ETi Solid State Lighting Inc v. Costless Lighting Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ETi Solid State Lighting, Inc. (Ohio)
  • Defendant: Costless Lighting, Inc. (Ohio)
  • Plaintiff’s Counsel: WALTER | HAVERFIELD LLP
• Case Identification: 2:18-cv-00252, S.D. Ohio, 03/26/2018
• Venue Allegations: Venue is alleged to be proper because the Defendant, Costless Lighting, Inc., is incorporated in the State of Ohio and maintains its principal place of business within the Southern District of Ohio.
• Core Dispute: Plaintiff alleges that Defendant’s socket-mounted LED retrofit light fixtures infringe two patents related to the compact, integral design of such fixtures.
• Technical Context: The technology concerns LED light fixtures designed to be self-contained units that can easily replace traditional incandescent bulbs by screwing directly into existing light sockets.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the asserted patents and potential infringement via a letter dated June 22, 2017, followed by additional communications. This pre-suit notice forms the basis for the willfulness allegations.

Case Timeline

Date	Event
2014-07-18	Priority Date for ’352 and ’270 Patents
2016-11-22	U.S. Patent 9,500,352 Issued
2017-01-10	U.S. Patent 9,541,270 Issued
2017-06-22	Plaintiff sends notice letter to Defendant
2018-03-26	Complaint Filed

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

U.S. Patent No. 9,500,352 - "Integral LED Light Fixture" (Nov. 22, 2016)

The Invention Explained

• Problem Addressed: The patent describes prior art LED light fixtures as often being "rather large and cumbersome," in part due to the need for heat management components, making them difficult to use as simple replacements for bulbs in standard incandescent receptacles (’352 Patent, col. 2:36-43).
• The Patented Solution: The invention proposes a compact, integral LED fixture where the internal components are "nested" together to reduce the fixture's overall height. This is achieved through a housing design that includes an "annular housing base recess" for holding electrical components like the driver, and a printed circuit board (PCB) with a central orifice that allows it to fit over a protruding part of the housing base, creating a "telescoping or nesting assembly." (’352 Patent, col. 4:36-44, Fig. 3).
• Technical Importance: This design enables the creation of a low-profile LED fixture that can easily retrofit existing incandescent sockets, offering a simple installation process without requiring additional wiring or bulky adapters (’352 Patent, col. 2:54-65).

Key Claims at a Glance

• The complaint asserts infringement of one or more claims, including independent Claim 24 (Compl. ¶41, 48). Independent Claim 1 is also foundational.
• Independent Claim 1 includes these essential elements:
  • A housing base with a forwardly-extending outer wall and central portion that define an "annular housing base recess."
  • A socket base for electrical connection to an incandescent socket.
  • A series of electrical components including a PCB with LEDs and "driver components."
  • The PCB and driver components are "nested together" to achieve a "total nested height" that is less than their "total cumulative height" would be if stacked.
  • The socket base is located within the rear portion without extending rearwardly beyond the outer wall.
• Independent Claim 24 includes these essential elements:
  • A housing base with a forwardly-extending outer wall and central portion that define an "annular housing base recess."
  • A socket base located within the rear portion without extending rearwardly beyond the outer wall.
  • A printed circuit board with a set of LEDs and electrical circuitry.
• The complaint does not explicitly reserve the right to assert dependent claims, but the general allegation of infringing "one or more claims" preserves this option (Compl. ¶48).

U.S. Patent No. 9,541,270 - "Integral LED Light Fixture" (Jan. 10, 2017)

The Invention Explained

• Problem Addressed: As with the related ’352 Patent, this patent addresses the problem of prior art LED fixtures being too bulky and complex for simple retrofitting into existing incandescent sockets (’270 Patent, col. 2:32-49).
• The Patented Solution: The invention is a self-contained LED fixture featuring a "telescoping or nesting assembly" of its internal components to achieve a compact, low-profile design. Key features include an "annular recess" in the housing for receiving the driver and a PCB with an orifice that fits over a central housing portion, minimizing the fixture's overall depth. (’270 Patent, Abstract; col. 4:26-41).
• Technical Importance: This approach facilitates the widespread adoption of energy-efficient LED lighting by providing a product that can be installed as easily as a conventional light bulb (’270 Patent, col. 2:50-59).

Key Claims at a Glance

• The complaint asserts infringement of one or more claims (Compl. ¶59). Independent Claim 1 is the lead independent claim.
• Independent Claim 1 includes these essential elements:
  • A housing base with a central portion and outer wall defining a "housing base recess."
  • A socket base located within the central portion that does not extend rearwardly beyond the outer wall.
  • A series of electrical components, including a PCB and "electrical conversion components" (e.g., a driver).
  • The PCB and conversion components are "nested together" to form a "total nested depth" that is less than their "total cumulative height."
  • A lens removably attached to the housing base.

III. The Accused Instrumentality

Product Identification

The accused products are identified as the "Pull Chain LED Retrofit Remodel" LED light fixture, also referred to as a "socket mount" fixture, specifically including model numbers 05-LEDM-15W-27K and 05-LEDM-15W-35K (Compl. ¶27, 29).

