Vaxcel Intl Co Ltd v. Jasco

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Vaxcel International Co., Ltd. (Illinois)
  • Defendant: Jasco Products Company, LLC (Oklahoma)
  • Plaintiff’s Counsel: Dunlap Codding PC; Fisher Broyles LLP
• Case Identification: 5:19-cv-01154, W.D. Okla., 12/12/2019
• Venue Allegations: Venue is based on Defendant's organization under Oklahoma law, its regular and established place of business within the district, and its marketing, offering for sale, and selling of accused products within the Western District of Oklahoma.
• Core Dispute: Plaintiff alleges that Defendant’s LED security lights and under-cabinet bar lights infringe six patents related to microcontroller-based lighting controls, tunable color temperature, multi-mode operation, and motion sensing.
• Technical Context: The technology lies in the field of smart LED lighting, where microcontrollers and software are used to provide advanced, user-configurable features beyond simple illumination.
• Key Procedural History: The complaint alleges that Plaintiff marks its products that are covered by the patents-in-suit with notice via the website "https://www.vaxcelpatents.com/", a fact which may be relevant to allegations of constructive knowledge for willfulness and damages.

Case Timeline

Date	Event
2011-08-31	U.S. Patent 10,326,301 Priority Date
2012-10-15	U.S. Patents 10,136,503, 10,334,698, 10,470,276 Priority Date
2013-08-23	U.S. Patents 10,321,543, 10,433,401 Priority Date
2018-11-20	U.S. Patent 10,136,503 Issued
2019-06-11	U.S. Patent 10,321,543 Issued
2019-06-18	U.S. Patent 10,326,301 Issued
2019-06-25	U.S. Patent 10,334,698 Issued
2019-10-01	U.S. Patent 10,433,401 Issued
2019-11-05	U.S. Patent 10,470,276 Issued
2019-12-12	Complaint Filed

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

U.S. Patent No. 10,136,503 - Microcontroller-Based Multifunctional Electronic Switch and Lighting Apparatus Having the Same, Issued November 20, 2018

The Invention Explained

• Problem Addressed: The patent's background describes prior art electronic switches as having drawbacks such as inefficient power control and complicated circuit designs, while mechanical switches are susceptible to arcing and contamination in environments like kitchens or hospitals (’503 Patent, col. 1:32-49, col. 2:8-18).
• The Patented Solution: The invention uses a microcontroller to interpret an input from a "detection device" and, based on software logic, control semiconductor switching elements (e.g., triacs). This allows a single apparatus to perform multiple functions like on/off switching, dimming, and color temperature tuning by managing power delivery to separate LED loads, such as one for warm light and another for cool light, to create a blended output (’503 Patent, Abstract; col. 2:19-49; Fig. 1).
• Technical Importance: This approach centralizes control in a programmable microcontroller, enabling complex and user-friendly features (like touchless control or multi-functionality) to be implemented through software rather than complex, dedicated hardware circuits (’503 Patent, col. 3:20-26).

Key Claims at a Glance

• The complaint asserts independent claims 1, 11, 26, 40, and 56 (Compl. ¶¶27-29, 33).
• Independent Claim 1 requires:
  • A first controllable switching element connected between a power source and a first lighting load for emitting light with a first color temperature.
  • A second controllable switching element connected between the power source and a second lighting load for emitting light with a second color temperature.
  • A detection device for detecting an external motion signal and converting it into a message carrying sensing signal.
  • A microcontroller programmed to read and interpret the message carrying sensing signal and control the conduction or cutoff state of the first and second controllable switching elements.
• The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶27).

U.S. Patent No. 10,321,543 - Security Light with Lifestyle Solutions, Issued June 11, 2019

