Ultravision Tech LLC v. Lamar Advertising Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ultravision Technologies, LLC (Delaware)
  • Defendant: Lamar Advertising Company, et al. (Delaware/Louisiana); Lighting Technologies, Inc. (Florida); Irvin International, Inc. (Florida)
  • Plaintiff’s Counsel: McKool Smith, P.C.
• Case Identification: 2:17-cv-00075, E.D. Tex., 01/24/2017
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendants conducting business in the state and district, Defendant Lamar’s ownership and operation of numerous billboards within the district, and the residence of one of the named inventors in the district.
• Core Dispute: Plaintiff alleges that Defendants’ LED billboard lighting products, sold under the "Marquee LED" brand, infringe three patents related to methods and systems for providing uniform, fault-tolerant illumination on large outdoor billboards.
• Technical Context: The technology concerns advanced LED lighting fixtures designed to solve longstanding issues in the outdoor advertising industry, namely uneven lighting ("hot spots"), energy waste from light spillage, and high maintenance costs.
• Key Procedural History: The complaint alleges a prior business relationship initiated in 2011, wherein Defendant Lamar approached Plaintiff to design an improved LED lighting fixture. The complaint further alleges that after Plaintiff shared confidential prototypes and designs, Defendant Lamar improperly disclosed this information, leading to the development of the accused products by the other Defendants.

Case Timeline

Date	Event
2012-07-30	Earliest Priority Date for ’663, ’661, and ’870 Patents
2012-10-19	Lamar representative allegedly formed 1810 Barrancas, LLC
2016-12-06	U.S. Patent No. 9,514,663 Issues
2016-12-20	U.S. Patent No. 9,524,661 Issues
2017-01-10	U.S. Patent No. 9,542,870 Issues
2017-01-24	Complaint Filed

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

U.S. Patent No. 9,514,663 - "Method of uniformly illuminating a billboard"

The Invention Explained

• Problem Addressed: The patent describes the technical challenge of evenly illuminating large billboards without creating undesirable "hot spots" (overly bright areas) or "dark spots," and without wasting energy by spilling light beyond the billboard's edges (Compl. ¶28; ’663 Patent, col. 1:40-45).
• The Patented Solution: The patent discloses a method of illuminating a billboard using lighting assemblies where each individual LED is paired with an optical element (e.g., a lens). This optical element is specially configured to redirect the light from its single LED to cover a large area, or even the entire surface, of the billboard. This "holistic" approach ensures that if one or more LEDs fail, the overall brightness decreases slightly, but the uniformity of the remaining light is maintained, preventing the appearance of distinct dark spots on the display surface (’663 Patent, Abstract; col. 6:5-21).
• Technical Importance: This method improves the fault tolerance and visual quality of billboard illumination, offering a more robust solution than systems that aim specific LEDs at discrete zones of a billboard (Compl. ¶54).

Key Claims at a Glance

• The complaint asserts independent Claim 1, among others (Compl. ¶66).
• Essential elements of independent Claim 1 include:
  • A method of illuminating a billboard display surface using a lighting assembly with first and second lighting units.
  • Each unit has LEDs arranged on a circuit board, with each LED having an overlying optical element to redirect its light.
  • Directing light from the first and second units toward a portion of the billboard surface to achieve a specific illumination level and uniformity, with minimal light spillage beyond the edges.
  • The optical elements are configured so that the failure of one or more LEDs causes the illumination level to decrease while the uniformity of light remains "substantially the same."
• The complaint reserves the right to assert dependent claims (Compl. ¶66).

U.S. Patent No. 9,524,661 - "Outdoor billboard with lighting assemblies"

The Invention Explained

• Problem Addressed: The patent addresses the same technical challenges as the ’663 Patent: achieving uniform, efficient, and reliable illumination for outdoor billboards (’661 Patent, col. 1:40-45).
• The Patented Solution: Rather than claiming the method, this patent claims the physical apparatus: a billboard system. The claims define a billboard with a display surface and at least two lighting assemblies. Each assembly is a self-contained unit comprising circuit boards, multiple LEDs arranged in rows, individual optical elements for each LED, and a heat sink to which the LEDs are thermally coupled. The structure is defined by its ability to perform the fault-tolerant illumination function described in the ’663 Patent (’661 Patent, Abstract; col. 9:22-col. 10:42).
• Technical Importance: This patent provides protection for the tangible lighting system itself, focusing on the physical integration of the electronic, optical, and thermal management components required to execute the novel illumination method.

