | MAG-LED allegedly begins redesigning PCB and power distribution system. |
| 2014-04-01 | JESCO places first order for the MLed A/C Flex Tape. |
| 2014-05-01 | MAG-LED receives ETL safety certification for its product. |
| 2014-06-02 | Earliest Patent Priority Date (Provisional Application 62/006,382 filed). |
| 2014-07-22 | Defendant Zarcone allegedly begins employment at JESCO. |
| 2014-07-24 | Defendant Zarcone allegedly signs confidentiality agreement with JESCO. |
| 2014-12-01 | MAG-LED and JESCO allegedly execute a Nondisclosure Agreement. |
| 2015-03-31 | MAG-LED and JESCO allegedly enter a Product Design and Royalty Agreement. |
| 2017-03-01 | Apogee allegedly begins selling the accused Solara Flex System product. |
| 2017-06-06 | U.S. Patent 9,671,075 ('075 Patent) Issues. |
| 2017-08-29 | U.S. Patent 9,746,144 ('144 Patent) Issues. |
| 2018-03-08 | Complaint Filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,671,075, "Light Strip And Method For Making A Light Strip," issued June 6, 2017
The Invention Explained
- Problem Addressed: The patent's background describes issues with prior art flexible LED strips, noting that when power buses and lighting elements are on the same flexible circuit board, the current required for long strips can generate significant heat, degrading the performance and lifespan of the heat-sensitive LEDs (’075 Patent, col. 1:35-46).
- The Patented Solution: The invention proposes a light strip architecture that physically separates the main power-carrying conductors from the flexible substrate populated with LEDs. The patent describes extruding a flexible enclosure around a pair of conductors, with the separate LED-populated substrate positioned inside but spaced apart from them (’075 Patent, col. 2:5-12). Power is delivered from the main conductors to the individual light circuits on the substrate via a plurality of separate "connecting devices" or jumpers, which mitigates heat buildup on the substrate itself (’075 Patent, Abstract; col. 2:21-26).
- Technical Importance: This design aims to improve thermal management in high-voltage, AC-powered flexible lighting, potentially enabling longer, more reliable installations without requiring external transformers for every segment (’075 Patent, col. 2:51-58).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶49).
- Essential elements of independent claim 1 include:
- A pair of conductors.
- A flexible enclosure extruded around the pair of conductors.
- A lighting assembly with one or more flexible substrates populated with light circuits, where the substrates are positioned within the enclosure and spaced from the conductors.
- The lighting assembly has a plurality of "connecting devices" to electrically couple the assembly to the conductors.
- The connecting devices comprise separated pairs of leads, with first and second leads connecting to spaced points on the respective first and second conductors.
U.S. Patent No. 9,746,144, "Light Strip And Method For Making A Light Strip," issued August 29, 2017
The Invention Explained
- Problem Addressed: The ’144 Patent addresses the same technical problem as its parent ’075 Patent: the thermal degradation of LEDs in flexible light strips caused by heat generated from integrated power buses carrying significant current (’144 Patent, col. 1:35-46).
- The Patented Solution: The solution is structurally and conceptually identical to that of the ’075 Patent. It involves a flexible enclosure extruded around a pair of power conductors, which houses, but is physically spaced from, one or more flexible substrates carrying the light circuits (’144 Patent, Abstract). These substrates are individually connected to the main power conductors via jumpers or leads, which distributes the electrical connections and isolates the LED circuits from the primary heat-generating power bus (’144 Patent, col. 2:1-4, 2:15-26).
- Technical Importance: As with the ’075 Patent, the technical contribution is a design for AC-powered flexible light strips with improved thermal characteristics, intended to enhance reliability and simplify installation (’144 Patent, col. 2:51-58).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶50).
- Essential elements of independent claim 1 include:
- A pair of conductors.
- A flexible enclosure extruded around the pair of conductors.
- A lighting assembly with a plurality of flexible substrates populated with light circuits, where the substrates are positioned within the enclosure and spaced from the conductors.
- The lighting assembly has a plurality of "connecting devices" for electrical coupling.
- The flexible substrates are mounted in the enclosure and each connects separately to the pair of conductors.
- The connecting devices comprise separated pairs of leads connected to the substrates and to spaced points on the conductors.
III. The Accused Instrumentality
Product Identification
- The "Solara Flex System" and/or other "A/C powered LED flexible tape light products" sold by Defendant Apogee (Compl. ¶¶ 41, 49, 50).
Functionality and Market Context
- The complaint describes the accused product as a competing A/C-powered flexible LED tape light (Compl. ¶41). The core of the infringement allegation is that the Solara Flex System is "identical to and/or substantially similar in design and function" to the Plaintiffs' patented "MLed A/C Flex Tape" (Compl. ¶42). This alleged similarity is attributed to Defendants' purported misappropriation of Plaintiffs' confidential "circuit and resistor design, samples, and customers" (Compl. ¶5). The complaint also alleges the accused product is "inferior in its ratings, materials and qualities" to Plaintiffs' product (Compl. ¶44). The complaint describes a visual from Defendant's catalog, which allegedly depicts Plaintiff's product being used to advertise Defendant's competing system (Compl. ¶61, Exhibit 1).
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart or detailed, element-by-element infringement analysis. The infringement theory is predicated on the allegation that the accused product is "identical to and/or substantially similar in design and function" to the patented product (Compl. ¶42).
