DCT
2:18-cv-00021
Lemaire Illumination Tech LLC v. HTC Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lemaire Illumination Technologies, LLC (Texas)
- Defendant: HTC Corporation (Taiwan)
- Plaintiff’s Counsel: Strasburger & Price, LLP; Ni, Wang and Massand, PLLC
- Case Identification: 2:18-cv-00021, E.D. Tex., 01/23/2018
- Venue Allegations: Venue is asserted based on Defendant's status as a foreign corporation, which may be sued in any judicial district pursuant to 28 U.S.C. § 1391(c)(3).
- Core Dispute: Plaintiff alleges that Defendant’s smartphone camera flash systems infringe three patents related to controlling the color and brightness of pulsed LED illumination.
- Technical Context: The technology concerns methods for driving LED camera flashes to achieve consistent brightness and accurate color balance, a critical feature for photographic quality in portable electronic devices.
- Key Procedural History: The patents-in-suit descend from a common application filed in 1998. Post-issuance proceedings have significantly affected the patent portfolio. U.S. Patent No. 6,095,661 survived two Inter Partes Reviews (IPRs) with its asserted claim 34 intact, though other claims were cancelled. U.S. Patent No. 6,488,390 also underwent an IPR that left its asserted claim 19 intact; however, a subsequent disclaimer filed by the patent owner in 2019 disclaimed asserted claim 19, raising questions about the enforceability of that patent in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 1998-03-19 | Priority Date for ’661, ’390, and ’266 Patents |
| 2000-08-01 | ’661 Patent Issue Date |
| 2002-12-03 | ’390 Patent Issue Date |
| 2014-03-25 | Accused HTC One M8 Launch Date |
| 2014-09-08 | ’661 Patent IPR (K1) Certificate Issued (Asserted claim 34 not cancelled) |
| 2014-10-08 | Accused HTC Desire Eye Launch Date |
| 2014-10-21 | ’390 Patent IPR (K1) Certificate Issued (Asserted claim 19 not cancelled) |
| 2015-03-01 | Accused HTC One M9 Launch Date |
| 2015-08-25 | ’266 Patent Issue Date |
| 2016-04-12 | Accused HTC 10 Launch Date |
| 2017-01-12 | Accused HTC U Ultra Launch Date |
| 2018-01-23 | Complaint Filing Date |
| 2018-03-01 | ’661 Patent IPR (K2) Certificate Issued (Asserted claim 34 not cancelled) |
| 2019-02-07 | ’390 Patent Disclaimer Filed (Disclaiming asserted claim 19) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,095,661 - “Method and Apparatus for an L.E.D. Flashlight”, Issued August 1, 2000
The Invention Explained
- Problem Addressed: The patent’s background section describes how the light output from battery-powered devices, like flashlights, diminishes as the battery’s voltage decreases. Furthermore, using a simple current-limiting resistor to power an LED is inefficient, as it dissipates energy as waste heat (’661 Patent, col. 1:19-35).
- The Patented Solution: The invention proposes using an electrical control circuit to power LEDs with a series of electrical pulses. The circuit actively manages these pulses to maintain a consistent, predetermined light output level, even as the power source voltage fluctuates, for example by adjusting the width or frequency of the pulses (’661 Patent, Abstract; col. 2:25-31). This active regulation provides for more stable and efficient illumination.
- Technical Importance: This approach enabled the use of LEDs for more sophisticated applications than simple indicators, creating a foundation for stable, high-performance illumination in portable, battery-powered devices (’661 Patent, col. 1:11-18).
Key Claims at a Glance
- The complaint asserts independent claim 34 (’661 Patent, Compl. ¶71).
- The essential elements of claim 34 are:
- An illumination source, comprising:
- (a) a light-emitting diode (LED) housing comprising one or more LEDs; and
- (b) an electrical control circuit that selectively applies pulsed power from a DC voltage source of electric power to the LEDs to control a light output color spectrum of the one or more LEDs and maintain a predetermined light output level of the LED units as a charge on the DC voltage source varies.
- The complaint reserves the right to assert other claims of the patent (Compl. ¶70).
U.S. Patent No. 6,488,390 - “Color-Adjusted Camera Light and Method”, Issued December 3, 2002
The Invention Explained
- Problem Addressed: Prior methods of driving multi-color LEDs could not reliably adjust the color spectrum of the light while simultaneously maintaining a consistent overall brightness level, a key requirement for color-balanced digital photography (Compl. ¶18).
