DCT
2:18-cv-00096
Ultravision Tech LLC v. Digiled Uk Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultravision Technologies, LLC (Delaware, with principal place of business in Texas)
- Defendant: digiLED (UK) Limited (United Kingdom)
- Plaintiff’s Counsel: Brown Rudnick LLP; McKool Smith, P.C.
- Case Identification: 2:18-cv-00096, E.D. Tex., 03/27/2018
- Venue Allegations: Venue is alleged to be proper on the basis that the defendant is a foreign entity not resident in the United States, which may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s modular LED display products infringe patents related to the construction of modular, waterproof, and thermally managed LED display panels.
- Technical Context: The technology concerns large-scale, modular LED displays used for outdoor advertising, billboards, and scoreboards, a market where durability, cost, and ease of installation are significant factors.
- Key Procedural History: The complaint notes that this action is related to a concurrent proceeding filed the same day before the U.S. International Trade Commission (ITC), asserting the same two patents against the same Defendant.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-31 | Earliest Priority Date for ’306 and ’782 Patents |
| 2016-05-24 | U.S. Patent No. 9,349,306 Issues |
| 2018-03-13 | U.S. Patent No. 9,916,782 Issues |
| 2018-03-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,349,306 - "Modular Display Panel"
- Patent Identification: U.S. Patent No. 9,349,306, "Modular Display Panel," issued May 24, 2016.
The Invention Explained
- Problem Addressed: The complaint and patent background describe prior art LED display panels as suffering from significant drawbacks for outdoor use. They were often not waterproof and thus required placement in heavy, sealed outer cabinets which in turn needed fans or air conditioning systems to prevent overheating, resulting in high operating and installation costs (Compl. ¶¶5-6; ’306 Patent, col. 5:3-7). Furthermore, prior panels were often not modular, making assembly and maintenance of large displays bespoke, expensive, and difficult (Compl. ¶6).
- The Patented Solution: The invention is a self-contained, modular LED display panel designed to be lightweight, waterproof, and assembled into larger displays without a cabinet (’306 Patent, col. 2:5-8). The panel includes a casing with a recess for a printed circuit board (PCB) and LEDs, along with integrated driver circuitry and a power supply (’306 Patent, col. 7:19-24). A key feature is a "framework of louvers" disposed over the PCB between the rows of LEDs, which can help shade the display from ambient light (’306 Patent, col. 7:6-14). The entire panel is hermetically sealed to be waterproof, allowing for passive cooling without fans or vents (’306 Patent, col. 2:5-8).
- Technical Importance: This integrated, cabinet-less design approach is alleged to have made prior cabinet-based systems obsolete by dramatically lowering the total cost of installation and operation (Compl. ¶¶7, 10).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶25).
- The essential elements of claim 1 include:
- A casing with a recess and attachment points for modular assembly.
- A printed circuit board (PCB) disposed in the recess.
- A plurality of LEDs attached to the front of the PCB.
- A driver circuit attached to the PCB.
- A power supply unit for the LEDs.
- A framework of louvers disposed over the PCB and between rows of LEDs.
- The entire modular display panel being sealed to be waterproof.
- The complaint does not explicitly reserve the right to assert dependent claims, but infringement is alleged for "one or more claims" (Compl. ¶25).
U.S. Patent No. 9,916,782 - "Modular Display Panel"
- Patent Identification: U.S. Patent No. 9,916,782, "Modular Display Panel," issued March 13, 2018.
The Invention Explained
- Problem Addressed: Similar to the ’306 Patent, this patent addresses the challenges of creating durable, cost-effective outdoor LED displays, with a particular focus on thermal management in a sealed, cabinet-less design (’782 Patent, col. 1:26-34). Overheating is a primary cause of failure in LED displays, and eliminating active cooling systems like fans requires an effective passive cooling solution.
- The Patented Solution: The invention is a modular display panel constructed with specific thermal management features. It comprises a shell made of a "first thermally conductive material" with plastic sidewalls, containing the PCB and LEDs (’782 Patent, Abstract). A power supply unit is positioned behind the PCB, and a "second thermally conductive material" is placed between the power supply and the outer back side of the panel (’782 Patent, Abstract). This layered construction is designed to dissipate heat generated by the electronics to the outside environment without requiring vents or fans. A "protective structure" is disposed over the front side of the PCB, and the entire panel is waterproof (’782 Patent, col. 7:31-34).
