DCT
2:18-cv-00099
Ultravision Tech LLC v. Glux Visual Effects Tech Shenzhen Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultravision Technologies, LLC (Delaware)
- Defendant: Leyard Optoelectronic Co. (China)
- Plaintiff’s Counsel: Fabricant LLP; McKool Smith, P.C.
- Case Identification: 2:18-cv-00099, E.D. Tex., 07/07/2020
- Venue Allegations: Venue is alleged to be proper because Defendant is a foreign entity not resident in the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s modular LED displays infringe nine U.S. patents related to the mechanical construction, waterproofing, thermal management, assembly methods, and servicing of multi-panel displays.
- Technical Context: The technology concerns large-format modular LED displays, which are fundamental to the modern digital out-of-home advertising market and are widely used in stadiums, transportation hubs, and public venues.
- Key Procedural History: The operative pleading is a Second Amended Complaint. For several asserted patents, the complaint alleges Defendant had knowledge of the infringement at least as of the filing date of the original complaint on March 27, 2018, while for others, knowledge is alleged as of the filing of a First Amended Complaint.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-16 | Earliest Priority Date for ’791 and ’105 Patents |
| 2013-12-31 | Earliest Priority Date for ’782, ’272, ’869, ’294, ’372, ’603, and ’904 Patents |
| 2015-06-02 | U.S. Patent No. 9,047,791 Issues |
| 2015-12-08 | U.S. Patent No. 9,207,904 Issues |
| 2017-05-02 | U.S. Patent No. 9,642,272 Issues |
| 2017-05-30 | U.S. Patent No. 9,666,105 Issues |
| 2018-03-13 | U.S. Patent No. 9,916,782 Issues |
| 2018-03-27 | Original Complaint Filed |
| 2018-05-22 | U.S. Patent No. 9,978,294 Issues |
| 2018-05-29 | U.S. Patent No. 9,984,603 Issues |
| 2018-06-05 | U.S. Patent No. 9,990,869 Issues |
| 2019-04-02 | U.S. Patent No. 10,248,372 Issues |
| 2020-07-07 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,916,782 - "Modular Display Panel," Issued March 13, 2018
The Invention Explained
- Problem Addressed: The patent summary explains a disadvantage of conventional LED displays where panels of different resolutions must have different physical sizes, which complicates the manufacturing of housings and mounting structures (U.S. Patent No. 9,916,782, col. 1:40-47).
- The Patented Solution: The invention provides a system of modular display panels where panels with different pixel resolutions are manufactured to have the same physical size and shape (U.S. Patent No. 9,916,782, col. 1:52-61). This standardization allows panels of varying resolutions to be interchanged within a single mechanical support frame, simplifying installation and upgrades (U.S. Patent No. 9,916,782, Abstract).
- Technical Importance: This approach allows manufacturers to standardize housings and mounting components, potentially lowering inventory and manufacturing costs, and gives customers the flexibility to mix resolutions within a single display or upgrade sections of it without replacing the entire structure (U.S. Patent No. 9,916,782, col. 3:1-7).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶28).
- The essential elements of claim 1 include:
- A modular display panel.
- A shell comprising a first thermally conductive material, wherein the sidewalls of the shell comprise plastic.
- 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 and coupled to the LEDs from a second side of the PCB.
- A power supply unit for powering the LEDs, with the PCB disposed between the power supply unit and the LEDs.
- A second thermally conductive material disposed between the power supply unit and an outer back side of the panel.
- A protective structure disposed over the first side of the PCB.
- Wherein the panel is sealed to be waterproof.
U.S. Patent No. 9,642,272 - "Method for Modular Multi-Panel Display Wherein Each Display is Sealed to be Waterproof and Includes Array of Display Elements Arranged to Form Display Panel Surface," Issued May 2, 2017
The Invention Explained
- Problem Addressed: The patent background describes the logistical and labor challenges associated with assembling large-scale digital signs on-site, particularly in outdoor locations (U.S. Patent No. 9,642,272, Background).
- The Patented Solution: The patent claims a method of building a multi-panel display system by first assembling sub-assemblies of display panels on a support structure at a "first location" (e.g., a workshop) and then moving these completed sub-assemblies to a "second location" (e.g., the final installation site) for final assembly into the larger display system (U.S. Patent No. 9,642,272, Abstract). This approach simplifies on-site work.
- Technical Importance: This two-stage assembly method allows for more efficient and controlled pre-fabrication of display sections, potentially reducing the time, complexity, and cost of final on-site installation (U.S. Patent No. 9,642,272, col. 4:5-10).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶45).
