DCT

1:25-cv-03342

Signify Holding BV v. Nanoleaf Canada Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-03342, S.D.N.Y., 04/22/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant is a foreign corporation subject to personal jurisdiction in the district and has committed acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s portfolio of smart LED lighting products infringes six patents related to color mixing control, radio frequency antenna design, modular lighting systems, and user interfaces.
  • Technical Context: The dispute centers on core technologies in the rapidly growing consumer market for wirelessly controllable, color-tunable smart lighting systems.
  • Key Procedural History: The complaint alleges that the parties have a history dating to at least 2016. A Nanoleaf affiliate, Nanogrid Limited, entered into a global licensing agreement with Plaintiff (then Philips Lighting) effective January 1, 2017, which included a license to U.S. Patent Nos. 7,358,961 and 8,378,591. That agreement expired at the end of 2019 and was not renewed. Plaintiff alleges it sent a series of notices to Defendant regarding patent infringement beginning in November 2018 and continuing through May 2024, identifying the various patents-in-suit over time. These allegations of prolonged, specific notice form the basis of the willfulness claims. U.S. Patent No. RE49,320 is a reissue of U.S. Patent No. 9,184,497, which was identified in a March 2021 notice.

Case Timeline

Date Event
2003-05-07 ’961 Patent Priority Date
2005-12-16 ’022 Patent Priority Date
2007-11-30 ’591 Patent Priority Date
2008-04-15 ’961 Patent Issue Date
2008-07-24 ’726 Patent Priority Date
2009-06-05 ’320 Patent Priority Date
2012-02-07 ’022 Patent Issue Date
2013-02-19 ’591 Patent Issue Date
2013-03-15 ’730 Patent Priority Date
2016-11-15 ’730 Patent Issue Date
2017-01-01 Global Licensing Agreement between Philips and Nanogrid Limited begins
2018-11-26 Plaintiff alleges sending first infringement notice regarding ’961 Patent
2019-12-31 Global Licensing Agreement expires
2020-01-24 Plaintiff alleges sending infringement notice regarding ’022 Patent
2020-04-07 ’726 Patent Issue Date
2021-03-09 Plaintiff alleges sending infringement notice regarding ’022 and ’497 Patents
2022-11-29 ’320 Patent (reissue of ’497 Patent) Issue Date
2024-01-04 Plaintiff alleges sending infringement notice regarding ’320, ’961, and ’726 Patents
2024-05-07 Plaintiff alleges in-person meeting discussing infringement of asserted patents
2024-05-09 Plaintiff alleges providing presentation detailing infringement concerns to Defendant
2025-04-22 Complaint Filing Date

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

U.S. Patent No. 10,612,726 - “Lighting System for Color Mixing,” issued April 7, 2020

The Invention Explained

  • Problem Addressed: The patent background discusses lighting systems for horticulture, where different colors of light are needed to promote plant growth, and more generally addresses the desire for a lighting system that "allows the color of the emitted light to be better controlled" (U.S. Patent No. 10,612,726, col. 1:25-52).
  • The Patented Solution: The invention is a lighting system comprising an LED controller, an antenna, and an LED array composed of at least two distinct "LED sub-arrays" (e.g., one sub-array of blue LEDs and another of red LEDs). When an input signal is received by the antenna, the system adjusts the respective wavelength spectrums produced by the sub-arrays to achieve a desired color mix ('726 Patent, Abstract; col. 6:50-65). Figure 1b illustrates this architecture, showing separate LED driver circuits (140, 141) controlling distinct LED sub-arrays (120, 121) ('726 Patent, Fig. 1b).
  • Technical Importance: This architecture provides a framework for wirelessly and dynamically controlling the color output of an LED light source by mixing the output of different LED groups, a foundational technology for modern consumer smart lighting ('726 Patent, col. 1:22-24).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶35).
  • Claim 1 requires:
    • an LED controller;
    • an LED array which includes first and second LED sub-arrays, wherein the LED array is operatively coupled to the LED controller;
    • an antenna in communication with the LED controller;
    • wherein first and second wavelength spectrums provided by the first and second LED sub-arrays, respectively, are adjustable in response to adjusting an input signal provided to the antenna.