Key Claims at a Glance

• The complaint asserts independent Claim 1, among others (Compl. ¶100).
• Essential elements of independent Claim 1 include:
  • A billboard comprising a support structure, a display surface, a first lighting assembly, and a second lighting assembly.
  • Each lighting assembly includes a plurality of planar circuit boards in a common orientation.
  • Each board has a plurality of LEDs and a plurality of optical elements, with the LEDs thermally coupled to a heat sink.
  • Each optical element is disposed over only one associated LED and is designed to direct light across a portion of the display surface.
  • The optical elements are configured so that upon failure of an LED, the illumination level decreases while uniformity "remains substantially the same."
  • The display surface can be illuminated using only the first and second lighting assemblies without additional light.
• The complaint reserves the right to assert dependent claims (Compl. ¶100).

U.S. Patent No. 9,542,870 - "Billboard and Lighting Assembly with Heat Sink and Three-Part Lens"

Technology Synopsis

This patent claims a specific lighting assembly apparatus, focusing on the detailed structural features of the optical element and the heat sink. It describes a three-part lens with specific curved surfaces and peaks designed to shape the light, as well as a heat sink with a plurality of fins extending perpendicular to a main section to facilitate cooling (’870 Patent, Abstract).

Asserted Claims

Claims 1-3, 5-16, and 18-25 (Compl. ¶142).

Accused Features

The complaint alleges that the accused "Marquee LED" products embody the claimed combination of a planar substrate, LEDs, a heat sink, and a specific "Total Internal Reflectance Optics" lens that allegedly meets the claim limitations for the three-part lens (Compl. ¶¶145-147, 150).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Lighting Technologies' Accused Products," which are sold under the brand name "MarQuee LED," and the "Accused Billboards" on which they are installed (Compl. ¶¶17, 35, 50).

Functionality and Market Context

The Marquee LED products are LED-based lighting fixtures designed and marketed for illuminating large outdoor billboards (Compl. ¶39). According to marketing materials cited in the complaint, the products use an "acorn sized lens cover," referred to as a "Total Internal Reflectance (TIR) Optic," over each individual LED (Compl. ¶43). This optic is advertised as being "designed with the sole purpose of ensuring that EACH LED covers an extremely large portion of the billboard face" to achieve "seamless, even coverage" with "no hot spots" or "dark spots" (Compl. ¶¶42, 43). The complaint also points to product documentation showing the accused products include heat sinks and are sold in different configurations for various standard billboard sizes (Compl. ¶¶40, 46). The complaint alleges significant market penetration, citing a claim of "OVER 50,000 BILLBOARD LED LIGHTS IN THE FIELD" (Compl. ¶38). An installation guide diagram shows a suggested placement of two fixtures to illuminate a 14-foot by 48-foot billboard (Compl. ¶39, p. 14).

IV. Analysis of Infringement Allegations

9,514,663 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method of illuminating visual media content on a billboard display surface using a lighting assembly that comprises a first lighting unit and a second lighting unit that each include... a plurality of LEDs... and a plurality of optical elements...	Defendants employ a method using two or more "Marquee LED" light fixtures to illuminate Lamar billboards. Each fixture contains multiple LEDs and "TIR Optics."	¶¶69, 39	col. 9:22-28
...wherein each optical element overlies a respective one of the LEDs and wherein each optical element is configured to redirect light from the respective one of the LEDs...	The complaint cites marketing materials stating the "TIR Optic" is a lens cover that "fits over each LED" and is designed to "direct the light toward the billboard surface." A provided photo shows the individual transparent optics.	¶¶42, 43, 69, p. 20	col. 9:28-31
...directing light from the first lighting unit toward a portion of the billboard display surface...wherein the light is directed so that areas beyond edges of the portion of the billboard display surface receive minimum illumination...	The accused products are installed on billboards and are designed to direct light onto the display surface. The complaint cites marketing claims of a "Dark Skies design, virtually no light spillage."	¶¶69, 45	col. 9:36-43
...wherein the optical elements are configured so that failure of one or more LEDs of the lighting assembly will cause the illumination level of light impinging the portion of the billboard display surface to decrease while the uniformity of light...remains substantially the same.	The complaint cites marketing materials stating that if an LED fails, the "outage would be unrecognizable to the naked eye because the remaining LEDS are covering the same area."	¶69	col. 9:48-54

9,524,661 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A billboard comprising...a first lighting assembly that includes a plurality of circuit boards arranged in a common orientation and mounted in a single assembly...	The accused billboards include Marquee LED fixtures, which are single assemblies containing circuit boards with LEDs. The complaint provides a photo of a "double brick unit" showing two such circuit boards in a single housing.	¶¶104, 102, p. 16	col. 9:39-42
...each circuit board of the first lighting assembly being planar and having a first plurality of light emitting diodes (LEDs) and a first plurality of optical elements attached thereto...	The accused products are alleged to have planar circuit boards with arrays of LEDs and corresponding "TIR Optics."	¶¶104, 41-43	col. 9:43-46
...the first plurality of LEDs being thermally coupled to a first heat sink.	The complaint cites product descriptions and a photo showing that the accused products include "passive" heat sinks to "circulate and dissipate the large amount of heat created by LEDs."	¶¶104, 46, p. 21	col. 9:46-47
...wherein the optical elements are configured so that failure of one or more LEDs of the first lighting assembly will cause the illumination level...to decrease while the uniformity of the light...remains substantially the same.	The complaint relies on marketing materials stating the product's optical design ensures that an LED outage is "unrecognizable," which allegedly satisfies the requirement of maintaining uniformity.	¶104	col. 9:59-65