- Technical Importance: This design provides a specific structural solution for passively cooling a sealed, modular LED display, which is critical for reliability and reducing operating costs in outdoor environments (Compl. ¶¶4-5).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶39).
- The essential elements of claim 1 include:
- A shell comprising a first thermally conductive material, with plastic sidewalls.
- A printed circuit board (PCB) disposed in the shell.
- A plurality of LEDs attached to a first side of the PCB.
- A driver circuit disposed in the shell.
- A power supply unit, with the PCB disposed between the power supply and the LEDs.
- A second thermally conductive material disposed between the power supply and an outer back side of the panel.
- A protective structure disposed over the first side of the PCB.
- The panel being sealed to be waterproof.
- The complaint alleges infringement of "one or more claims" of the ’782 Patent (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
The complaint identifies Defendant's "modular LED displays, such as Defendant's OTek product" as the accused instrumentality (Compl. ¶¶25, 39). The complaint's visual evidence shows how older, cabinet-based systems evolved into the type of integrated panel at issue. (Compl. Figure 4, p. 5).
Functionality and Market Context
Based on the complaint's allegations, the OTek product is a modular, waterproof display panel that can be assembled into larger multi-panel displays (Compl. ¶¶26, 40). An image of the accused OTek product shows a self-contained panel with LEDs on the front and connection points on the side. (Compl. p. 8). The complaint alleges the product contains a casing or shell, a PCB with LEDs, a driver circuit, and a power supply (Compl. ¶¶27-28, 41-43). The allegations further state the product is "sealed to be waterproof" (Compl. ¶¶30, 46).
IV. Analysis of Infringement Allegations
'306 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a casing having a recess, wherein the casing comprises attachment points for use in attachment as part of a multi-panel modular display... | The OTek product allegedly comprises a casing with a recess and attachment points for multi-panel assembly. An image of the product is provided. (Compl. p. 8). | ¶26 | col. 2:47-51 |
| a printed circuit board disposed in the recess | The OTek product allegedly includes a printed circuit board disposed in the casing's recess. | ¶27 | col. 2:51-52 |
| a plurality of LEDs attached to a front side of the printed circuit board | The OTek product allegedly comprises a plurality of LEDs attached to the front of the printed circuit board. | ¶27 | col. 2:52-53 |
| a driver circuit attached to the printed circuit board | The OTek product allegedly comprises a driver circuit attached to the printed circuit board. | ¶28 | col. 2:54-55 |
| a power supply unit for powering the LEDs | The OTek product allegedly includes a power supply unit for powering the LEDs. | ¶28 | col. 7:21-24 |
| a framework of louvers disposed over the printed circuit board and disposed between rows of the LEDs | The OTek product is alleged to comprise a framework of louvers positioned over the printed circuit board and between the LED rows. | ¶29 | col. 2:57-59 |
| wherein the modular display panel is sealed to be waterproof | The OTek product is alleged to be sealed and waterproof. | ¶30 | col. 3:53-56 |
'782 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell comprising a first thermally conductive material, wherein the sidewalls of the shell comprise plastic | The OTek product allegedly comprises a shell made of a first thermally conductive material with plastic sidewalls. An image of the product is provided. (Compl. p. 10). | ¶40 | col. 2:11-12 |
| a printed circuit board disposed in the shell | The OTek product allegedly comprises a printed circuit board disposed in the shell. | ¶41 | col. 2:12-13 |
| a plurality of LEDs attached to a first side of the printed circuit board | The OTek product allegedly has a plurality of LEDs attached to a first side of the printed circuit board. | ¶41 | col. 2:13-14 |
| a driver circuit disposed in the shell and coupled to the plurality of LEDs from a second side of the printed circuit board | The OTek product allegedly has a driver circuit in the shell coupled to the LEDs from a second side of the printed circuit board. | ¶42 | col. 2:15-17 |
| a power supply unit...the printed circuit board being disposed between the power supply unit and the plurality of LEDs | The OTek product allegedly has a power supply unit, with the printed circuit board located between it and the LEDs. | ¶43 | col. 2:18-20 |
| a second thermally conductive material disposed between the power supply unit and an outer back side of the panel | The OTek product allegedly has a second thermally conductive material between the power supply unit and the outer back of the panel. | ¶44 | col. 2:20-22 |
| a protective structure disposed over the first side of the printed circuit board | The OTek product allegedly comprises a protective structure over the first side of the printed circuit board. | ¶45 | col. 2:22-24 |
| wherein the modular display panel is sealed to be waterproof | The OTek product is alleged to be sealed to be waterproof. | ¶46 | col. 7:31-34 |
Identified Points of Contention
- Evidentiary Questions: The infringement allegations are made "upon information and belief." A central issue for the court will be whether discovery confirms that the accused OTek product actually incorporates every claimed element. The complaint provides images of the product's exterior, but the internal structure and materials are key to the infringement claims (Compl. p. 8, p. 10).
