DCT
2:18-cv-00117
Ultravision Tech LLC v. Vanguard LED Displays Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultravision Technologies, LLC (Texas)
- Defendant: Vanguard LED Displays, Inc. (Florida)
- Plaintiff’s Counsel: Brown Rudnick LLP; McKool Smith, P.C.
- Case Name: Ultravision Technologies, LLC v. Vanguard LED Displays, Inc.
- Case Identification: 2:18-cv-00117, E.D. Tex., 03/27/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has a regular and established place of business in the district and has transacted business involving the accused products there.
- Core Dispute: Plaintiff alleges that Defendant’s modular LED display products infringe two patents related to the design and construction of modular, waterproof LED panels.
- Technical Context: The technology concerns integrated, cabinet-less LED display panels designed to be lightweight, waterproof, and easily assembled into large-scale digital billboards, aiming to replace heavier, more complex legacy systems.
- Key Procedural History: The complaint states that a related action was filed against the same Defendant in the U.S. International Trade Commission (ITC) on the same day, asserting the same two patents. An ITC investigation typically proceeds on an accelerated timeline and can result in an exclusion order barring importation of infringing products.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-31 | Priority Date for ’306 Patent and ’782 Patent |
| 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 Action Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,349,306 - "Modular Display Panel"
The Invention Explained
- Problem Addressed: The complaint asserts that prior art LED display panels for outdoor use were not waterproof and required placement within heavy, sealed cabinets that needed active cooling systems like fans or air conditioning, leading to high manufacturing, installation, and operating costs (Compl. ¶5-6).
- The Patented Solution: The patent describes an integrated, modular display panel that is itself "hermetically sealed and exposed to the environment without use of any cabinets" (’306 Patent, col. 2:5-7). The invention comprises a casing with a recess holding a printed circuit board (PCB) with LEDs, a driver circuit, a power supply, and an overlying framework of louvers to reduce glare (’306 Patent, Abstract). The complaint includes a diagram contrasting this integrated design against older, cabinet-based systems. (Compl. p. 5, Figure 4). This self-contained, modular design is intended to be passively cooled and easily assembled into larger displays (’306 Patent, col. 2:7-9).
- Technical Importance: This cabinet-less, modular approach was designed to significantly reduce the weight, complexity, and total cost of ownership for large-format digital displays (Compl. ¶7).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶25).
- The essential elements of independent claim 1 include:
- a casing having a recess, attachment points for multi-panel displays, and an outer surface
- a printed circuit board disposed in the recess
- a plurality of LEDs attached to the front of the printed circuit board
- a driver circuit attached to the printed circuit board
- a power supply unit for the LEDs
- a framework of louvers disposed over the printed circuit board and between rows of LEDs
- the modular display panel is sealed to be waterproof
- The complaint alleges infringement of "one or more claims," implicitly reserving the right to assert other claims (Compl. ¶25).
U.S. Patent No. 9,916,782 - "Modular Display Panel"
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’306 Patent, this patent addresses the same problems of costly, heavy, and difficult-to-maintain cabinet-based LED displays (’782 Patent, col. 1:25-43).
- The Patented Solution: This invention also describes a modular, waterproof display panel, but its claims focus on the thermal management and material composition. The solution includes a shell made of a "first thermally conductive material" with plastic sidewalls, containing the PCB and driver circuit. A "second thermally conductive material" is placed between the power supply and the outer back side of the panel to facilitate heat dissipation (’782 Patent, Abstract). This construction is designed for passive cooling without the need for fans or air conditioning (’782 Patent, col. 2:15-18).
- Technical Importance: The claimed configuration provides a specific technical approach for managing heat in a sealed, cabinet-less LED panel, which is critical for the longevity and performance of the electronic components (Compl. ¶4).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶39).
- The essential elements of independent claim 1 include:
- a shell comprising a first thermally conductive material, with sidewalls made of plastic
- a printed circuit board disposed in the shell
- a plurality of LEDs attached to a first side of the printed circuit board
- 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 it 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 over the first side of the printed circuit board
- the modular display panel is sealed to be waterproof
- The complaint alleges infringement of "one or more claims," implicitly reserving the right to assert other claims (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
- Defendant’s "Thulium product," which is described as a modular LED display (Compl. ¶25, ¶39).