- The Patented Solution: The patent describes a control circuit that adjusts two distinct characteristics of the electrical pulses supplied to the LEDs. It adjusts the "height" of the pulses (i.e., the current or amplitude) to control the color spectrum of the output light, while separately adjusting the "LED on-time proportion" (i.e., the pulse width or duty cycle) to control the total amount of output light, or brightness (’390 Patent, Abstract; col. 12:4-11). Figure 6 of the patent illustrates how changing the current (pulse height) shifts the color spectrum of an exemplary LED.
- Technical Importance: This dual-control method provides a more sophisticated technique for creating an "intelligent" camera flash capable of adjusting both its color temperature and brightness to match ambient conditions and produce more natural-looking photographs (’390 Patent, col. 5:54-6:2).
Key Claims at a Glance
- The complaint asserts independent claim 19 (’390 Patent, Compl. ¶86).
- The essential elements of claim 19 are:
- An illumination source comprising:
- a housing;
- one or more light-emitting diodes (LEDs) attached to the housing;
- a control circuit operatively coupled to supply electrical pulses to the one or more LEDs that adjusts a height of the pulses to control a color spectrum of the LED output light and adjusts an LED on-time proportion to control an amount of the output light.
- The complaint reserves the right to assert other claims of the patent (Compl. ¶85).
Multi-Patent Capsule: U.S. Patent No. 9,119,266 - “Pulsed L.E.D. Illumination Apparatus and Method”, Issued August 25, 2015
Technology Synopsis
The ’266 patent claims a closed-loop method for controlling a camera flash. The method involves providing a device with a camera and an adjustable-spectrum LED flash, obtaining an image signal from the camera, measuring the color balance of that signal, and then adjusting the spectrum of the light from the LEDs based on that measurement (’266 Patent, Abstract; Claim 9). This describes an automated process for achieving correct color balance in a flash photography system.
Asserted Claims
The complaint asserts independent method claim 9 (Compl. ¶101).
Accused Features
The accused functionality is the operation of the Accused Devices’ camera and flash systems, which allegedly perform the claimed method steps by measuring scene characteristics and adjusting the dual-LED flash output to achieve a desired color balance (Compl. ¶101).
III. The Accused Instrumentality
Product Identification
The HTC One M8, HTC One M9, HTC 10, HTC Desire Eye, and HTC U Ultra smartphone devices (Compl. ¶2).
Functionality and Market Context
The complaint alleges that the Accused Devices incorporate a "twin LED Smart Flash system" or "dual LED flash" designed to improve photo quality (Compl. ¶38). This system is alleged to work by "making an instant light reading and firing the cool and warm LEDs in one of over a five hundred unique color temperature combinations that best match the scene" (Compl. ¶38). This functionality is marketed as a way to achieve "precisely controlled exposures" and "vivid, authentic colors and especially accurate skin tones" (Compl. ¶38). The complaint alleges these devices include a control circuit that provides pulses to the LEDs to control the color spectrum and maintain light output as the battery charge varies (Compl. ¶38, ¶44, ¶50, ¶56, ¶64). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’661 Patent Infringement Allegations
| Claim Element (from Independent Claim 34) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a light-emitting diode (LED) housing comprising one or more LEDs | Each Accused Device has a dual LED flash with one or more LEDs and a supporting case structure. | ¶71 | col. 2:45-48 |
| (b) an electrical control circuit that selectively applies pulsed power from a DC voltage source of electric power to the LEDs | Each Accused Device contains an electrical control circuit that provides pulses from the device’s battery to the dual LED flash. | ¶71 | col. 2:50-54 |
| to control a light output color spectrum of the one or more LEDs | The set of pulses is alleged to change in order to control the color spectrum of the light from the dual LED flash. | ¶71 | col. 4:24-51 |
| and maintain a predetermined light output level of the LED units as a charge on the DC voltage source varies. | The pulses allegedly maintain the light output as the battery's charge varies. | ¶71 | col. 4:24-30 |
’390 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An illumination source comprising: a housing; one or more light-emitting diodes (LEDs) attached to the housing; | Each Accused Device has a support case structure (housing) with an attached dual LED flash. | ¶86 | col. 2:53-59 |
| a control circuit operatively coupled to supply electrical pulses to the one or more LEDs that | Each Accused Device has a control circuit that supplies electrical pulses to its dual LED flash. | ¶86 | col. 4:59-62 |
| adjusts a height of the pulses to control a color spectrum of the LED output light | The complaint alleges these pulses "change by adjusting a height of the pulses to control a color spectrum." | ¶86 | col. 12:4-8 |
| and adjusts an LED on-time proportion to control an amount of the output light. | The complaint alleges the control circuit "adjusts an LED on-time proportion to control an amount of the output light." | ¶86 | col. 12:8-11 |
Identified Points of Contention
- Technical Questions: A primary question for the ’390 Patent is whether the Accused Devices’ flash systems actually operate by "adjust[ing] a height of the pulses" to control color. The complaint makes this allegation in a conclusory manner without providing specific technical evidence (Compl. ¶86). The litigation may focus on whether the accused technology uses pulse amplitude modulation, as the claim language suggests, or another technique, such as blending the output of two different colored LEDs using only pulse width modulation.