- Technical Questions: A key technical question for the ’306 Patent infringement theory will be whether the accused product contains a structure that meets the definition of a "framework of louvers." For the ’782 Patent, the analysis may focus on whether the materials used in the OTek product qualify as "thermally conductive" and whether their specific layered arrangement matches the claim language.
V. Key Claim Terms for Construction
The Term: "framework of louvers" (’306 Patent, Claim 1)
- Context and Importance: This term describes a specific structural component allegedly present in the accused product (Compl. ¶29). The definition of this term will be critical because if the accused product lacks a structure that meets the construed definition, there can be no literal infringement. Practitioners may focus on this term as it is a tangible structural limitation that may distinguish the invention from other panel designs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the louvers as being positioned to "block or minimize light from directly striking the LEDs" from certain angles, suggesting a functional definition related to shading (’306 Patent, col. 7:7-11). This could support an argument that any structure performing this shading function meets the limitation.
- Evidence for a Narrower Interpretation: The patent includes detailed figures (e.g., FIGS. 27A-27C) showing specific cross-sectional shapes of the louvers. A defendant may argue that the term should be limited to these disclosed embodiments or similar structures, rather than any structure that provides shade.
The Term: "thermally conductive material" (’782 Patent, Claim 1)
- Context and Importance: Claim 1 of the ’782 patent recites both a "first" and "second" thermally conductive material in a specific arrangement. The definition of this term is central to the infringement analysis for the asserted patent focused on thermal management. The dispute may center on what level of thermal conductivity is required for a material to meet this limitation in the context of the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined with a numerical conductivity range. A party could argue it should be given its plain and ordinary meaning, covering any material that conducts heat more effectively than an insulator.
- Evidence for a Narrower Interpretation: The specification provides "aluminum" as an example of a thermally conductive material for the housing and for coupling the power supply to the housing (’782 Patent, col. 7:41-43, 52-54). This specific example may be used to argue that the term implies a material with metallic-level thermal conductivity, potentially narrowing the claim scope to exclude less conductive materials like certain plastics or composites.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents. The factual basis alleged is that Defendant supplies the accused products to end-users and customers for use in an infringing manner, such as by assembling them into multi-panel displays (Compl. ¶¶32-34, 48-50).
- Willful Infringement: The complaint does not use the word "willful" but alleges Defendant "knowingly and intentionally" induced infringement (Compl. ¶¶33, 49). Knowledge is alleged "at least as of the date of this Complaint" (Compl. ¶¶33, 49), which may primarily support a claim for post-suit willfulness. The prayer for relief seeks enhanced damages pursuant to 35 U.S.C. § 284 (Compl. Prayer for Relief, ¶c).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: Do the internal components and materials of the accused OTek products, once revealed through discovery, contain the specific structures recited in the claims? This will be particularly important for the "framework of louvers" limitation of the ’306 patent and the precise layered arrangement of "thermally conductive" materials in the ’782 patent.
- A second key question will be one of claim scope: How broadly will the court construe key structural terms? The outcome of the case may depend on whether terms like "framework of louvers" are interpreted functionally to mean any shading element, or structurally, limited to the embodiments shown in the patent. Similarly, the required properties of a "thermally conductive material" will be a central point of construction.