The Invention Explained

• Problem Addressed: The patent identifies a drawback in conventional two-level security lights: they do not differentiate between the need for general illumination in the early evening and the need for a security function in the late evening, offering a "compromised solution" that is suboptimal for both purposes (’543 Patent, col. 2:1-12).
• The Patented Solution: The invention proposes a "lifestyle" lighting device where the nighttime is divided into two distinct stages controlled by a timer. An initial stage provides full-power illumination for a user-programmable period. At a "conversion time point," the device switches to a second, power-saving/security stage, such as low-level ambient light or motion-activated security lighting (’543 Patent, Abstract; Fig. 1). The timer's conversion point can be set via several methods, including a fixed time point that automatically adjusts for seasonal variations in dusk/dawn times (’543 Patent, col. 3:33-42).
• Technical Importance: This technology allows a single lighting fixture to adapt to a user's living habits, providing both functional, high-power illumination when needed and an energy-saving security function at other times, managed by a programmable controller (’543 Patent, col. 2:13-20).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 57 (Compl. ¶¶53, 57).
• Independent Claim 1 requires:
  • A light emitting unit with a plurality of diodes.
  • A controller coupled with switching circuitry.
  • A photo sensor and a motion sensor coupled with the controller.
  • A first external control device for generating a control signal.
  • A time setting algorithm for determining a preset time point to switch the light from a first illumination mode to a second illumination mode.
• The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶53).

Multi-Patent Capsule: U.S. Patent 10,433,401 - Security Light with Lifestyle Solutions, Issued October 1, 2019

• Technology Synopsis: Similar to the ’543 Patent, this patent describes a security light with distinct illumination modes for different parts of the night. It discloses a "lifestyle mode" where the light provides full-power illumination for a preset period before converting to a power-saving or security mode, controlled by a programmable timer (’401 Patent, Abstract).
• Asserted Claims: Independent claims 41, 52, and 60 are asserted (Compl. ¶69, ¶73).
• Accused Features: The "Group 1 Lights" are accused of infringing by providing a multi-brightness, multi-color-temperature accent light for a set period before switching to a motion-sensor security mode (Compl. ¶69-70).

Multi-Patent Capsule: U.S. Patent 10,326,301 - Two-Level LED Security Light with Motion Sensor, Issued June 18, 2019

• Technology Synopsis: This patent discloses a two-level LED security light that operates in a low-level illumination mode and switches to a high-level illumination upon detection of motion. The invention details the use of a microcontroller to manage the power distribution to achieve these two levels (’301 Patent, Abstract).
• Asserted Claims: Independent claims 57 and 64 are asserted (Compl. ¶85, ¶89).
• Accused Features: The "Group 1 Lights" are accused of infringing through their two-level operation, transitioning between a low-level accent light and a high-level, motion-activated security light (Compl. ¶85-86).

Multi-Patent Capsule: U.S. Patent 10,334,698 - Microcontroller-Based Multifunctional Electronic Switch, Issued June 25, 2019

• Technology Synopsis: This patent describes a microcontroller-based electronic switch that uses a detection circuit to interpret an external control signal. Based on the signal's format (e.g., time length), the microcontroller executes different working modes, such as on/off control or dimming, by controlling a semiconductor switching element (’698 Patent, Abstract). The technology is particularly applicable to touchless interfaces for lighting control.
• Asserted Claims: Independent claims 1, 19, and 32 are asserted (Compl. ¶101, ¶105).
• Accused Features: The "Group 2 Lights" (under-cabinet) are accused of infringing with their motion sensor that sends a signal to a microcontroller to control light intensity (e.g., on, dim to 25%, off) (Compl. ¶101-103).

Multi-Patent Capsule: U.S. Patent 10,470,276 - Method of Tuning Light Color Temperature for LED Lighting Device and Application Thereof, Issued November 5, 2019

• Technology Synopsis: This patent details a method for tuning the diffused light color temperature of an LED lamp. The method involves using at least two LED lighting loads with different native color temperatures and a power allocation circuit that manages the power delivered to each load to create a blended output, while keeping the total electric power unchanged (’276 Patent, Abstract).
• Asserted Claims: Independent claims 1, 15, and 23 are asserted (Compl. ¶¶119-121).
• Accused Features: All three product groups ("Group 1, 2, and 3 Lights") are accused of infringing by using a microcontroller to control power to different LED loads to create a user-selectable, diffused color temperature (Compl. ¶119, ¶123, ¶127, ¶131).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are GE/Jasco branded LED lighting products, categorized into three groups: Group 1 (motion-activated security lights), Group 2 (under-cabinet LED lights), and Group 3 (under-cabinet LED lights) (Compl. ¶¶21, 23, 25).

