DCT
5:16-cv-01209
Hartman Design Inc v. Lehigh Valley Hardscaping LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hartman Design Inc. (Pennsylvania)
- Defendant: Lehigh Valley Hardscaping, LLC and Matthew Weis (Pennsylvania)
- Plaintiff’s Counsel: Fox Rothschild LLP
- Case Identification: 5:16-cv-01209, E.D. Pa., 03/15/2016
- Venue Allegations: Venue is alleged as proper in the Eastern District of Pennsylvania because a substantial part of the events giving rise to the claim occurred in the district and the defendants are residents of and conduct business within the district.
- Core Dispute: Plaintiff alleges that Defendants' hardscape lighting products infringe two utility patents and one design patent related to lamps designed for integration into modular structures like retaining walls and steps.
- Technical Context: The technology concerns specialized lighting fixtures that are installed between courses of paver blocks or stones, allowing for illumination that is an integral part of a hardscape structure.
- Key Procedural History: The complaint notes that U.S. Patent No. 8,672,502 is a continuation of the application that led to U.S. Patent No. 8,066,398, which itself is a continuation-in-part of an earlier application. This indicates a shared specification and a chain of priority among the asserted utility patents.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-07 | '763 Patent Priority Date |
| 2006-09-07 | '398 Patent Priority Date |
| 2006-09-07 | '502 Patent Priority Date |
| 2008-09-09 | '763 Patent Issue Date |
| 2011-11-29 | '398 Patent Issue Date |
| 2014-03-18 | '502 Patent Issue Date |
| 2016-03-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,066,398 - Lamp and Illuminated Hardscape (Issued Nov. 29, 2011)
The Invention Explained
- Problem Addressed: The patent’s background section notes that landscape lighting practice often involves "stand alone lamps that mount in the ground adjacent to the hardscaping," which are not integrated into the structure itself (’398 Patent, col. 1:39-43).
- The Patented Solution: The invention is a lamp assembly featuring a thin plate designed to be positioned and held by friction between two stacked hardscape elements, such as retaining wall blocks (’398 Patent, col. 1:46-52). A flange extends from this plate, and a light fixture is mounted to the flange or the underside of the plate, allowing the lamp to become an integral part of the wall while casting light on the surrounding area (’398 Patent, Fig. 5; col. 3:59-63).
- Technical Importance: This approach allows for the creation of built-in lighting in mortared or mortarless masonry structures without requiring specialized blocks or complex installation procedures.
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, and 21 (Compl. ¶19).
- Independent Claim 1 recites a lamp with three core components:
- A "plate" positionable between at least two discrete, stacked elements, retained by contact.
- A "flange" attached to the plate, oriented substantially at a right angle to the plate.
- A "light fixture" attached to the lamp and positioned facing the underside of the plate and the second surface of the flange.
- Independent Claim 13 recites a similar lamp for a wall, but with the flange oriented at an "angle" to the plate (not necessarily a right angle) and the light fixture supported on the lamp and positioned on the plate's underside.
- Independent Claim 21 recites an "illuminated hardscape" system comprising a wall made of discrete elements and a lamp with the features of claim 1 mounted on it.
- The complaint also asserts dependent claims 3, 6, 8, 9, and 11-12 (Compl. ¶19).
U.S. Patent No. 8,672,502 - Lamp and Illuminated Hardscape (Issued Mar. 18, 2014)
The Invention Explained
- Problem Addressed: The ’502 Patent addresses the same technical problem as its parent ’398 Patent: providing integrated lighting for hardscape structures (’502 Patent, col. 1:41-45).
- The Patented Solution: The solution is also a plate-based lamp held between hardscape elements. However, the claims of the ’502 patent introduce more specific spatial and functional limitations. For instance, claims require the light source to be on the underside of the plate "proximate the projection portion" and to distribute light "away from, but not forwardly parallel, relative to the plate underside" (’502 Patent, cl. 1, 11).
- Technical Importance: The invention as claimed in the ’502 patent appears to refine the broader concept of the ’398 patent with more specific geometric constraints on the placement and light distribution of the fixture.
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, and 11 (Compl. ¶26).
- Independent Claim 1 recites a lamp with:
- A "plate" positionable between elements, with a length and width "substantially larger than a thickness" and defining a "given perimeter with a projection portion."
- A "light fixture" with a light source attached relative to the plate, located on the underside of the plate "within the given perimeter and proximate the projection portion."
- Independent Claim 10 recites an "illuminated hardscape" system comprising a wall and a lamp with the features of claim 1.
- Independent Claim 11 recites a lamp with a plate and a light fixture attached to the plate's underside such that it "distributes light away from, but not forwardly parallel, relative to the plate underside."
- The complaint also asserts dependent claims 2-9 (Compl. ¶26).
Multi-Patent Capsule
- U.S. Patent No. D576,763: Light Fixture (Issued Sep. 9, 2008)
- Technology Synopsis: This is a design patent protecting the ornamental, non-functional visual characteristics of a light fixture as depicted in its figures. The legal test for infringement is whether an "ordinary observer," familiar with prior designs, would be deceived into believing the accused design is the same as the patented design.
- Asserted Claims: The single claim for "the ornamental design for a light fixture, as shown and described" (Compl. ¶33).
- Accused Features: The complaint alleges that the overall visual appearance of the "Infringing Products" embodies the patented design (Compl. ¶¶14, 33).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused instrumentalities as "certain light fixtures" for hardscapes, specifically "the lamp in the photographs included below as Figures 1-4" (Compl. ¶7, p. 3-4).