Functionality and Market Context
- The complaint alleges, upon information and belief, that the Thulium product is a modular display panel that incorporates all elements of the asserted claims, including a casing with a recess, a PCB with LEDs, a driver circuit, a power supply, and protective louvers (Compl. ¶26-29). For the ’782 Patent, the Thulium product is alleged to comprise a shell with a thermally conductive material and plastic sidewalls, a power supply, and a second thermally conductive material for heat dissipation (Compl. ¶40, ¶44). The complaint provides an image of the rear of the accused "Thulium" product, showing its modular construction with a handle and attachment points (Compl. p. 9). Plaintiff alleges that companies like Defendant have "recently entered the U.S. market" with products that copy Plaintiff's modular, waterproof design (Compl. ¶10, ¶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, and the casing also comprises attachment points for use in attachment as part of a multi-panel modular display... | The Thulium product is a modular display panel comprising a casing with a recess and attachment points. | ¶26 | col. 1:45-49 |
| a printed circuit board disposed in the recess, and a plurality of LEDs attached to a front side of the printed circuit board | The Thulium product comprises a PCB in the recess with a plurality of LEDs attached to its front side. | ¶27 | col. 1:49-52 |
| a driver circuit attached to the printed circuit board and a power supply unit for powering the LEDs | The Thulium product comprises a driver circuit attached to the PCB and a power supply for the LEDs. | ¶28 | col. 1:52-54 |
| a framework of louvers disposed over the printed circuit board and disposed between rows of the LEDs | The Thulium product comprises a framework of louvers disposed over the PCB and between LED rows. | ¶29 | col. 1:55-57 |
| wherein the modular display panel is sealed to be waterproof | The Thulium product is alleged to be sealed to be waterproof. | ¶30 | col. 2:5-7 |
- 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 the sidewalls of the shell comprise plastic | The Thulium product comprises a shell with a first thermally conductive material and plastic sidewalls. | ¶40 | col. 2:10-12 |
| a printed circuit board disposed in the shell, and a plurality of LEDs attached to a first side of the printed circuit board | The Thulium product comprises a PCB in the shell with a plurality of LEDs attached to its first side. | ¶41 | col. 2:12-14 |
| a driver circuit disposed in the shell and coupled to the plurality of LEDs from a second side of the printed circuit board | The Thulium product comprises a driver circuit in the shell coupled to the LEDs from the second side of the PCB. | ¶42 | col. 2:14-16 |
| a power supply unit for powering the LEDs, with the printed circuit board disposed between the power supply unit and the LEDs | The Thulium product comprises a power supply unit for powering the LEDs, with the PCB disposed between the power supply and the LEDs. | ¶43 | col. 2:17-19 |
| a second thermally conductive material disposed between the power supply unit and an outer back side of the panel | The Thulium product comprises a second thermally conductive material disposed between the power supply and the panel's outer back side. | ¶44 | col. 2:19-21 |
| a protective structure disposed over the first side of the printed circuit board | The Thulium product comprises a protective structure disposed over the first side of the PCB. | ¶45 | col. 2:21-23 |
| wherein the modular display panel is sealed to be waterproof | The Thulium product is alleged to be sealed to be waterproof. | ¶46 | col. 2:24-25 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint’s allegations regarding the internal structure and material composition of the Thulium product are made "upon information and belief." A central issue will be what evidence Plaintiff provides to substantiate these claims, particularly regarding the presence and arrangement of the two "thermally conductive materials" required by the ’782 Patent.
- Scope Questions: For the ’782 Patent, a key dispute may arise over the definition of "thermally conductive material." The infringement analysis will turn on whether the materials used in the accused product meet the construed definition of this term. Similarly, the meaning of "protective structure" and whether it is distinct from the "framework of louvers" in the ’306 Patent may be contested.
V. Key Claim Terms for Construction
The Term: "sealed to be waterproof" (present in both asserted claims)
- Context and Importance: This limitation is central to the patents' asserted departure from prior art systems that required separate waterproof cabinets. The definition of this term will be critical for determining whether the accused product, which operates outdoors, infringes. Practitioners may focus on this term because its scope will determine the required level of water resistance.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests various levels of water resistance are contemplated, noting that in "lower-cost embodiments," panels can have an "IP 65 or IP 66 rating," which protect against water jets but not submersion (’306 Patent, col. 3:60-62). This may support a construction that does not require full hermetic sealing or submersion-proofing.
- Evidence for a Narrower Interpretation: The specification also states that panels are "hermetically sealed" (’306 Patent, col. 2:5) and, in certain embodiments, are "completely waterproof against submersion in up to 3 feet of water" with an IP 67 rating (’306 Patent, col. 3:55-58). This language may support a narrower construction requiring a higher degree of sealing.
The Term: "thermally conductive material" (’782 Patent, Claim 1)
- Context and Importance: The ’782 Patent’s claims are distinguished by their focus on thermal management, reciting both a "first" and "second" thermally conductive material. The meaning of this term is essential to analyzing infringement of the patent’s specific heat dissipation architecture.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification, incorporated by reference from the parent patent, states that the housing (which would be the first material) can be constructed of "aluminum or plastic" (’306 Patent, col. 3:47-48), suggesting that materials with a wide range of thermal conductivities are contemplated.
- Evidence for a Narrower Interpretation: The specification's emphasis on passive cooling and heat dissipation away from the electronics may support a construction requiring a material with a thermal conductivity above a certain threshold (e.g., a metal like the described aluminum, '306 Patent, col. 7:44-46) rather than a less conductive plastic.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents, asserting that Defendant knowingly and intentionally induces its customers and end-users to infringe by "supplying these products to end users for use in an infringing manner" (Compl. ¶32-34, ¶48-50).
- Willful Infringement: The complaint does not contain a separate count for willful infringement, but it alleges that Defendant acted with knowledge "at least as of the date of this Complaint" (Compl. ¶33, ¶49) and seeks enhanced damages in its prayer for relief (Compl. p. 13). This suggests an intent to pursue a willfulness theory based on Defendant's post-filing conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: as the infringement allegations concerning the internal components and materials of the accused product are made on "information and belief," the case will likely depend on the evidence Plaintiff uncovers in discovery to prove that the product’s actual construction, particularly its thermal management system, reads on the asserted claims of the ’782 patent.
- The outcome may also depend on a question of definitional scope: how the court construes the term "sealed to be waterproof." Whether this requires the high level of protection against submersion described in a preferred embodiment (IP 67), or a more general weather resistance (IP 65/66), will be a critical factor in the infringement analysis for both patents.