DCT

1:24-cv-08353

Signify Holding BV v. Atomi Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-08353, S.D.N.Y., 11/01/2024
  • Venue Allegations: Venue is alleged to be proper as Defendant is a New York corporation that resides in the district and maintains a regular and established place of business within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s smart LED lighting products infringe eight patents related to technologies for color control, string light configuration, wireless communication, device synchronization, thermal management, and power delivery.
  • Technical Context: The technology domain is connected or "smart" LED lighting, a significant and competitive consumer electronics market involving app-controlled, customizable lighting systems.
  • Key Procedural History: The complaint alleges Defendant received a series of actual notice letters regarding its infringement of the patents-in-suit on specific dates beginning in July 2021, which may form the basis for allegations of willful infringement.

Case Timeline

Date Event
2003-05-07 U.S. Patent No. 7,358,961 Priority Date
2005-09-27 U.S. Patent No. 7,802,902 Priority Date
2007-11-30 U.S. Patent No. 8,378,591 Priority Date
2008-04-15 U.S. Patent No. 7,358,961 Issues
2008-08-13 U.S. Patent No. 8,896,414 Priority Date
2009-06-05 U.S. Patent No. 9,184,497 Priority Date
2009-06-05 U.S. Patent No. RE49,320 Priority Date
2010-09-28 U.S. Patent No. 7,802,902 Issues
2012-09-12 U.S. Patent No. 9,188,318 Priority Date
2013-02-19 U.S. Patent No. 8,378,591 Issues
2014-11-25 U.S. Patent No. 8,896,414 Issues
2015-04-09 U.S. Patent No. 9,674,907 Priority Date
2015-11-10 U.S. Patent No. 9,184,497 Issues
2015-11-17 U.S. Patent No. 9,188,318 Issues
2017-06-06 U.S. Patent No. 9,674,907 Issues
2021-07-15 Defendant allegedly receives notice of '961 and '318 Patents
2022-08-15 Defendant allegedly receives notice of '591 Patent
2022-11-29 U.S. Patent No. RE49,320 Issues
2022-12-16 Defendant allegedly receives notice of '497, '414, and '902 Patents
2024-05-01 Defendant allegedly receives notice of '320 Patent
2024-10-25 Defendant allegedly receives notice of '907 Patent
2024-11-01 Complaint Filed

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

U.S. Patent No. 7,358,961 - "User Interface for Controlling Light Emitting Diodes"

Issued April 15, 2008

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty of achieving accurate spectral output (i.e., color) in conventional LED light sources, which typically adjusted intensity by increasing or decreasing the number of LEDs receiving a specified amount of direct current (Compl. ¶14; ’961 Patent, col. 1:48-54).
  • The Patented Solution: The invention provides a system with a user interface, such as a touch screen displaying a chromaticity diagram, that allows a user to select a desired color point. A controller then achieves this output by regulating the "variable time average flow" of current to a plurality of colored LEDs, a method intended to provide greater accuracy than prior art systems (Compl. ¶14; ’961 Patent, col. 2:1-4, Abstract). The graphical user interface is depicted in Figure 5 of the patent ('961 Patent, col. 5:4-12).
  • Technical Importance: This approach offered a more intuitive and precise method for users to control the color and intensity of multi-color LED lighting systems (Compl. ¶14).

Key Claims at a Glance

  • Independent claim 10 is asserted in the complaint (Compl. ¶48).
  • Essential elements of claim 10 include:
    • A LED light source with a plurality of colored LEDs operable to emit spectral outputs as a function of at least one current having a "variable time average flow."
    • A user interface, including a touch screen, operable to facilitate a user's selection of a color point corresponding to a spectral output.
    • A controller that controls the variable time average flow of current as a function of the user's selection.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,378,591 - "Light Output Device"

Issued February 19, 2013

The Invention Explained

  • Problem Addressed: The patent identifies a problem in controlling the on/off state or output level of individual lights within a string of LEDs while still allowing the string to be cut to a desired length by the user (Compl. ¶15; ’591 Patent, col. 1:19-25).
  • The Patented Solution: The invention describes a light output device with a series of light source arrangements, each having an associated control circuit. These circuits are linked to receive a serial data signal, allowing for independent control of each light. A key feature is that if the connector between any two arrangements is disconnected, the remaining lights connected to the power source continue to be independently controlled by the serial data signal ('591 Patent, Abstract, col. 1:30-49).
  • Technical Importance: This technology enables the creation of customizable and individually addressable LED string lighting products that can be shortened to fit a specific application without losing functionality (Compl. ¶15).

