DCT
2:18-cv-00114
Ultravision Tech LLC v. Shenzhen Mary Photoelectricity Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultravision Technologies, LLC (Delaware)
- Defendant: Shenzhen Maryphotoelectricity Co., Ltd. (China) and MRLED Inc. (California)
- Plaintiff’s Counsel: Brown Rudnick LLP; McKool Smith, P.C.
- Case Identification: 2:18-cv-00114, E.D. Tex., 03/27/2018
- Venue Allegations: Venue is alleged as proper for Shenzhen Maryphotoelectricity Co., Ltd. as a foreign defendant and for MRLED Inc. based on an alleged regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s modular LED displays infringe two patents related to the structural design, weatherproofing, and thermal management of modular display panels used in large-scale digital signs and billboards.
- Technical Context: The technology addresses the challenges of creating large, durable, and cost-effective outdoor digital displays by moving away from heavy, cabinet-enclosed designs toward lighter, self-contained, and waterproof modular panels.
- Key Procedural History: The complaint notes that this action is related to an International Trade Commission (ITC) investigation, Docket No. 337, filed on the same day, in which the same two patents are asserted against the same Defendants.
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 in E.D. Tex. |
| 2018-03-27 | Related ITC Investigation Initiated |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,349,306 - "Modular Display Panel"
The Invention Explained
- Problem Addressed: The patent addresses the technical problems of prior large-format LED displays, which required heavy, sealed cabinets for weather protection. These cabinets trapped heat, necessitating costly and failure-prone air conditioning systems, and their bespoke, non-modular nature increased manufacturing, installation, and maintenance costs (Compl. ¶¶5-6).
- The Patented Solution: The invention is a self-contained, modular LED display panel designed to be assembled into a larger display without a protective outer cabinet. The panel itself is "hermetically sealed and exposed to the environment," incorporating features like a casing with a recess for a printed circuit board (PCB) with LEDs, a power supply, and a framework of louvers over the LEDs, with the entire unit being "sealed to be waterproof" (’306 Patent, col. 2:5-20, Claim 1). This design allows for passive cooling and simplifies installation and repair by allowing individual panels to be swapped out (’306 Patent, col. 5:21-29).
- Technical Importance: This cabinet-free, modular approach is alleged to have made prior designs obsolete by dramatically lowering the total cost of installation, operation, and maintenance for large-scale digital displays (Compl. ¶¶7, 10).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶27).
- Claim 1 of the ’306 Patent includes the following essential elements:
- A casing having a recess and attachment points for use in a multi-panel modular display.
- The casing having a first side that includes a surface forming part of an outer surface of the modular display panel.
- A printed circuit board (PCB) disposed in the recess.
- A plurality of LEDs attached to a front side of the PCB.
- A driver circuit attached to the PCB.
- A power supply unit for powering the LEDs.
- A framework of louvers disposed over the PCB and between rows of the LEDs.
- The entire modular display panel is sealed to be waterproof.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,916,782 - "Modular Display Panel"
The Invention Explained
- Problem Addressed: Like its parent, the ’782 Patent addresses the need for a robust, cost-effective modular LED panel that avoids the thermal and structural issues of traditional cabinet-based designs (Compl. ¶¶4-6).
- The Patented Solution: This patent also describes a self-contained, waterproof modular panel but places greater emphasis in its claims on thermal management through a specific layered structure. The invention includes a "shell comprising a first thermally conductive material," a PCB with LEDs, and a power supply, with the critical addition of a "second thermally conductive material disposed between the power supply unit and an outer back side of the panel" (’782 Patent, Abstract; Claim 1). This configuration is designed to efficiently dissipate heat from the electronics to the ambient environment.
- Technical Importance: By specifying a thermal management architecture, the invention aims to improve the reliability and lifespan of outdoor LED panels that operate without active cooling systems (Compl. ¶4).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶41).
- Claim 1 of the ’782 Patent includes the following essential elements:
- A shell comprising a first thermally conductive material, wherein its sidewalls comprise plastic.
- A PCB disposed in the shell with a plurality of LEDs on its first side.