- Scope Questions: For the ’661 Patent, a key dispute may arise over the meaning of "maintain a predetermined light output level." It raises the question of whether this requires maintaining a fixed, static light level (e.g., X lumens) or if it can be construed to cover a system that dynamically calculates a target brightness to "best match the scene" (Compl. ¶38) and then holds that dynamically-set level steady against battery fluctuations.
V. Key Claim Terms for Construction
Term: "maintain a predetermined light output level" (from ’661 Patent, Claim 34)
- Context and Importance: The construction of this term is critical to the infringement analysis for the ’661 Patent. The dispute will likely center on whether the accused "Smart Flash," which allegedly selects an output to "best match the scene," meets this limitation. Practitioners may focus on whether "predetermined" implies a level that is fixed and independent of the photographic subject, or if it can encompass a level that is calculated based on sensor readings just before the photo is taken.
- Intrinsic Evidence for a Broader Interpretation: The specification discusses maintaining an "average predetermined light output level" (’661 Patent, col. 2:25-28), which could suggest flexibility. The patent also states the goal is to provide "constant or desired light output," which could be argued to include a level desired by an algorithm after sensing the environment (’661 Patent, col. 8:12-13).
- Intrinsic Evidence for a Narrower Interpretation: The primary context of the invention is compensating for a drop in battery voltage (’661 Patent, col. 1:22-26). This could support a narrower reading where "predetermined" refers to a static output level that the circuit is programmed to maintain against a single variable (voltage), not a dynamic level that changes based on complex external factors like scene composition.
Term: "adjusts a height of the pulses" (from ’390 Patent, Claim 19)
- Context and Importance: This term defines the specific technical mechanism for color control in claim 19. The viability of the infringement claim for the ’390 patent rests on whether the accused products employ this method.
- Intrinsic Evidence for a Broader Interpretation: The patent's objective is to control the "color spectrum of the output light" (’390 Patent, cl. 19). A party might argue that "height of the pulses" should be interpreted functionally to cover any method of controlling the current supplied to the LED that results in a color shift.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides a specific technical basis for this language. Figure 6 and the accompanying text show that increasing the current (i.e., pulse height) through a GaN LED shifts its emission wavelength from blue toward ultraviolet (’390 Patent, col. 12:4-8). A party could argue the term is limited to this specific physical phenomenon—modulating pulse amplitude to directly alter the spectral characteristics of a single LED type—and does not cover other color control techniques like blending the PWM-controlled output of multiple, different-colored LEDs.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents-in-suit. The inducement allegations are based on Defendant’s alleged instructions, manuals, and advertising that encourage end-users to operate the camera and flash systems in an infringing manner (Compl. ¶¶72-73, 87-88, 102-103). The contributory infringement allegations assert that the camera and flash components are not staple articles of commerce and are especially made or adapted for use in the infringing systems (Compl. ¶¶75, 90, 105).
- Willful Infringement: Willfulness is alleged for all patents, based on Defendant’s continued alleged infringement after gaining knowledge of the patents "since at least the filing of this action" (Compl. ¶¶76, 91, 106). The complaint does not allege pre-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question of technical operation: Does the accused "Smart Flash" technology actually function by "adjust[ing] a height of the pulses to control a color spectrum," as required by claim 19 of the ’390 patent? The complaint's conclusory allegation on this point suggests that the specific method of color control used by the accused products will be a critical and heavily contested factual issue.
- A core issue of claim scope: Can the phrase "maintain a predetermined light output level" in the ’661 patent be construed to cover a dynamic flash system that adjusts its output to "best match the scene"? The resolution of this question will determine whether the patent's scope is limited to maintaining a static brightness or is broad enough to read on modern, algorithmically controlled camera flashes.
- A dispositive question of enforceability: What is the legal effect of the patent owner’s post-filing disclaimer of the asserted claim 19 of the ’390 patent? This development, documented in the patent's file history, raises a fundamental challenge to the viability of the infringement count for that patent and the plaintiff's ability to recover any associated damages.