Key Claims at a Glance

  • Independent claim 1 is asserted in the complaint (Compl. ¶101).
  • Essential elements of claim 1 include:
    • A power connection.
    • A plurality of light source device arrangements connected in a line by an electrical connector adapted to carry a serial data signal.
    • A plurality of control circuits, one for each light source arrangement, providing independent control based on the serial data signal.
    • A condition wherein if the connector is disconnected, the remaining light source arrangements remain independently controlled.
    • Each control circuit comprises a control input to receive the serial data signal and a control output to output the signal "from which the one or more bits have been removed."
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,896,414 - "Updating Scenes in Remote Controllers of a Home Control System"

Issued November 25, 2014

  • Technology Synopsis: The patent relates to synchronizing settings, such as lighting scenes, across a network of devices including light units and multiple control devices. The invention's basic idea is to ensure that settings changed on one controller are updated across other controllers in the system ('414 Patent, Abst.).
  • Asserted Claims: At least claim 1 is asserted (Compl. ¶124).
  • Accused Features: The Atomi Smart Bridge is accused of infringing by enabling users to control and synchronize settings for multiple lights (Compl. ¶¶ 27, 127).

U.S. Patent No. 9,184,497 & RE49,320 - "Lighting Device with Built-in RF Antenna"

Issued November 10, 2015 and November 29, 2022, respectively

  • Technology Synopsis: These patents relate to a lighting device with a built-in RF antenna. The invention arranges metallic components, such as a heat sink, below a "virtual plane" running through the antenna to prevent interference and ensure a wide RF communication pattern despite the compact, metallic structure of an LED bulb ('497 Patent, Abst.).
  • Asserted Claims: At least claim 1 of each patent is asserted (Compl. ¶¶ 63, 82).
  • Accused Features: The Atomi Smart Color Bulb is accused of infringing by incorporating an RF antenna, a metal heat sink, and a specific arrangement of internal metallic components (Compl. ¶¶ 24, 67-72).

U.S. Patent No. 7,802,902 - "LED Lighting Fixture"

Issued September 28, 2010

  • Technology Synopsis: The patent describes a lighting apparatus where an LED module—containing at least one LED and an LED driver—is mechanically enclosed by a lighting fixture. The thermal management system includes a first printed circuit board for the LED and a second for the driver, facilitating heat transfer ('902 Patent, Abst.).
  • Asserted Claims: At least claim 12 is asserted (Compl. ¶145).
  • Accused Features: The Atomi Smart WiFi LED Wall Sconce Lights are accused of having a lighting fixture enclosing an LED module with a specific thermal management system comprising two printed circuit boards (Compl. ¶¶ 31, 152).

U.S. Patent No. 9,188,318 - "Light-emitting Diode Wave Guide Down Light Retrofit Fixtures"

Issued November 17, 2015

  • Technology Synopsis: The patent relates to a retrofit fixture for downlights. The system includes a mounting plate, a fastening device to couple the plate to an existing fixture, and a trim assembly containing a light guide and an LED light source that directs light into the side of the guide ('318 Patent, Abst.).
  • Asserted Claims: At least claim 1 is asserted (Compl. ¶162).
  • Accused Features: The Atomi Smart WiFi LED Ceiling Lights are accused of being retrofit fixtures that use a mounting plate and a trim assembly with a light guide and side-positioned LEDs (Compl. ¶¶ 33, 166-168).

U.S. Patent No. 9,674,907 - "Input Surge Protection Circuit and Method for a Non-Isolated Buck-Boost LED Driver"

Issued June 6, 2017

  • Technology Synopsis: The patent describes an LED driver with a surge protection circuit branch. This branch includes a variable impedance device that forms a high impedance path during normal operation but switches to a low impedance path during a surge condition to protect the driver's components ('907 Patent, Abst.).
  • Asserted Claims: At least claim 8 is asserted (Compl. ¶178).
  • Accused Features: The Atomi Smart WiFi LED Floodlights are accused of including an LED driver with a DC power source, a power factor correction (PFC) circuit, and a surge protection circuit branch containing a variable impedance device (Compl. ¶¶ 29, 182-186).