- Functionality and Market Context: The complaint alleges that the accused products are lamps intended for mounting on structures made of "a plurality of discrete elements," such as hardscapes (Compl. ¶7). The visual evidence provided shows a device with a flat top portion and a housing underneath that contains a light source. Figure 3 in the complaint depicts the underside of the accused lamp, revealing a socket for a light bulb (Compl. p. 4, Fig. 3). The complaint alleges that Defendants manufacture, use, sell, and promote these products for use in hardscaping within the United States (Compl. ¶7).
IV. Analysis of Infringement Allegations
'398 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A lamp adapted for mounting on a structure formed of a plurality of discrete elements stacked one atop another | The accused product is alleged to be a lamp for mounting on hardscape structures. | ¶7 | col. 1:46-49 |
| a plate positionable between at least two of said elements, contact between said plate and said elements retaining said lamp in position on said structure | The flat top surface of the accused lamp is the alleged plate, designed to be placed between hardscape blocks. | ¶7, Fig. 1 | col. 2:50-57 |
| a flange attached to said plate, said flange being oriented substantially at a right angle to the plane of said plate | The housing depending from the flat top surface of the accused lamp is the alleged flange. | ¶7, Fig. 1 | col. 3:1-5 |
| a light fixture attached to said lamp, said light fixture being positioned facing said underside of said plate and said second surface of said flange | The bulb and socket assembly shown on the underside of the accused lamp is the alleged light fixture. | ¶7, Fig. 3 | col. 3:6-11 |
'502 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plate positionable between at least two of said elements... said plate having a length and width substantially larger than a thickness... and defining a given perimeter with a projection portion | The flat top surface of the accused lamp, depicted as thin relative to its length and width, is the alleged plate. The front edge is the alleged projection portion. | ¶7, Fig. 1 | col. 5:21-30 |
| a light fixture, including at least one light source, attached relative to said plate such that said light source is on the underside of said plate within the given perimeter and proximate the projection portion | The bulb and socket are located on the underside of the top surface and are positioned near the front edge of the accused lamp. | ¶7, Fig. 3 | col. 5:30-34 |
Identified Points of Contention
- Scope Questions: For the ’398 patent, a central dispute may arise over whether the accused product’s single, integrated housing can be dissected to meet the claim limitations of a "plate" with an attached "flange." A defendant could argue its product is a unitary body, not an assembly of a plate and a separate flange.
- Technical Questions: For the ’502 patent, infringement of claim 11 raises the factual question of whether the accused product "distributes light away from, but not forwardly parallel, relative to the plate underside." This functional limitation may require photometric testing and expert testimony to resolve.
V. Key Claim Terms for Construction
The Term: "flange" (’398 Patent, cl. 1)
- Context and Importance: The construction of this term is critical because the accused product, as shown in the complaint's figures, appears to have a housing formed as a single piece with the top plate, rather than a distinct flange component attached to a plate. Practitioners may focus on this term because the infringement analysis for claim 1 hinges on whether this integrated structure meets the "flange attached to said plate" limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a flange "may be integral with the plate" and can be "bent or molded into the angular orientation desired," which could support construing a formed or bent portion of a single piece of material as the claimed "flange" (’398 Patent, col. 3:35-38).
- Evidence for a Narrower Interpretation: The figures consistently depict the flange (14) as a discrete element oriented at a right angle to the plate (12), which a party could argue supports a more limited construction requiring a distinct structural feature rather than merely a bent section of a housing (’398 Patent, Figs. 1, 2).
The Term: "proximate the projection portion" (’502 Patent, cl. 1)
- Context and Importance: As a term of degree, the definition of "proximate" is key to determining whether the location of the light source in the accused product infringes. The outcome of this construction could decide infringement for a significant set of claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a specific distance or range for what constitutes "proximate," which may support a broader, more flexible interpretation based on general nearness.
- Evidence for a Narrower Interpretation: A party could argue that the term must be read in light of the patent's overall objective to "illuminate the surrounding area" from a position on the wall (’502 Patent, col. 4:1-3). This might support a narrower construction requiring the light source to be close enough to the projecting edge to achieve a particular illumination effect on the hardscape below.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that "Defendants provide instructions to their customers to use the Infringing Products in hardscaping a manner that infringes the ’398 patent and the ’502 patent" (Compl. ¶16).
- Willful Infringement: The complaint alleges that infringement has been and continues to be "intentional, knowing, willful and deliberate" (Compl. ¶¶22, 29, 36). The basis for this allegation is that Defendants received "actual notice and/or constructive notice" of the patents, including from Plaintiff's own products being marked with the patent numbers (Compl. ¶¶20, 27, 34).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on the following central questions:
- A core issue will be one of structural interpretation: can the integrated housing of the accused lamp be legally deconstructed to meet the ’398 patent’s requirements of a "plate" with a "flange attached" thereto, or does its unitary construction place it outside the scope of the claims?
- A key evidentiary question for the ’502 patent will be one of functional performance: does the light emitted from the accused product meet the specific directional limitation of being distributed "away from, but not forwardly parallel, relative to the plate underside," a technical distinction that will likely require expert analysis to adjudicate.
- For the design patent claim, the case will present a question of overall visual impression: would an ordinary observer, comparing the accused lamp to the drawings in the ’763 patent, find the two designs to be substantially the same, or are the visual differences significant enough to avoid infringement?