- The essential elements of claim 1, a method claim, include:
- Assembling a mechanical support structure.
- At a first location, detachably mounting a plurality of display panels to the support structure to form sub-assemblies.
- Each display panel comprises an array of display elements sealed to be waterproof, a display driver, a housing, a receiver circuit, and a power supply.
- Moving the sub-assemblies to a second location.
- At the second location, building a multi-panel display system.
U.S. Patent No. 9,990,869 - "Modular Display Panel," Issued June 5, 2018
- Patent Identification: U.S. Patent No. 9,990,869, "Modular Display Panel," issued June 5, 2018 (Compl. ¶10).
- Technology Synopsis: This patent describes a modular display panel with features for weatherproofing and thermal management. The claimed panel includes a plastic casing, a printed circuit board with LEDs, a power supply mounted outside the casing, and a thermally conductive material to dissipate heat (Compl. ¶¶59-64).
- Asserted Claims: At least claim 19 (Compl. ¶58).
- Accused Features: The complaint alleges that Defendant's CLO Series products contain the claimed features (Compl. ¶58).
U.S. Patent No. 9,978,294 - "Modular Display Panel," Issued May 22, 2018
- Patent Identification: U.S. Patent No. 9,978,294, "Modular Display Panel," issued May 22, 2018 (Compl. ¶11).
- Technology Synopsis: This patent discloses a waterproof modular display panel that does not require a separate protective enclosure. It claims a plastic casing with a recess for a printed circuit board, a sealing compound, and a power supply mounted on the outer surface of the panel (Compl. ¶¶76-83).
- Asserted Claims: At least claim 22 (Compl. ¶75).
- Accused Features: The complaint alleges that Defendant's CLO Series products embody the claimed invention (Compl. ¶75).
U.S. Patent No. 9,047,791 - "Sign Construction with Sectional Sign Assemblies and Installation Kit and Method of Using Same," Issued June 2, 2015
- Patent Identification: U.S. Patent No. 9,047,791, "Sign Construction with Sectional Sign Assemblies and Installation Kit and Method of Using Same," issued June 2, 2015 (Compl. ¶12).
- Technology Synopsis: This patent describes a modification kit and method for converting existing signage into an electronic sign. It claims a system with a plurality of sign sections, each having front and rear portions, where the front portion receives display modules and the rear portion mounts to an existing structure (Compl. ¶¶94-96).
- Asserted Claims: At least claim 16 (Compl. ¶93).
- Accused Features: The complaint alleges that Defendant's CLI Series products infringe this patent (Compl. ¶93).
U.S. Patent No. 10,248,372 - "Modular Display Panels," Issued April 2, 2019
- Patent Identification: U.S. Patent No. 10,248,372, "Modular Display Panels," issued April 2, 2019 (Compl. ¶13).
- Technology Synopsis: This patent claims a modular display panel with a specific, substantially rectangular geometry where the height is half the width. The panel includes a casing with a recess and a PCB holding an array of LEDs spaced by a predetermined, constant pitch (Compl. ¶¶107-111).
- Asserted Claims: At least claim 1 (Compl. ¶106).
- Accused Features: The complaint alleges that Defendant's outdoor CLO Series products infringe (Compl. ¶106).
U.S. Patent No. 9,666,105 - "Sign Construction with Modular Wire Harness Arrangements...," Issued May 30, 2017
- Patent Identification: U.S. Patent No. 9,666,105, "Sign Construction with Modular Wire Harness Arrangements...," issued May 30, 2017 (Compl. ¶14).
- Technology Synopsis: This patent relates to a sign construction system using a preformed wiring harness to distribute power. The system includes a structural frame with bay members supporting weatherized display modules and structural bay locator nodes (e.g., alignment pins) to facilitate power distribution (Compl. ¶¶122-124).
- Asserted Claims: At least claim 15 (Compl. ¶121).
- Accused Features: The complaint alleges that Defendant's outdoor CLO Series products infringe (Compl. ¶121).
U.S. Patent No. 9,984,603 - "Modular Display Panel," Issued May 29, 2018
- Patent Identification: U.S. Patent No. 9,984,603, "Modular Display Panel," issued May 29, 2018 (Compl. ¶15).
- Technology Synopsis: This patent describes a modular display panel with specific thermal management and waterproofing features. The claims cover a casing made of thermally conductive material in contact with the back of a PCB, plastic sidewalls, louvers, and potting material for waterproofing (Compl. ¶¶136-148).
- Asserted Claims: At least claim 1 (Compl. ¶134).
- Accused Features: The complaint alleges that Defendant's VVR, VersaLight, CLO, CLF, and CV series products infringe (Compl. ¶134).