III. The Accused Instrumentality

Product Identification

  • The complaint accuses a range of Atomi-branded smart lighting products, including the Smart Color Bulb, Smart WiFi Color String Lights, Smart Bridge, Smart WiFi LED Floodlights, Smart Wall Lights, and Smart Ceiling Lights (Compl. ¶¶ 24, 26, 27, 29, 31, 33).

Functionality and Market Context

  • The accused products constitute a smart lighting ecosystem that allows users to control lighting color, brightness, scheduling, and scenes via a smartphone application (the "Atomi Smart App") (Compl. ¶¶ 53, 128). The products include color-changing bulbs, individually controllable string lights, and a network bridge to coordinate devices (Compl. ¶¶ 24, 26, 27). The complaint provides an image from Atomi's app showing a touchscreen color wheel used to control the Smart Color Bulb (Compl. ¶53, p. 18).
  • The complaint alleges these products are substantially similar to and in direct competition with Plaintiff's Philips Hue and Wiz brand products, and are sold through the same retail channels like Home Depot, Lowes, and Amazon (Compl. ¶23).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,358,961 Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
a LED light source including a plurality of colored LEDs operable to emit one of a plurality of spectral outputs as a function of at least one current flowing through said plurality of colored LEDs, each current of the at least one current having a variable time average flow; The Smart Color Bulb contains multiple colored LEDs on a circuit board, which allegedly emit different colors based on a controlled current with a variable time average flow. The complaint includes a photograph of the bulb's internal components showing these LEDs (Compl. ¶52, p. 17). ¶52 col. 2:1-4
a user interface operable to facilitate a first user selection of a first spectral output from the plurality of spectral outputs, the user interface including a touch screen operable to facilitate the first user selection of a first color point corresponding to the first spectral output; and The Atomi Smart App, operating on a smartphone, provides a touchscreen interface with a color wheel that allows users to select a specific color output for the Smart Color Bulb. The complaint provides a screenshot of this user interface (Compl. ¶53, p. 18). ¶53 col. 3:5-26
a controller in electrical communication with said user interface and said LED light source to control the variable time average flow of each current flowing through said plurality of colored LEDs as a function of the user selection of the first spectral output. The Smart Color Bulb contains a controller on a circuit board that is in electrical communication with the LEDs and receives commands from the user interface to control the current and thereby the light output. The complaint includes a photograph of this internal controller (Compl. ¶54, p. 18). ¶54 col. 2:1-4
  • Identified Points of Contention:
    • Technical Question: A central technical question may be whether the current supplied to the accused product's LEDs is controlled via a "variable time average flow" as required by the claim. While the complaint alleges this functionality and shows a controller, it does not detail the specific electrical method (e.g., pulse-width modulation) used, which could become a point of dispute regarding the scope of the claim term.

U.S. Patent No. 8,378,591 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a power connection for connecting to a power source; The Smart Color String Lights include a standard plug for connecting to a grounded electrical outlet. A user manual diagram illustrates this connection (Compl. ¶105, p. 39). ¶105 col. 1:31-32
a plurality of light source device arrangements arranged in a line...with an electrical connector arrangement...adapted to carry at least one serial data signal; The accused product consists of multiple light bulb arrangements connected in a line by an electrical connector. The complaint alleges this connector carries a serial data signal for control. ¶106 col. 1:33-38
a plurality of control circuits...for providing independent control of the light source device arrangement output based on the serial data signal, Each light source arrangement is associated with a control circuit, allegedly a TM1814 chip, that provides independent control over that light based on the data signal. A photograph shows this circuit (Compl. ¶107, p. 40). ¶107-109 col. 1:39-43
wherein when the connector arrangement between an adjacent pair...is disconnected, one or more remaining light source device arrangements...are independently controlled by the serial data signal; The complaint alleges that if a portion of the string light is disconnected, the remaining lights stay illuminated and remain independently controllable. A photograph depicts the product operating with a disconnected section (Compl. ¶110, p. 42). ¶110 col. 1:44-49
wherein each control circuit comprises: ...a control input configured to receive the serial data signal...and a control output configured to output the serial data signal from which the one or more bits have been removed. The complaint alleges the TM1814 control circuit has a data input (DIN) to receive the signal and a data output (DO) to forward the signal after its own control bits have been processed and removed, citing a circuit diagram from the chip's manual (Compl. ¶114, p. 44). ¶112-114 col. 2:10-21
  • Identified Points of Contention:
    • Scope Question: An issue for claim construction may be the meaning of "output the serial data signal from which the one or more bits have been removed." The dispute could turn on whether the accused product's protocol—where a chip reads its assigned data packet and forwards the remainder of the data stream—meets this specific "removal" limitation, or if the claim requires a more literal modification of the signal itself.