U.S. Patent No. RE49,320 - “Lighting Device with Built-in RF Antenna,” issued November 29, 2022

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of integrating a radio frequency (RF) antenna into a compact lighting device, such as an LED bulb. Metallic components necessary for the device, particularly the heat sink, can shield or interfere with RF signals, degrading the reliability of wireless communication ('320 Patent, col. 1:40-54).
  • The Patented Solution: The invention claims a specific geometric arrangement of components. It places the antenna within the device's outer enclosure but requires that other large metallic components (those larger than 1/10 of the RF signal's wavelength) be "arranged below a virtual plane drawn orthogonal to the optical axis and going through the first antenna" ('320 Patent, Abstract). This configuration is intended to keep the antenna's radiation path clear of metallic obstructions, improving wireless performance ('320 Patent, col. 2:50-67).
  • Technical Importance: This design principle enables the manufacture of compact, self-contained smart bulbs that integrate a heat sink and other necessary electronics while maintaining reliable wireless connectivity ('320 Patent, col. 1:22-26).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶57).
  • Claim 1 requires:
    • a light source comprising one or more light-emitting diodes configured for generating light along an optical axis;
    • a heat sink comprising a metal with an electrical resistivity being less than 0.01 Ωm, configured for removing heat, and forming at least a portion of an outer enclosure;
    • a RF communication circuit;
    • a first antenna connected to the RF communication circuit and arranged within the outer enclosure;
    • wherein the lighting device comprises one or more metallic components having an extension larger than at least 1/10 of a wavelength of the RF control signals and arranged below a virtual plane drawn orthogonal to the optical axis and going through the first antenna.

U.S. Patent No. 9,494,730 - “Multiple Waveguide Edge Lit Structure,” issued November 15, 2016

  • Technology Synopsis: This patent addresses the mechanical construction of lighting fixtures that use multiple light guides. The invention describes an assembly comprising a frame structure, a circuit board with at least two distinct pluralities of LEDs, and first and second waveguides positioned to receive light from the respective LEDs along their edges. The structure is secured by a pair of attachment structures. (Compl. ¶15; ’730 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶76).
  • Accused Features: The complaint alleges that Nanoleaf's Canvas products, which are modular light panels, infringe this patent (Compl. ¶77).

U.S. Patent No. 8,378,591 - “Light Output Device,” issued February 19, 2013

  • Technology Synopsis: The patent relates to individually addressable LED string lights that can be cut to a desired length while retaining functionality. The invention discloses a device where light source arrangements are connected in a line, each with an associated control circuit. A serial data signal is passed down the line, and each control circuit is configured to receive the signal, use one or more bits to control its associated light, and then output the serial data signal with those bits removed for the next circuit in the line. This ensures that if the string is cut, the remaining lights continue to be independently controllable. (Compl. ¶16; ’591 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶94).
  • Accused Features: The complaint accuses Nanoleaf’s Outdoor String Lights and Multicolor Floor Lamp of infringement (Compl. ¶95).

U.S. Patent No. 8,111,022 - “Lighting System Comprising Interconnectable Lighting Modules,” issued February 7, 2012

  • Technology Synopsis: This patent describes a system of interconnectable polygonal lighting modules. The invention specifies modules with multiple, rotationally symmetrical connection members. Separate "bridge members" are used to form an electrical connection between neighboring modules. The patent claims a specific bridge member design with four terminals arranged at the corners of a rectangle and diagonally interconnected in pairs, allowing connection to different polarities. (Compl. ¶17; ’022 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶128).
  • Accused Features: The complaint accuses a range of Nanoleaf’s modular products, including Canvas, Aurora, Blocks, Elements, and Shapes (Compl. ¶128).