Functionality and Market Context

The complaint describes the accused products as "integral LED light fixtures" and "flush mount ceiling lamp[s]" designed for use with "screw-in incandescent bulb sockets" (Compl. ¶29, p. 2). The core accused functionality is that of a self-contained LED lighting unit that can be screwed directly into a standard light socket, intended to replace conventional bulbs. The complaint alleges that Defendant manufactures, sells, and distributes these products (Compl. ¶27-28).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-chart analysis. The infringement theory is presented in broad, conclusory terms.

The complaint alleges that the accused "socket mount" fixtures directly infringe the ’352 and ’270 Patents because they "embody the patented invention" (Compl. ¶48, 59). The central, albeit unstated, technical theory appears to be that the accused products are integral, self-contained LED units that screw into standard sockets and achieve a compact form factor, thereby practicing the core concepts of the asserted patents.

The complaint hints at a specific dispute regarding claim limitations. It alleges that Defendant’s counsel, in a pre-suit letter, denied infringement based on the absence of a particular limitation in the accused products, but failed to consider Claim 24 of the ’352 Patent, which "lacks the very limitation" in question (Compl. ¶40-41). This suggests the infringement analysis may differ between claims that require certain components (e.g., "driver components") and those that do not.

Identified Points of Contention

• Structural Questions: A primary point of contention will be whether the accused products physically embody the specific "nested" structure required by the claims. Does the internal construction of the "Pull Chain LED Retrofit Remodel" fixture feature an "annular housing base recess" that holds the electrical components in a "telescoping" arrangement to reduce the fixture's height? The complaint provides no specific facts or diagrams to support this.
• Scope Questions: What is the scope of the term "driver components" in claims like Claim 1 of the ’352 Patent? The dispute referenced in the complaint regarding Claim 24 suggests the case may involve the question of whether fixtures using alternative power conversion technologies (e.g., AC LEDs that may not require a distinct driver) fall within the scope of some, but not all, of the asserted claims.

V. Key Claim Terms for Construction

• The Term: "nested together"

  • Context and Importance: This term is central to the patents' assertion of novelty, as the "nesting" or "telescoping" of components is what allegedly creates the compact, low-profile design. The outcome of the infringement analysis may depend on whether the arrangement of components in the accused products meets this definition.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests a general goal is to have components "disposed one within the other to render the light fixture very compact and have a small profile" (’352 Patent, col. 2:46-49), which could support a construction not strictly limited to the disclosed embodiment.
    • Evidence for a Narrower Interpretation: The patent repeatedly describes a specific "telescoping or nesting assembly" where a driver and driver cover fit into an "annular housing base recess" and a PCB with an "orifice" fits over a central portion of the housing (’352 Patent, col. 4:36-44, 11:50-55). Figure 3 provides a detailed illustration of this specific structural arrangement.

• The Term: "driver components"

  • Context and Importance: Practitioners may focus on this term because its presence is a requirement in some independent claims (e.g., ’352 Patent, Claim 1) but not others (e.g., ’352 Patent, Claim 24). As suggested by the complaint's reference to a pre-suit dispute (Compl. ¶41), the construction of this term could be dispositive for infringement of certain claims if the accused products utilize a power-conversion technology that does not include what Defendant considers a "driver."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue the term should be given its plain meaning, covering any components that "drive" the LEDs by supplying the necessary electrical current.
    • Evidence for a Narrower Interpretation: The specification defines these components as serving "for converting a higher incoming voltage to a lower voltage" and converting AC to DC (’352 Patent, col. 4:20-23). The patent also provides a specific circuit diagram for a "driver component" (Fig. 6), which could be used to argue for a narrower definition tied to a distinct AC-to-DC converter module.

VI. Other Allegations

• Indirect Infringement: The complaint states that it is an action for "direct infringement" (Compl. ¶2) but also makes a conclusory allegation of "indirect infringement" (Compl. ¶50). It does not, however, plead specific facts to support a claim of either induced or contributory infringement, such as allegations regarding user instructions or the non-staple nature of components.
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It pleads that Plaintiff's counsel sent a letter to the President of Costless on June 22, 2017, providing "actual notice of potential infringement" (Compl. ¶30). The complaint further alleges that Defendant's subsequent conduct, including continued sales and a delayed response, demonstrates that its infringement was and continues to be "deliberate, willful, [and] intentional" (Compl. ¶50, 61).

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

• A core issue will be one of structural comparison: does the internal architecture of Defendant's "socket mount" fixtures incorporate the specific "nested" design taught by the patents, particularly the use of an "annular housing base recess" to house electrical components and reduce the fixture's overall profile? The case will depend on evidence revealing the internal construction of the accused products.
• A key legal question will be one of claim scope differentiation: can the patents' claims be successfully asserted against products that may lack a traditional, distinct "driver component"? The dispute will likely focus on whether broader claims, like Claim 24 of the ’352 Patent, are able to cover the accused products even if more specific claims requiring "driver components" do not.