V. Key Claim Terms for Construction

For U.S. Patent No. 7,358,961:

  • The Term: "variable time average flow"
  • Context and Importance: This term defines the core technical mechanism for controlling the spectral output of the LEDs. The infringement analysis will depend on whether Defendant's current control method, whatever it may be, falls within the scope of this term. Practitioners may focus on this term because it distinguishes the invention from prior art methods that simply modulated the amount of direct current.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the term is inclusive of common techniques, stating that the current regulation "is based on varying the time average flow of current(s) (e.g, a DC level current or pulse width modulated current) through the colored LEDs" ('961 Patent, col. 6:25-28).
    • Evidence for a Narrower Interpretation: The background section criticizes conventional systems for their "inaccuracy of a desired spectral output" ('961 Patent, col. 1:53-54). A party could argue that "variable time average flow" should be construed as being limited to only those methods that achieve the improved accuracy touted by the patent, rather than any time-averaging method.

For U.S. Patent No. 8,378,591:

  • The Term: "output the serial data signal from which the one or more bits have been removed"
  • Context and Importance: This limitation is critical as it describes how each control circuit processes and passes along the control signal. Infringement hinges on whether the accused product's data protocol performs this specific function.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The Summary of the Invention describes the general process: "each control circuit responds to pre-allocated parts of the serial control word, and then removes these parts of the control word so that the next controller can respond to its control signal" ('591 Patent, col. 2:17-21). This could be read to cover any protocol where a node consumes its data and forwards the rest.
    • Evidence for a Narrower Interpretation: The language specifies removing bits "from" the signal itself. A party might argue this requires altering the original data stream, not simply reading a portion and forwarding an unaltered remainder. The embodiment in Figure 2, where a data string "110" becomes "10," could be cited to support a narrower interpretation requiring literal data stripping ('591 Patent, Fig. 2).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. § 271(b) for all asserted patents, based on Defendant allegedly marketing the infringing capabilities of its products and providing instructions and technical support that encourage infringing use (e.g., Compl. ¶¶ 57, 75, 94, 117). It also alleges contributory infringement under § 271(c), asserting that the accused products and associated software are not staple articles of commerce, have no substantial non-infringing uses, and are known by Defendant to be especially adapted for use in an infringing manner (e.g., Compl. ¶¶ 58, 76, 95, 118).
  • Willful Infringement: The complaint alleges that Defendant's infringement has been and continues to be willful. This allegation is based on Defendant's alleged pre-suit knowledge of the patents-in-suit, stemming from a series of notice letters Plaintiff sent on specified dates beginning July 15, 2021 (Compl. ¶¶ 35-40, 43, 56, 74, 93, 116).

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

  • A core technical issue will be one of operational correspondence: Does the evidence show that the accused Atomi products function in the specific manner required by the claims? This will likely involve detailed analysis of, for the '961 patent, the precise electrical method used to control LED color, and for the '591 patent, the data protocol used to communicate with individual string lights.
  • A central question for damages will be one of willfulness based on pre-suit knowledge: Given the complaint's specific allegations of notice letters sent on multiple, identified dates, a key focus for the court will be determining whether Atomi’s continued commercial activity after receiving such notice constituted objective recklessness sufficient to support a finding of willful infringement and potential enhanced damages.
  • A key question of claim scope will be one of definitional precision: The case may turn on the construction of key claim terms, such as whether "variable time average flow" ('961 patent) encompasses standard industry techniques for color mixing, and whether the data-forwarding protocol of the accused string lights constitutes a "remov[al]" of bits from the "serial data signal" ('591 patent).