DCT

2:18-cv-00353

Lemaire Illumination Tech LLC v. Huawei Tech USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00353, E.D. Tex., 03/15/2019
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendant Huawei Device USA, Inc. is a Texas corporation that resides in the district and has a regular and established place of business in Plano, Texas. Venue over the foreign defendants is alleged to be proper in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s Huawei Honor 8 and Mate 9 smartphones infringe three patents related to controlling pulsed light-emitting diode (LED) illumination systems for camera flashes.
  • Technical Context: The technology concerns methods and circuits for driving LEDs with electrical pulses to maintain consistent brightness and achieve accurate color balance, particularly in battery-powered devices where voltage varies over time.
  • Key Procedural History: The asserted patents descend from a common 1998 application. Notably, two of the asserted patents, U.S. Patent Nos. 6,095,661 and 6,488,390, were subject to inter partes review (IPR) proceedings. IPR certificates attached to the patents indicate that numerous claims were cancelled, including independent claims from which several of the claims asserted in this complaint depend. The complaint alleges Defendants have been aware of the patent family since at least mid-to-late 2015.

Case Timeline

Date Event
1998-03-19 Priority Date for ’661, ’390, and ’266 Patents
2000-08-01 ’661 Patent Issued
2002-12-03 ’390 Patent Issued
2015-08-25 ’266 Patent Issued
2015-09-15 Approximate date Plaintiff allegedly notified Defendants of the patent family
2016-08-16 Huawei Honor 8 Smartphone Unveiled in U.S.
2016-11-03 Huawei Mate 9 Smartphone Unveiled Globally
2017-01-07 Huawei Mate 9 Smartphone Sales Begin in U.S.
2019-03-15 Second Amended Complaint Filed

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 describes the problem of battery-powered lights, such as flashlights, growing dimmer as the battery’s voltage decreases. It also notes the inefficiency of using simple resistors to limit current to LEDs, which wastes power as heat (’661 Patent, col. 1:22-34).
  • The Patented Solution: The invention proposes using a control circuit to drive LEDs with electrical pulses rather than continuous power. By adjusting characteristics of these pulses (e.g., width, frequency), the circuit can maintain a consistent average light output level even as the battery voltage drops. The system can also use multiple colored LEDs, controlling the pulses to each to manage the overall color spectrum of the output light (’661 Patent, Abstract; Fig. 1).
  • Technical Importance: This control method enabled the creation of more power-efficient portable LED devices that could provide stable and color-controlled illumination, a key requirement for applications like camera flashes (Compl. ¶¶21-22).

Key Claims at a Glance

  • The complaint asserts dependent claim 32 and independent claim 34, as well as dependent claim 35 (Compl. ¶60). However, claim 31, from which claim 32 depends, was cancelled via IPR, rendering claim 32 invalid.
  • Independent Claim 34 recites:
    • An illumination source comprising an LED housing with one or more LEDs.
    • An electrical control circuit that selectively applies pulsed power from a DC voltage source to the LEDs.
    • The circuit applies the pulsed power to control a light output color spectrum.
    • The circuit also applies the pulsed power to maintain a predetermined light output level as the charge on the DC voltage source varies.
  • The complaint reserves the right to assert other claims.

U.S. Patent No. 6,488,390 - “Color-Adjusted Camera Light and Method,” issued December 3, 2002

The Invention Explained

  • Problem Addressed: The patent addresses the need for a portable, battery-powered illumination source for a camera that can be adjusted for color, compensating for ambient light conditions or achieving specific photographic effects (’390 Patent, col. 1:13-19).
  • The Patented Solution: The invention integrates an LED light source with a video camera. A control circuit applies pulses to the LEDs based on a "feedback signal" from the camera's imaging device. This feedback, which can be based on the color balance of the image, allows the circuit to dynamically change the characteristics of the light pulses to control the final light output (’390 Patent, Abstract; Fig. 5).
  • Technical Importance: This technology describes a "smart" flash system capable of actively adjusting its own color output in a closed-loop fashion based on what the camera sensor sees, representing a significant advance for color accuracy in digital imaging (Compl. ¶¶21-22).

Key Claims at a Glance

  • The complaint asserts claims 8 and 40 (Compl. ¶77). However, IPR proceedings cancelled independent claims 1 and 35, from which claims 8 and 40 depend, respectively. Therefore, both asserted claims of the ’390 Patent are invalid.
  • Independent Claim 1 (Cancelled) recited:
    • A portable video camera and illumination source system comprising a housing, one or more LEDs, and a video camera imaging device.
    • A control circuit that applies a plurality of pulses to the LEDs.
    • A feedback signal coupled to the control circuit.
    • The control circuit changes a characteristic of the pulses to control a light output characteristic of the LEDs based on the feedback signal.
  • The complaint reserves the right to assert other claims.

U.S. Patent No. 9,119,266 - “Pulsed L.E.D. Illumination Apparatus and Method,” issued August 25, 2015

Technology Synopsis

As a later member of the same patent family, this patent further refines the camera-integrated LED system. It describes an apparatus with an electronic camera, a "measurement unit" that measures the color balance of the camera's image signal, and a control circuit. The circuit uses this measurement to control pulse characteristics for a plurality of LEDs (with at least two different colors) to change the proportion of their respective light outputs, while also generating pulses to keep the average light intensity constant as the source voltage changes (’266 Patent, Abstract; col. 2:18-45).

Asserted Claims

Independent claims 1 and 16, and dependent claims 2, 5, and 17 (Compl. ¶93).