Functionality and Market Context

• The "Group 1 Lights" are hardwired security lights that employ a photo sensor for dusk-to-dawn operation. They are alleged to operate in a low-level "accent light mode" for a predetermined period (e.g., 3 or 6 hours), after which they switch to a motion-activated security light mode (Compl. ¶30, ¶54). A key feature is a user-operable external switch that allows selection of one of four color temperatures (e.g., Warm White 2200K to Daylight 5000K) for the accent light mode (Compl. ¶30). The complaint provides a user manual diagram illustrating these switch settings (Compl. ¶30, p. 7).
• The "Group 2 Lights" and "Group 3 Lights" are described as under-cabinet LED lights that are hardwired to a power supply. They feature a user-controlled, multi-position switch that allows selection from several color temperature options (e.g., "Soft Warm White," "Bright Cool White," "Daylight") (Compl. ¶35, ¶39). The complaint alleges these products use a microcontroller to control power allocation between different LED loads to adjust the color temperature and light intensity (Compl. ¶35, ¶39). The Group 2 lights are also alleged to include a motion sensor for controlling brightness (Compl. ¶102). A user manual diagram shows a hand gesture being used to control the Group 2 light's motion-sensing feature (Compl. ¶106, p. 27).
• The products are alleged to be sold through major national retailers, including Lowe's and Home Depot (Compl. ¶¶21-26).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,136,503 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a first controllable switching element electrically connected between a power source and a first lighting load for emitting light with a first color temperature	A first semiconductor switching device delivers a first electric power to a first LED lighting load to emit light with a high color temperature.	¶31	col. 2:20-25
a second controllable switching element electrically connected between the power source and a second lighting load for emitting light with a second color temperature	A second semiconductor switching device delivers a second electric power to a second LED lighting load to emit light with a low color temperature.	¶31	col. 2:25-29
a detection device for detecting an external motion signal played by a user and converting said external motion signal into a message carrying sensing signal	A detection device (motion sensor) outputs a message carrying a sensing signal to the microcontroller.	¶31	col. 2:29-32
a microcontroller with program codes written and designed to read and interpret the message carrying sensing signal... wherein said microcontroller controls a conduction state or cutoff state of said first controllable switching element and said second controllable switching element	A microcontroller receives the sensing signal and controls the conduction/cut-off states of the first and second semiconductor switching devices.	¶31	col. 2:32-41

Identified Points of Contention

• Scope Questions: Claim 1 of the ’503 Patent recites a "detection device for detecting an external motion signal." The primary embodiment in the patent is an infrared sensor (’503 Patent, col. 2:50-54). For the accused Group 2 and 3 under-cabinet lights, the infringement allegation is based on a "user-controlled light color temperature selection switch" (Compl. ¶35, ¶39). A potential point of contention is whether a simple mechanical switch for selecting a static color temperature constitutes a device for detecting a "motion signal" that generates a "message carrying sensing signal" as contemplated by the patent.
• Technical Questions: The complaint alleges, based on testing, that the accused products use a microcontroller to control power allocation between two different LED loads to produce a diffused color temperature (Compl. ¶31, ¶35, ¶39). A key evidentiary question may be whether the internal circuitry of the accused products actually operates this way, specifically by using distinct semiconductor switches to control separate high- and low-color-temperature LED loads as required by Claim 1.

U.S. Patent No. 10,321,543 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a light emitting unit... configured with a plurality of light emitting diodes	The accused Group 1 Lights include groups of LED lights.	¶54	col. 21:46-48
a controller, electrically coupled with a switching circuitry... for controlling an electric power transmitted from a power source to the light emitting unit	The Group 1 Lights include a controller and switching circuitry electrically connected between a power supply and two LED lighting loads.	¶55	col. 21:49-53
a photo sensor electrically coupled with the controller, for switching on the light emitting unit at dusk and switching off the light emitting unit at dawn	The Group 1 Lights employ a photo detector that detects night, after which the lights turn on.	¶54	col. 21:54-57
a motion sensor electrically coupled with the controller, for detecting a motion intrusion	The Group 1 Lights operate as a motion sensor security light after the initial accent light phase.	¶54	col. 21:58-60
a first external control device... for generating at least one first external control signal	The Group 1 Lights include a switch/external control device that determines the duration (3 or 6 hours) of the accent light.	¶54	col. 21:61-63
a time setting algorithm... for determining a preset time point to switch the light emitting unit from performing a first illumination mode to performing a second illumination mode	The controller operates a low-level accent light (first mode) for 3 or 6 hours, after which it switches to a motion-activated security light (second mode).	¶54	col. 21:64-22:2