’075 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A pair of conductors; | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶49 | col. 2:16-17 |
| a flexible enclosure extruded around said pair of conductors; and | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶49 | col. 2:15-17 |
| a lighting assembly including one or more flexible substrates positioned within said enclosure and populated with a plurality of light circuits, said one or more substrates being spaced from said pair of conductors, said lighting assembly having a plurality of connecting devices... | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶49 | col. 2:2-4, 18-20 |
| ...said plurality of first leads being directly connected to a plurality of spaced points on a first one of said pair of conductors, said plurality of second leads being directly connected to a plurality of spaced points on a second one of said pair of conductors. | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶49 | col. 5:17-30 |
’144 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A pair of conductors; | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶50 | col. 2:16-17 |
| a flexible enclosure extruded around said pair of conductors; and | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶50 | col. 2:15-17 |
| a lighting assembly comprising a plurality of flexible substrates positioned within said flexible enclosure, spaced apart from said pair of conductors and populated with a plurality of light circuits... | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶50 | col. 2:1-4, 18-20 |
| wherein said plurality of flexible substrates are mounted in said flexible enclosure and each of said plurality of flexible substrates connects separately to said pair of conductors... | The complaint alleges the Solara Flex System contains this element by asserting the product is "identical to and/or substantially similar in design and function" to Plaintiffs' product, which embodies the patent (Compl. ¶42). | ¶50 | col. 5:17-30, 31-33 |
Identified Points of Contention
- Factual Question: The primary point of contention will be factual: does the accused Solara Flex System actually have the physical construction required by the asserted claims? As the complaint's infringement theory rests heavily on allegations of direct copying, discovery will focus on a direct technical comparison of the accused product's architecture against the claim limitations.
- Scope Question: A potential dispute may arise over the scope of "extruded around." The court may need to determine if this term implies a specific co-extrusion manufacturing process where the enclosure is formed around the conductors simultaneously, or if it could more broadly cover any process that results in a flexible enclosure surrounding the conductors.
- Technical Question: What is the precise nature of the electrical connection in the accused product? The case may turn on whether the accused product uses discrete "connecting devices" (like the jumpers shown in the patent) to link the LED substrate to the power conductors, or if it employs a different, potentially non-infringing, method of power distribution.
V. Key Claim Terms for Construction
The Term: "flexible enclosure extruded around said pair of conductors" (’075 Patent, Claim 1)
- Context and Importance: This term defines both the central structural relationship and a key manufacturing step of the invention. The infringement analysis will depend on whether the accused product's housing is manufactured by "extrusion" and is configured "around" the conductors in the manner contemplated by the patent.
- Intrinsic Evidence for a Broader Interpretation: The specification refers generally to extruding a "plastic material" to form a "flexible sleeve," which may support an interpretation that is not limited to a specific polymer or precise cross-sectional shape (’075 Patent, col. 2:9-10, 15).
- Intrinsic Evidence for a Narrower Interpretation: The detailed description and figures illustrate a specific extrusion die (Fig. 8) and a resulting enclosure with a particular asymmetrical profile and internal channels (Fig. 7). A party could argue the term should be limited by these specific embodiments, which show the material flowing around and embedding portions of the conductors and leads (’075 Patent, col. 7:26-40, col. 8:51-54).
The Term: "connecting devices" (’075 Patent, Claim 1)
- Context and Importance: This term is critical because it describes how the physically separate LED substrate receives power. Practitioners may focus on this term because its definition will determine what types of electrical links between the main conductors and the LED circuits fall within the claim scope.
- Intrinsic Evidence for a Broader Interpretation: The Summary of the Invention introduces the term broadly without limitation to a specific structure, suggesting it could cover various means of electrical coupling (’075 Patent, col. 2:2-4).
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently refers to these devices as "jumpers" or "leads" that are soldered between the conductors and the substrate (’075 Patent, col. 2:25-26, col. 5:20-22). This could support an argument that the term is limited to discrete, wire-like components and does not cover other connection methods, such as integrated traces or press-fit connectors.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant Zarcone induced and contributed to Apogee's infringement (Compl. ¶51). The factual basis for this claim is his alleged misappropriation of Plaintiffs' confidential design information and his role in "directing, enabling and/or assisting" Apogee in developing and selling the accused product (Compl. ¶¶ 5, 51, 82).
- Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the patents-in-suit (Compl. ¶52). While the complaint does not specify the basis for this knowledge (e.g., a notice letter), Plaintiffs may argue it can be inferred from the alleged deliberate copying of a product for which a patent application was pending and the close prior business relationship between the parties (Compl. ¶¶ 4, 24, 53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can Plaintiffs substantiate the foundational allegation that the accused "Solara Flex System" is, in fact, "identical or substantially similar" to their patented design? The outcome may depend less on fine points of claim construction and more on a direct factual comparison of the products' architecture, informed by the complaint's narrative of trade secret misappropriation.
- A key technical question will be one of structural correspondence: Does the accused product's construction truly embody the claimed architecture—specifically, a flexible enclosure "extruded around" separate power conductors, with a "spaced apart" LED substrate powered by discrete "connecting devices"—or does it utilize a technically distinct, non-infringing design?
- A central legal question will involve the scope of liability: Can Plaintiffs prove that Defendant Zarcone's alleged actions constitute a breach of contract and active inducement of infringement, potentially exposing him to personal liability for damages alongside the corporate defendant, Apogee?