DCT
1:25-cv-02769
Inventvest LLC v. ASB Glassfloor America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Inventvest LLC (Michigan)
- Defendant: ASB GlassFloor America, Inc. (New York) and ASB Systembau Horst Babinsky GmbH (Germany)
- Plaintiff’s Counsel: Reising Ethington PC
- Case Identification: 1:25-cv-02769, S.D.N.Y., 04/03/2025
- Venue Allegations: Venue is alleged to be proper over Defendant ASB GlassFloor America, Inc. because it resides in the district, and over Defendant ASB Systembau Horst Babinsky GmbH because it is a foreign entity not resident in the United States.
- Core Dispute: Plaintiff alleges that Defendants’ LED video sports flooring products infringe a patent related to floor assemblies with integrated, dynamic lighting.
- Technical Context: The technology involves replacing traditional static, painted markings on sports floors with embedded, reconfigurable lighting systems, enabling a single surface to be used for multiple sports and to display dynamic advertising.
- Key Procedural History: The complaint alleges that Plaintiff sent letters to Defendants in March 2024 offering a license and in October 2024 demanding they cease and desist. After follow-up, Defendants’ counsel replied in late January 2025, stating that the accused products are not covered by any valid claim of the patent-in-suit. These pre-suit communications are cited as evidence of knowledge for the purposes of willful and indirect infringement allegations.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-09 | '579 Patent Priority Date |
| 2011-04-05 | '579 Patent Issue Date |
| 2024-03-XX | Plaintiff sends letters to Defendants offering a license |
| 2024-10-XX | Plaintiff sends cease and desist letters to Defendants |
| 2024-10-24 | Defendants' counsel replies to Plaintiff |
| 2025-01-27 | Plaintiff's counsel contacts Defendants' counsel for a reply |
| 2025-01-29 | Defendants' counsel replies, denying coverage by the patent |
| 2025-04-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,918,579 - "Lighted Flooring," Issued April 5, 2011
The Invention Explained
- Problem Addressed: The patent addresses the costly and time-consuming process of altering sports floors, which traditionally required sanding and repainting to change court lines, logos, or other designs. ('579 Patent, col. 1:20-34).
- The Patented Solution: The invention is a floor assembly that embeds a light source below a transparent or translucent top surface, allowing for dynamic and easily changeable illumination. ('579 Patent, Abstract). One key aspect of the solution is the inclusion of a "light refracting portion" designed to direct light from the sub-surface source outwards at multiple angles, which can enhance the appearance and visibility of the displayed light. ('579 Patent, col. 8:1-8).
- Technical Importance: This approach enables a single flooring surface to be electronically reconfigured for different sports or to display changing advertisements, offering greater versatility and economy compared to static painted floors. (Compl. ¶10).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 7. (Compl. ¶28).
- Independent Claim 1 recites a floor assembly with three main elements:
- A top forming a portion of a floor surface with a light emitting portion.
- A light source located below and coupled with the light emitting portion.
- The light emitting portion itself comprising a "light refracting portion" to direct light from the source at "multiple angles."
- Dependent Claim 7 further specifies that the "light source comprises a monitor."
- The complaint reserves the right to assert additional claims. (Compl. ¶28).
III. The Accused Instrumentality
Product Identification
- The accused products are Defendants' ASB LumiFlex and ASB MultiSports flooring systems. (Compl. ¶¶ 21, 23).
Functionality and Market Context
- The ASB LumiFlex is described as a "full LED video sports floor made of glass," which can be used for "player tracking, advertising and game show design." (Compl. ¶¶ 21, 28). The complaint includes a photograph of the LumiFlex product in use for a basketball game, displaying intricate logos and designs. (Compl. ¶22).
- The ASB MultiSports product is alleged to feature "customizable LED game lines activated via touchscreen" that can be turned on or off, allowing the floor to be transformed for different events. (Compl. ¶33). A marketing image shows the MultiSports product capable of displaying different professional playing fields. (Compl. ¶24).
- The complaint alleges these products have been used in high-profile settings, including the NBA All-Star 2024 event, suggesting their commercial significance. (Compl. ¶44).