- A driver circuit in the shell coupled to the LEDs from a second side of the PCB.
- A power supply unit for 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.
- The modular display panel is sealed to be waterproof.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are modular LED displays, specifically identified as the "R4S Intelligent Spider Series" (Compl. ¶¶27, 41).
Functionality and Market Context
- The complaint alleges the R4S Intelligent Spider Series is a modular display panel that incorporates all elements of the asserted claims (Compl. ¶¶28-32, 42-48). The complaint includes an image of the accused product, showing both its front display face and its rear housing with connection and mounting hardware (Compl. p. 9). This image depicts a self-contained unit designed for integration into a larger array (Compl. p. 9).
- The complaint asserts that Defendants have entered the U.S. market by selling these products without a license (Compl. ¶12).
IV. Analysis of Infringement Allegations
9,349,306 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a casing having a recess | The R4S Intelligent Spider Series product comprises a casing having a recess. | ¶28 | col. 29:11-12 |
| wherein the casing comprises attachment points for use in attachment as part of a multi-panel modular display | The casing also comprises attachment points for use in attachment as part of a multi-panel modular display. | ¶28 | col. 29:13-15 |
| wherein the casing comprises a first side and an opposite second side, wherein the first side of the casing includes a surface that is part of an outer surface of the modular display panel | The casing comprises a first side and an opposite second side, wherein the first side of the casing includes a surface that is part of an outer surface of the modular display panel. | ¶28 | col. 29:16-20 |
| a printed circuit board disposed in the recess | The product comprises a printed circuit board disposed in the recess. | ¶29 | col. 29:21 |
| a plurality of LEDs attached to a front side of the printed circuit board | The product comprises a plurality of LEDs attached to a front side of the printed circuit board. | ¶29 | col. 29:22-23 |
| a driver circuit attached to the printed circuit board | The product comprises a driver circuit attached to the printed circuit board. | ¶30 | col. 29:24-25 |
| a power supply unit for powering the LEDs | The product comprises a power supply unit for powering the LEDs. | ¶30 | col. 29:26-27 |
| a framework of louvers disposed over the printed circuit board, the framework of louvers disposed between rows of the LEDs | The product comprises a framework of louvers disposed over the printed circuit board and disposed between rows of the LEDs. | ¶31 | col. 29:28-31 |
| wherein the modular display panel is sealed to be waterproof | The R4S Intelligent Spider Series product is sealed to be waterproof. | ¶32 | col. 29:32-33 |
9,916,782 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 sidewalls of the shell comprise plastic | The R4S product is a modular display panel comprising a shell comprising a first thermally conductive material, wherein the sidewalls of the shell comprise plastic. | ¶42 | col. 30:58-61 |
| a printed circuit board disposed in the shell | The R4S product comprises a printed circuit board disposed in the shell. | ¶43 | col. 30:62 |
| a plurality of LEDs attached to a first side of the printed circuit board | The product comprises a plurality of LEDs attached to a first side of the printed circuit board. | ¶43 | col. 30:63-64 |
| a driver circuit disposed in the shell and coupled to the plurality of LEDs from a second side of the printed circuit board | The product comprises a driver circuit disposed in the shell and coupled to the plurality of LEDs from a second side of the printed circuit board. | ¶44 | col. 30:65-68 |
| a power supply unit for powering the LEDs, the printed circuit board being disposed between the power supply unit and the plurality of LEDs | The product comprises a power supply unit for powering the LEDs, with the printed circuit board disposed between the power supply unit and the LEDs. | ¶45 | col. 31:1-4 |
| a second thermally conductive material disposed between the power supply unit and an outer back side of the panel | The product comprises a second thermally conductive material disposed between the power supply unit and an outer back side of the panel. | ¶46 | col. 31:5-7 |
| a protective structure disposed over the first side of the printed circuit board | The product comprises a protective structure disposed over the first side of the printed circuit board. | ¶47 | col. 31:8-9 |
| wherein the modular display panel is sealed to be waterproof | The R4S Intelligent Spider Series product is sealed to be waterproof. | ¶48 | col. 31:10-11 |
Identified Points of Contention
- Scope Questions: The infringement analysis for both patents may raise questions regarding the scope of functional and descriptive terms. For the ’306 and ’782 Patents, the term "sealed to be waterproof" is a performance characteristic whose scope is not defined by a specific standard (e.g., an IP rating) in the claim itself. For the ’782 Patent, the definitions of "thermally conductive material" and "protective structure" will be significant, as the complaint offers no specific technical details on what materials or structures in the accused product meet these limitations.