Accused Features

The complaint alleges that the dual-LED flash systems in the accused smartphones, including their processors and sensors, function as the claimed apparatus. Specifically, it is alleged that they measure the color balance of the image signal and use that information to adjust the pulses driving different colored LEDs to control the flash's color and intensity (Compl. ¶¶94-96).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the Huawei Honor 8 and Huawei Mate 9 smartphone devices (Compl. ¶2).

Functionality and Market Context

The complaint alleges that the accused smartphones include a "dual LED flash" system comprising multiple LEDs, a battery, a camera, and an electrical control circuit (Compl. ¶¶47, 53). When the camera is activated, the control circuit is alleged to provide a set of electrical pulses to the LEDs to generate light. The complaint further alleges that this circuit adjusts the pulses to control the color spectrum and maintain the light output level as the battery's charge varies (Compl. ¶¶48, 54). A "measurement unit," identified as a processor and/or sensor, is alleged to measure the color balance of the image signal produced by the camera (Compl. ¶¶49, 55). 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
An illumination source, comprising: (a) a light-emitting diode (LED) housing comprising one or more LEDs; The Accused Devices are illumination sources with a dual LED flash having one or more LEDs and a supporting case structure. ¶62 col. 4:45-48
and (b) an electrical control circuit that selectively applies pulsed power from a DC voltage source of electric power to the LEDs The Accused Devices have an electrical control circuit that selectively provides a set of pulses from the battery to the dual LED flash. ¶62 col. 4:49-51
to control a light output color spectrum of the one or more LEDs The set of pulses allegedly changes to control a color spectrum of the light output of the dual LED flash. ¶62 col. 4:49-54
and maintain a predetermined light output level of the LED units as a charge on the DC voltage source varies. The control circuit allegedly maintains the light output as the DC voltage source (the battery) charge varies. ¶62 col. 3:15-22

Identified Points of Contention

  • Scope Questions: A central question for claim construction may be the scope of "maintain a predetermined light output level." The dispute may turn on whether the accused devices' alleged behavior—"maintains the light output"—meets the specific requirement of maintaining a "predetermined" level, which suggests active regulation to a set target, versus a more passive system where output naturally degrades with voltage.
  • Technical Questions: A key evidentiary issue will be whether the Plaintiff can demonstrate that the accused control circuit actually performs the function of maintaining a predetermined output level as the battery drains. The complaint makes this allegation conclusorily (Compl. ¶62), and the case may depend on technical evidence showing the specific operational logic of the accused circuit.

V. Key Claim Terms for Construction

The Term: "maintain a predetermined light output level" (from ’661 Patent, Claim 34)

  • Context and Importance: This term is the central functional limitation of claim 34. The infringement analysis will hinge on whether the accused devices actively regulate their light output to a specific, "predetermined" target as battery voltage changes. Practitioners may focus on this term because it distinguishes a simple pulsed system from one with active power management.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification refers to maintaining an "average predetermined light output level" (’661 Patent, col. 2:27-28), which a party could argue does not require perfect, instantaneous constancy but rather a more general stability over time.
    • Evidence for a Narrower Interpretation: The patent describes embodiments that use a feedback circuit to measure light output and adjust pulses accordingly (’661 Patent, col. 4:10-13; col. 2:36-40). A party could argue this implies that "maintaining" requires an active, closed-loop control mechanism, not merely an open-loop pulsing scheme that inherently resists dimming.

The Term: "feedback signal" (from ’390 Patent, Claim 1 [Cancelled])

  • Context and Importance: Although the asserted claims of the ’390 patent are invalid, this term is technologically central to the patent family's evolution. It defines the "smart" aspect of the flash system. Its interpretation would be critical to determining infringement for any surviving claims in the family that rely on it.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes feedback being based on various parameters, including not only the image but also battery voltage or LED light intensity, suggesting the term could encompass any data used to regulate the circuit (’390 Patent, col. 8:8-14).
    • Evidence for a Narrower Interpretation: The patent’s abstract and detailed embodiments emphasize feedback based on the "color balance of a output signal from the imaging device" (’390 Patent, col. 10:43-47; Abstract). This could support an interpretation limiting the term to data derived specifically from the captured image for the purpose of color correction.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all three patents. The allegations are based on Defendants' advertising, user manuals, and technical support, which allegedly instruct customers and end-users to operate the accused smartphones' camera and flash systems in an infringing manner (Compl. ¶¶64-66, 80-82, 97-99).

Willful Infringement

Willfulness is alleged for all patents based on pre-suit knowledge. The complaint makes a specific factual allegation that "on or about September 2015 Lemaire Illumination informed Tao Zhang, in-house counsel and Director of IP Strategy for Defendants of the '661 Patent family" (Compl. ¶43). This alleged notice, occurring years before the accused products were launched, forms the primary basis for the willfulness claim (Compl. ¶¶68, 84, 101).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A dispositive threshold issue will be one of claim validity: can the Plaintiff maintain its causes of action for infringement of claim 32 of the ’661 Patent and claims 8 and 40 of the ’390 Patent, given that the independent claims from which they depend were cancelled in prior inter partes review proceedings? The complaint's assertion of these claims appears to be a significant legal vulnerability.
  • A central evidentiary question will be one of technical operation: for the remaining asserted claims, what evidence exists to show that the accused smartphones' control circuits perform the specific, sophisticated functions recited—such as "maintain[ing] a predetermined light output level" ('661 Patent) or using a "measured color balance of the image signal" to actively control the proportions of light from different colored LEDs ('266 Patent)—as opposed to employing more generic pulsing schemes?
  • A key factual question for willfulness will be one of pre-suit knowledge: can the Plaintiff prove its allegation that it provided effective notice of the patent family to Defendants' in-house counsel in 2015? The outcome of this question will be critical to the claim for enhanced damages.