U.S. Patent No. 9,207,904 - "Multi-Panel Display with Hot Swappable Display Panels and Methods of Servicing Thereof," Issued December 8, 2015
- Patent Identification: U.S. Patent No. 9,207,904, "Multi-Panel Display with Hot Swappable Display Panels and Methods of Servicing Thereof," issued December 8, 2015 (Compl. ¶16).
- Technology Synopsis: This patent claims a method for servicing a multi-panel display without powering it down ("hot swapping"). The method involves identifying a defective panel by receiving a signal from an adjacent panel, then disconnecting, removing, and replacing the defective panel while other panels remain operational (Compl. ¶¶161-165).
- Asserted Claims: At least claim 1 (Compl. ¶160).
- Accused Features: The complaint alleges that Defendant's VVR, VersaLight, CLI, CLO, CLF, CLA, and CV series products enable sign owners to perform the infringing method (Compl. ¶161).
III. The Accused Instrumentality
Product Identification
- The accused products are Defendant’s VVR Series, VersaLight Series, CarbonLight Outdoor (“CLO”) Series, CarbonLight Flooring (“CLF”) Series, Carbon Light Indoor (“CLI”) Series, and CV Series of LED displays (Compl. ¶19).
Functionality and Market Context
- The complaint describes the accused products as modular LED display panels that can be assembled into large-format video screens (Compl. ¶¶29, 59). The complaint provides an image showing two panels from the CLO Series, one displaying an image and the other showing its rear mechanical and electrical interface, illustrating their modular nature (Compl. ¶22). The complaint does not contain detailed technical specifications of the products, but alleges they are sold and installed in the United States for customers including the Toyota Center in Houston, Texas (Compl. ¶5).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,916,782 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 CLO Series products are alleged to be modular display panels with a shell made of a first thermally conductive material and plastic sidewalls. | ¶29 | col. 18:2-4 |
| a printed circuit board disposed in the shell, and a plurality of LEDs attached to a first side of the printed circuit board | The CLO Series products are alleged to comprise a PCB within the shell, with multiple LEDs attached to its first side. | ¶30 | col. 18:5-7 |
| a driver circuit disposed in the shell and coupled to the plurality of LEDs from a second side of the printed circuit board | The CLO Series products are alleged to have a driver circuit inside the shell, coupled to the LEDs from the second side of the PCB. | ¶31 | col. 18:8-11 |
| a power supply unit for powering the LEDs, with the printed circuit board disposed between the power supply unit and the LEDs | The CLO Series products are alleged to contain a power supply unit positioned such that the PCB is between it and the LEDs. | ¶32 | col. 18:12-15 |
| a second thermally conductive material disposed between the power supply unit and an outer back side of the panel | The CLO Series products are alleged to include a second thermally conductive material between the power supply and the panel's outer back side. | ¶33 | col. 18:16-18 |
| a protective structure disposed over the first side of the printed circuit board | The CLO Series products are alleged to have a protective structure over the front of the PCB. | ¶34 | col. 18:19-20 |
| wherein the panel is sealed to be waterproof | The CLO Series products are alleged to be sealed and waterproof. | ¶35 | col. 18:21-22 |
Identified Points of Contention
- Technical Questions: The complaint makes all factual allegations about the internal construction and material composition of the CLO Series products "upon information and belief." A central point of contention may be whether discovery will confirm these alleged structural details. For example, what evidence does the complaint provide that the accused products contain two distinct "thermally conductive materials" arranged in the specific manner required by claim 1?
- Scope Questions: The interpretation of "shell" will be important. The claim requires a "shell" with sidewalls made of a different material (plastic) than the main body (thermally conductive material). The analysis may turn on whether the accused product's housing is considered a single, integral component or a composite structure that meets this limitation.
U.S. Patent No. 9,642,272 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| assembling a mechanical support structure | The complaint alleges that the CLO Series products allow an installer to assemble a mechanical support structure. | ¶46 | col. 18:41 |
| at a first location, detachably mounting a plurality of display panels to the mechanical support structure to form sub-assemblies | The CLO Series products are alleged to allow an installer to mount multiple display panels to the support structure at a first location, forming sub-assemblies. | ¶46 | col. 18:42-44 |
| wherein each display panel comprises an array of display elements that are sealed to be waterproof...a display driver, a housing, a receiver circuit, and a power supply | The CLO Series products are alleged to comprise an array of waterproof display elements, a driver, housing, receiver circuit, and power supply. | ¶¶47-48 | col. 18:45-48 |
| moving the sub-assemblies to a second location | The complaint alleges the products allow an installer to move the created sub-assemblies to a second location. | ¶49 | col. 18:49 |
| at the second location, building a multi-panel display system | The complaint alleges the products allow an installer to build the final multi-panel display system at that second location. | ¶49 | col. 18:50 |
Identified Points of Contention
- Factual Questions: This claim is for a method, and the complaint alleges indirect infringement by inducement. The central factual question will be what evidence shows Defendant instructs or encourages its customers (e.g., sign installers) to perform this specific two-location assembly process.