Identified Points of Contention

• Scope Questions: A central dispute may arise over the term "time setting algorithm." The ’543 Patent specification describes several sophisticated implementations, including one that dynamically adjusts the illumination period based on seasonal changes in daylight (’543 Patent, col. 3:33-42). The accused functionality is a switch for selecting a fixed 3-hour or 6-hour duration for the accent light mode (Compl. ¶54). The question for the court may be whether this simple, fixed-duration timer constitutes the claimed "algorithm."
• Technical Questions: Claim 1 requires switching from a "first illumination mode" to a "second illumination mode." The complaint alleges the accused product switches from a low-level "accent light" to a motion-activated security light (Compl. ¶54). A potential issue is whether these two operational states map directly onto the claimed "modes," particularly given the patent’s description of the first mode as "full-power illumination" (’543 Patent, col. 2:45-46) while the accused product's first mode is a "low level (1000 Lumens)" accent light (Compl. ¶54).

V. Key Claim Terms for Construction

U.S. Patent No. 10,136,503:

• The Term: "message carrying sensing signal"
• Context and Importance: This term's construction is critical because the core of the invention is a microcontroller that "reads and interprets" this signal to perform various functions. A narrow definition could limit the claim to sophisticated sensors like the patent's IR embodiment, while a broader definition could encompass signals from simple mechanical switches, which are present in some accused products. Practitioners may focus on this term to dispute whether a simple switch's on/off state constitutes a "message" that is "interpreted."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification explicitly states the detection device can be a "direct touch interface (such as a push button or a touch sensor)" (’503 Patent, col. 3:5-7), suggesting a simple user interaction can generate the "signal."
  • Evidence for a Narrower Interpretation: The detailed description of the IR sensor embodiment describes the signal as having a "time length corresponding to the time interval the object entering and staying in said infrared ray detecting zone" (’503 Patent, col. 2:57-60). This language could support an argument that the "message" requires a temporal component beyond a simple state change.

U.S. Patent No. 10,321,543:

• The Term: "time setting algorithm"
• Context and Importance: Infringement of the ’543 Patent hinges on whether the accused product's timer function for its "accent light mode" is an implementation of this algorithm. A defendant would likely argue that a simple fixed timer is not an "algorithm" in the sense disclosed, which includes complex, dynamic adjustments.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is broad, and an "algorithm" can be any set of rules, including a simple one like "run for 3 hours and then switch modes."
  • Evidence for a Narrower Interpretation: The specification describes multiple complex methods for the algorithm, including a "fixed time point setting" where the timer "dynamically controls the duration of the full-power illumination so that the lighting device can switch by itself at a fixed time point" despite seasonal shifts in dusk times (’543 Patent, col. 3:35-42). This suggests the claimed "algorithm" may require more sophistication than a simple countdown timer.

VI. Other Allegations

Indirect Infringement

• The complaint alleges inducement of infringement for all six patents. The allegations are based on Defendant's promotion, advertising, user manuals (e.g., UM1, PM2, PM3), and website content, which allegedly instruct customers on how to use the accused features, such as selecting color temperatures and setting accent light modes (Compl. ¶¶32, 56, 72, 88, 104, 124).

Willful Infringement

• The complaint includes a placeholder allegation for willfulness. It asserts that Defendant had at least constructive knowledge of the patents-in-suit due to Plaintiff's practice of marking its products with a patent notice website (Compl. ¶¶43, 59, 75, 91, 107, 135). The complaint reserves the right to request a finding of willful infringement pending facts learned in discovery (Compl. ¶¶50, 66, 82, 98, 114, 142).

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

• A core issue will be one of definitional scope: can patent terms rooted in sophisticated embodiments, such as the '503 patent's "message carrying sensing signal" (disclosed with an IR sensor) and the '543 patent's "time setting algorithm" (disclosed with dynamic seasonal adjustments), be construed broadly enough to read on the simpler mechanical switches and fixed-duration timers of the accused products?
• A key evidentiary question will be one of technical operation: does the internal circuitry of the accused products function as alleged, particularly with respect to using distinct, controllably switched LED loads for different color temperatures, or is there a fundamental mismatch between the allegations and the actual implementation that could undermine infringement claims across multiple patents?
• An overarching strategic question will be one of patent differentiation: given the significant technological overlap across the six asserted patents, which share inventors, titles, and specifications, a central challenge for the plaintiff will be to articulate distinct and non-redundant infringement theories for each patent against the same sets of accused product features.