Identified Points of Contention

• Scope Questions: A central question will be whether the accused "TIR Optic" falls within the scope of the claimed "optical element," particularly for the ’870 Patent, which claims a specific three-part lens structure. The analysis may depend on whether the term is construed broadly to cover any lens that performs the function or narrowly to cover the specific disclosed structures.
• Technical Questions: The complaint's primary evidence for the "uniformity remains substantially the same" limitation appears to be the defendant's own marketing claims. This raises the evidentiary question of whether these marketing statements are sufficient to prove infringement of this technical, functional limitation, or if objective photometric data will be required to demonstrate that the accused product actually performs as claimed upon LED failure.

V. Key Claim Terms for Construction

"uniformity of light ... remains substantially the same"

• Context and Importance: This functional language is a core limitation in the independent claims of both the ’663 and ’661 patents. The infringement case hinges on whether the accused products meet this performance standard upon an LED failure. Practitioners may focus on this term because its interpretation—whether it requires objective measurement or can be satisfied by subjective appearance—could be dispositive.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patents' abstract states the goal is that the uniformity "remains substantially the same," without providing a numerical constraint in that section, which could support an interpretation based on the overall functional result as perceived by an observer (’663 Patent, Abstract).
  • Evidence for a Narrower Interpretation: The detailed description provides a more specific target for "uniformity," stating an objective is to achieve "a 3:1 ratio of the average illumination to the minimum" (’663 Patent, col. 6:43-46). A party could argue that "substantially the same" should be evaluated against this or a similar objective, quantifiable metric rather than a subjective assessment.

"optical element"

• Context and Importance: This term defines the key technological component that enables the claimed invention. Whether the accused "TIR Optic" meets the definition of the "optical element" is a fundamental infringement question, especially for the more detailed lens claims of the ’870 Patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification introduces the term broadly, stating that the element "overlies a respective one of the LEDs" and is "configured to redirect light" (’663 Patent, col. 9:28-31). This language could support a construction covering a wide range of lenses that perform this function.
  • Evidence for a Narrower Interpretation: The patents provide highly detailed descriptions and figures of specific embodiments of the optical element as a multi-part lens with "a first part," "a second part," "a third part," and specific "convex outer surface[s]" (’870 Patent, col. 9:43-54; Fig. 8D-8J). A party may argue that the claims should be limited to these disclosed embodiments, particularly where such details are recited in the claims themselves.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement (Compl. ¶66). The inducement allegations may be supported by facts showing Defendants Lamar, Lighting Technologies, and Irvin actively market the accused products for billboard illumination and provide installation guides instructing customers on how to install and use the products in an infringing manner (Compl. ¶¶39-40). The contributory infringement allegation is based on the assertion that the accused products are specially designed to illuminate billboards and have no substantial non-infringing use (Compl. ¶66).

Willful Infringement

Willfulness is alleged based on Defendants having "actual knowledge of the '663 Patent" and continuing their infringing activities (Compl. ¶96). The basis for pre-suit knowledge is not explicitly tied to a specific date of notice, but is strongly implied by the complaint's narrative of a prior business relationship where Plaintiff allegedly disclosed its confidential technology to Defendant Lamar before the patents issued (Compl. ¶¶26, 33). Post-suit knowledge is alleged based on the filing of the complaint itself (Compl. ¶96).

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

• A core issue will be one of evidentiary proof: Can Plaintiff demonstrate that the accused products' performance meets the claimed functional limitation that "uniformity... remains substantially the same" upon LED failure? The case may turn on whether infringement can be proven through Defendants' marketing materials, or if it will require rigorous, objective photometric testing and data.
• A second central question will be one of claim construction: Will the term "optical element" be construed broadly based on its function of redirecting light, or will it be limited to the specific multi-part lens structures detailed in the patent specifications? The outcome of this construction will likely determine infringement, especially for the structurally-detailed claims of the '870 patent.
• Finally, the narrative of a prior business relationship and alleged misappropriation of confidential designs raises a key question regarding willfulness: To what extent can this pre-issuance history be used to establish the knowledge and intent required for a finding of willful infringement of the subsequently issued patents?