IV. Analysis of Infringement Allegations
'579 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A floor assembly comprising: a top forming at least a portion of a floor surface and having at least one light emitting portion | The ASB LumiFlex floor is a floor assembly with a glass top surface through which light is emitted. | ¶28 | col. 6:51-56 |
| at least one light source disposed below said light emitting portion and coupled with said at least one light emitting portion | The LumiFlex is described as a "full LED video sports floor," with LEDs located below the glass surface to provide illumination. | ¶28 | col. 6:26-30 |
| said light emitting portion comprising a light refracting portion, to direct light from the light source at multiple angles | The complaint presents a marketing image with added arrows to allege that light is directed from the floor at multiple angles. | ¶28 | col. 8:1-8 |
| From Dependent Claim 7: wherein said light source comprises a monitor | The LumiFlex "full LED video sports floor" is alleged to be the claimed "monitor." | ¶28 | col. 9:5-16 |
- Identified Points of Contention:
- Technical Questions: A central question is whether the accused products contain a "light refracting portion" as required by claim 1. The complaint’s evidence for this element consists of an annotated marketing screenshot, which may not be sufficient to establish the existence of a specific optical structure for refracting light, as opposed to light being diffused by a top layer or emitted at various angles by the LEDs themselves. (Compl. ¶28, p. 7).
- Scope Questions: The infringement allegation for claim 7 raises the question of whether the accused "full LED video sports floor" falls within the scope of the term "monitor." The patent specification discusses using an "LCD monitor of a well-known type" ('579 Patent, col. 9:5-6), and the court may need to determine if that language limits the claim to a conventional, self-contained unit or if it can be read more broadly to cover a large, modular, integrated flooring system.
V. Key Claim Terms for Construction
The Term: "light refracting portion"
- Context and Importance: This limitation appears to be a key technical differentiator of the invention. Proving that the accused products contain a structure that meets the definition of this term will be critical for the Plaintiff's infringement case. Practitioners may focus on this term because the complaint's supporting evidence is pictorial rather than a technical description of the accused product's optical components.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim defines the term functionally as being "to direct light from the light source at multiple angles." ('579 Patent, col. 11:18-20). The specification discloses that this portion can comprise various structures, including a "corner prism," "mirrors or fiber optics." ('579 Patent, col. 8:4-8). Plaintiff may argue that any component performing this function meets the claim.
- Evidence for a Narrower Interpretation: The patent figures depict the "light refracting element" as a discrete component, such as element 338' in Figure 7. Defendants may argue that the term requires a distinct structural element added for the purpose of refraction, rather than an inherent property of a diffusing top layer or an LED's primary optics.
The Term: "monitor" (from Claim 7)
- Context and Importance: The viability of the infringement allegation against Claim 7 hinges on this term's construction. The accused product is a specialized flooring system, not a typical consumer electronics monitor.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent explains that using a monitor allows "virtually any image" to be displayed, suggesting the term's meaning is tied to the function of displaying versatile, changeable images. ('579 Patent, col. 9:9-11). Plaintiff may argue that the ASB LumiFlex floor performs precisely this function and thus constitutes a "monitor."
- Evidence for a Narrower Interpretation: The specification explicitly refers to an "LCD monitor of a well-known type" and also mentions a "plasma monitor or an LED monitor." ('579 Patent, col. 9:5-16). Defendants may argue this language limits the term to a conventional, pre-fabricated display unit rather than a custom-built, large-scale assembly of LED panels that forms the floor itself.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b). It asserts that Defendants, with full knowledge of the '579 Patent, induced third parties like the National Basketball Association to directly infringe by using the accused flooring systems. (Compl. ¶¶ 43-44). The complaint provides a screenshot from the NBA All-Star 2024 event as evidence of such use. (Compl. ¶44, p. 10).
- Willful Infringement: While not pleaded as a separate count, the complaint alleges facts to support a claim for willfulness. It asserts that Defendants had pre-suit knowledge of the '579 Patent and the infringement allegations through letters sent in March and October 2024. (Compl. ¶¶ 35-36). The complaint further alleges that Defendants' infringement is "knowing[] and intentional[]," which provides a basis for seeking enhanced damages. (Compl. ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: does the accused ASB flooring system contain a distinct optical component that functions as a "light refracting portion" to direct light at multiple angles, as required by the patent's claims? Or does it achieve a similar visual effect through means not claimed, such as the inherent properties of its LEDs and glass surface?
- A key legal question will be one of definitional scope: can the term "monitor," as used in Claim 7 and described in the specification with reference to "well-known" types, be construed to cover a large-scale, modular, custom-integrated LED video floor, or is its meaning limited to more conventional, self-contained display units?
- An important evidentiary question will be whether the pre-suit correspondence is sufficient to establish the knowledge and intent required to prove willful and induced infringement, particularly given Defendants’ communicated position of non-infringement prior to the lawsuit.