U.S. Patent No. 7,358,961 - “User Interface for Controlling Light Emitting Diodes,” issued April 15, 2008

  • Technology Synopsis: The patent addresses improving the accuracy of color control for LED lighting systems. The invention combines a method of controlling LEDs by varying the "time average flow of current" (e.g., pulse-width modulation) with a touch screen user interface. The user interface facilitates the selection of a specific color point, which in turn directs a controller to manage the current flow to the LEDs to produce the selected color. (Compl. ¶18; ’961 Patent, Abstract).
  • Asserted Claims: At least independent claim 10 (Compl. ¶158).
  • Accused Features: The complaint accuses a broad array of Nanoleaf products controlled via its smart device application, with Nanoleaf's Smart Bulbs cited as a representative example (Compl. ¶¶ 158-159).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the Nanoleaf Smart Bulbs and Skylight as representative products that infringe the ’726 Patent (Compl. ¶36). The Nanoleaf A19 Smart Bulbs are identified as representative products that infringe the ’320 Patent (Compl. ¶58).

Functionality and Market Context

  • The accused products are part of Nanoleaf's ecosystem of consumer-oriented smart lighting devices, which allow users to control color and brightness wirelessly via a mobile application (Compl. ¶¶ 35, 57). The complaint alleges these products are commercially significant and compete directly with Plaintiff's own Philips Hue and Wiz smart lighting brands (Compl. ¶11). The complaint provides teardown photographs of the Nanoleaf Smart Bulb, which show a printed circuit board with an antenna and multiple distinct types of LEDs, allegedly for color-mixing purposes (Compl. ¶¶ 39-41). The complaint’s photograph of the Nanoleaf Smart Bulb's LED board shows distinct groups of warm-white and cool-white LEDs, which are alleged to constitute first and second sub-arrays (Compl. ¶40). For the ’320 Patent, the complaint provides a photograph of a disassembled A19 Smart Bulb, pointing to an alleged aluminum heat sink that forms part of the bulb's outer enclosure (Compl. ¶62).

IV. Analysis of Infringement Allegations

10,612,726 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an LED controller The Smart Bulb contains a printed circuit board with control circuitry. ¶39 col. 6:50-51
an LED array which includes first and second LED sub-arrays, wherein the LED array is operatively coupled to the LED controller The Smart Bulb’s LED board contains a first sub-array of LEDs (e.g., warm white) and a second sub-array of LEDs (e.g., cool white) coupled to the controller. ¶40 col. 6:52-54
an antenna in communication with the LED controller The control circuitry includes an antenna for receiving wireless signals. ¶41 col. 6:55-56
wherein first and second wavelength spectrums provided by the first and second LED sub-arrays, respectively, are adjustable in response to adjusting an input signal provided to the antenna The Nanoleaf mobile application provides a user interface to select a color, which sends an input signal to the antenna, causing the controller to adjust the output of the two LED sub-arrays to create the selected color. ¶42 col. 6:57-65
  • Identified Points of Contention:
    • Scope Questions: A potential issue may be whether the visually distinct groups of LEDs on the accused product's circuit board function as "sub-arrays" within the meaning of the claim. The defense may argue that this term, in the context of the patent, requires a more specific control architecture than what is present in the accused device.
    • Technical Questions: The complaint alleges that adjusting the user interface adjusts the wavelength spectrums. A technical question is what evidence demonstrates that the accused device's controller adjusts the output of two distinct "sub-arrays" in response to a single input signal, as opposed to using another method of color control.

RE49,320 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a light source comprising one or more light-emitting diodes configured for generating light along an optical axis The A19 Smart Bulb contains LEDs that generate light along the bulb's central axis. ¶61 col. 2:51-53
a heat sink comprising a metal with an electrical resistivity being less than 0.01 Ωm ... and configured for removing heat ... the heat sink forming at least a portion of an outer enclosure The A19 Smart Bulb contains a heat sink, allegedly made of aluminum, which forms part of the bulb's external housing. ¶¶62-63 col. 2:54-58
a RF communication circuit The bulb's internal printed circuit board contains an RF communication circuit. ¶64 col. 2:59-59
a first antenna connected to the RF communication circuit for communicating RF control signals and arranged within the outer enclosure The bulb has an antenna connected to the RF circuit and located inside the bulb's enclosure. ¶65 col. 2:60-63
wherein the lighting device comprises one or more metallic components having an extension larger than at least 1/10 of a wavelength ... and arranged below a virtual plane drawn orthogonal to the optical axis and going through the first antenna The complaint alleges that the metallic components of the bulb, such as the heat sink, are positioned below a virtual plane that passes through the antenna and is perpendicular to the optical axis. A photograph illustrates this alleged geometric relationship (Compl. p. 23). ¶66 col. 2:63-67
  • Identified Points of Contention:
    • Scope Questions: A central dispute may revolve around the construction of "arranged below a virtual plane." The parties may contest the precise location of this plane and the definition of "below" in the context of a three-dimensional object.
    • Technical Questions: A key factual question will be whether the physical dimensions and locations of the accused bulb's metallic components satisfy the claim's specific geometric and size-to-wavelength requirements. This determination will likely depend on expert analysis and physical measurement of the accused products.