- Scope Questions: The definitions of "a first location" and "a second location" will be critical. The case may raise the question of whether the typical process of assembling panels on a scaffold or lift at the installation site before final placement constitutes two distinct locations as contemplated by the patent, or if the patent requires a more remote pre-assembly, such as in an off-site workshop.
V. Key Claim Terms for Construction
’782 Patent, Claim 1
- The Term: "shell comprising a first thermally conductive material, wherein the sidewalls of the shell comprise plastic"
- Context and Importance: This limitation defines a key structural and thermal feature of the claimed panel. The infringement analysis will depend on whether the accused product's housing can be characterized as a "shell" with these specific, distinct material components. Practitioners may focus on this term because it appears to require a composite construction rather than a monolithic housing made of a single material.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the terms "shell" and "casing" somewhat interchangeably, which may support an interpretation that is not limited to a specific form (U.S. Patent No. 9,916,782, col. 8:29, col. 14:38-40).
- Evidence for a Narrower Interpretation: The claim's explicit distinction between the material of the main "shell" and its "sidewalls" may support a narrower construction requiring two separate, identifiable materials forming the housing structure, potentially limiting the claim scope to exclude single-material casings.
’272 Patent, Claim 1
- The Term: "at a first location" and "at the second location"
- Context and Importance: These terms are the basis for the method's two-stage assembly process. The theory of indirect infringement hinges on whether Defendant's customers are induced to perform acts that meet these geographic and procedural limitations. The dispute may center on how physically and temporally separate these two "locations" must be.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define the distance or nature of the separation between the locations, stating only that sub-assemblies are formed at a "first location" and then "moved" to a "second location" for final building (U.S. Patent No. 9,642,272, col. 18:42-50). This could arguably cover assembly on the ground ("first location") before being hoisted onto a billboard ("second location").
- Evidence for a Narrower Interpretation: The patent's context of solving logistical problems for large-scale installations may suggest that the "first location" implies a pre-fabrication site, such as a workshop, distinct from the final, on-site "second location." This interpretation could limit the claim to scenarios beyond typical on-site staging.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement of infringement for all asserted patents. For the '272 and '904 patents, which claim methods of assembly and servicing, inducement is the primary theory of liability, alleging Defendant's products are used by customers like installers and sign owners to perform the claimed steps (Compl. ¶¶45, 161-165). For product claims, inducement is alleged based on Defendant providing infringing products to distributors, installers, and U.S.-based sales entities with the knowledge and intent that they will be used, sold, or imported in an infringing manner in the U.S. (Compl. ¶¶37-38, 150). The complaint specifically alleges that inducement of the '603 patent is supported by "manuals, guides, installation instructions and other documentation" (Compl. ¶150).
Willful Infringement
- The complaint alleges that Defendant had knowledge of its infringement, and thus its continued infringement is willful. For the '782 patent, knowledge is alleged as of the filing of the original complaint on March 27, 2018 (Compl. ¶39). For other patents, knowledge is alleged as of the filing of a First Amended Complaint (e.g., Compl. ¶¶52, 69, 87). For the '603 and '904 patents, the complaint also alleges pre-suit willful blindness, stating Defendant has a "policy or practice of not reviewing the patents of others" (Compl. ¶¶155, 172).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary evidentiary issue will be one of technical proof: as many core infringement allegations are made "upon information and belief," the case will turn on whether discovery confirms the specific internal structures, material compositions, and operational functionalities of the accused products as required by the various product claims.
- A central legal question will be one of inducement: for the asserted method claims related to multi-stage assembly and hot-swapping, the dispute will likely focus on whether Defendant's product manuals, marketing, or design affirmatively instruct or encourage end-users to perform the entire sequence of claimed steps, or if the products are merely capable of being used in an infringing manner.
- A key question of claim construction may determine the scope of liability: can terms like "shell" (requiring distinct materials) and "a first location" (requiring distinct assembly sites) be construed broadly enough to read on the accused products and standard installation practices, or will their definitions be narrowed by the patent specifications to exclude the accused instrumentalities?