- Technical Questions: A central technical question for the ’782 Patent will be evidentiary: does the accused product actually contain the specific layered arrangement required by claim 1? The claim requires a precise spatial relationship between the PCB, power supply, and two distinct "thermally conductive" materials. The complaint's allegations track the claim language but do not provide technical evidence (e.g., from a product teardown) demonstrating this specific construction.
V. Key Claim Terms for Construction
- The Term: "sealed to be waterproof" (asserted in Claim 1 of both the ’306 and ’782 Patents)
- Context and Importance: This is a key functional limitation that distinguishes the patented technology from prior art that relied on external cabinets for weather protection. The degree of water resistance required to meet this limitation will be a central issue. Practitioners may focus on this term because its construction will set the standard for infringement, determining whether simple water resistance is sufficient or if a higher standard, such as the ability to withstand submersion, is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular standard, which may support an interpretation based on the plain and ordinary meaning of "waterproof" in the context of outdoor electronics.
- Evidence for a Narrower Interpretation: The specification discloses that in "certain embodiments, the display is IP 67 rated" and "completely waterproof against submersion in up to 3 feet of water" (’306 Patent, col. 4:51-56). A defendant may argue this disclosure limits the term to a high standard of water-tightness, such as that defined by the IP67 rating. The specification also refers to the panels being "hermetically sealed" (’306 Patent, col. 2:5-6), which could imply a very high, airtight standard.
- The Term: "protective structure" (asserted in Claim 1 of the ’782 Patent)
- Context and Importance: This term is critical because the complaint alleges the accused product has this feature without specifying what it is. Its construction will determine what feature of the accused product must be identified to prove infringement—it could be interpreted to mean the louvers, a potting compound, or another component entirely.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined in the patent, which could support a broad construction encompassing any component that serves a protective function over the front of the PCB. The detailed description mentions both a "transparent potting compound" (’782 Patent, col. 2:14-15) and a "framework of louvers" (’782 Patent, col. 1:63-65) as features that can be placed over the LEDs/PCB, suggesting either could potentially be considered a "protective structure."
- Evidence for a Narrower Interpretation: A defendant may argue that since the related ’306 Patent explicitly claims a "framework of louvers," the use of a different term ("protective structure") in the ’782 Patent implies a different scope that does not necessarily read on louvers. The patent's abstract also mentions the protective structure in a way that appears distinct from other components.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents, asserting that Defendants knowingly and intentionally induce customers and end-users by "supplying these products to end users for use in an infringing manner" (Compl. ¶¶35, 51).
- Willful Infringement: The complaint does not contain a separate count for willful infringement. However, it alleges that Defendants had knowledge of infringement "at least as of the date of this Complaint" (Compl. ¶¶35, 51) and the prayer for relief requests enhanced damages under 35 U.S.C. § 284 (Compl. p. 14, ¶c). This may form the basis for a claim of post-filing willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: The complaint's infringement allegations closely mirror the language of the asserted claims but lack specific factual support for how the accused product is constructed. A key question for the case will be whether discovery reveals that the accused R4S Intelligent Spider Series product actually incorporates the specific material compositions (e.g., "thermally conductive material," "plastic" sidewalls) and layered physical architecture (e.g., the precise placement of the PCB, power supply, and thermal materials) required by the claims of the ’782 patent.
- The case will also turn on a question of definitional scope: The meaning of the term "sealed to be waterproof" will be critical. The court’s construction of this term—whether it requires a specific industry rating like IP67 as suggested by the specification, or a more general resistance to weather—will likely determine the outcome of infringement for both asserted patents.