V. Key Claim Terms for Construction

  • Term from ’726 Patent: "LED sub-arrays"

    • Context and Importance: Infringement of the ’726 Patent hinges on whether the accused products contain at least two distinct "LED sub-arrays." The definition of this term will be critical to determine if merely having different types of LEDs on a board meets the claim limitation, or if a more specific structural or control relationship is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states that an "LED sub-array ... includes one or more LEDs of the same type" ('726 Patent, col. 6:6-8), suggesting that any grouping of similar LEDs could qualify.
      • Evidence for a Narrower Interpretation: The patent's embodiments consistently depict each sub-array being driven by its own separate driver circuit (e.g., Fig. 1b shows sub-array 120 driven by circuit 140, and sub-array 121 by circuit 141). A party could argue that to be a "sub-array" in the context of the invention, a group of LEDs must be independently controllable via such a dedicated circuit.

  • Term from ’320 Patent: "arranged below a virtual plane"

    • Context and Importance: This geometric limitation is the core of the asserted claim of the ’320 Patent. The entire infringement analysis for this patent may depend on whether the physical layout of the accused smart bulb meets this specific spatial requirement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself provides the definition: the plane is "drawn orthogonal to the optical axis and going through the first antenna" ('320 Patent, col. 2:65-67). Parties may argue this should be interpreted simply, with "below" meaning further from the light-emitting end of the device.
      • Evidence for a Narrower Interpretation: The patent does not provide an explicit definition beyond the claim language itself. A party might argue that the term implies a strict separation, where no part of the specified metallic components crosses the plane. The analysis will likely focus on the plain and ordinary meaning of the terms to a person skilled in the art of antenna design and lighting engineering at the time of the invention.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant induces infringement by selling the accused products and providing user manuals, marketing materials, and technical support that instruct and encourage customers to use them in an infringing manner (e.g., using the app to control color) (Compl. ¶¶ 50, 69). It further alleges contributory infringement on the basis that the accused products and their components are not staple articles of commerce and are specially made for use in an infringing way (Compl. ¶¶ 51, 70).
  • Willful Infringement: The complaint alleges willful infringement for all patents-in-suit based on extensive pre-suit knowledge. It cites a prior licensing agreement (2017-2019) that included the ’591 and ’961 patents (Compl. ¶¶ 20-22). It further details a series of specific written infringement notices and an in-person meeting between November 2018 and May 2024, during which Plaintiff allegedly informed Defendant of its infringement of all six patents-in-suit (Compl. ¶¶ 23-28, 49, 68).

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

  • A central issue will be one of willfulness and damages: given the extensive history of a prior license and multiple, specific pre-suit notices alleged in the complaint, what was Defendant’s state of mind regarding the asserted patents, and can its continued sales be proven to constitute egregious conduct warranting enhanced damages?
  • A key technical question will be one of geometric compliance: does the physical arrangement of the antenna and metallic heat sink within Nanoleaf’s smart bulbs meet the precise spatial requirements of the ’320 patent’s "virtual plane" limitation, an issue likely to require expert testimony and detailed product analysis?
  • Across the patent portfolio, a recurring question will be one of definitional scope: can terms grounded in specific patent embodiments, such as "LED sub-arrays" (’726 patent), "bridge members" with diagonal interconnections (’022 patent), and control circuits that remove bits from a "serial data signal" (’591 patent), be construed to read on the potentially different hardware and software architectures used in the accused products?