DCT

2:23-cv-00100

Lumenco LLC v. Giesecke+devrient GmbH

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00100, E.D. Tex., 03/22/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are not residents of the United States and therefore may be sued in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ anti-counterfeiting security threads and patches for banknotes infringe four U.S. patents related to creating multiplanar, three-dimensional images using arrays of individually oriented micro-mirrors.
  • Technical Context: The technology at issue resides in the field of micro-optics for high-security applications, such as currency and brand authentication, where creating visual effects that are difficult to counterfeit is of significant commercial importance.
  • Key Procedural History: The complaint details pre-suit interactions, including a May 2017 meeting where Plaintiff allegedly presented its technology to Defendants. Plaintiff also alleges sending a letter in January 2021 identifying three of the patents-in-suit, to which Defendants allegedly responded that the patents were not relevant to their products but offered to purchase them. The complaint also notes that Plaintiff filed a parallel infringement action in Germany in February 2023.

Case Timeline

Date Event
2015-12-03 Earliest Priority Date for ’691, ’294, ’191, and ’863 Patents
2016-05-23 Application filed for ’294 Patent
2017-05 Plaintiff Lumenco presents its technology to Defendants
2017-05-08 Application filed for ’691 Patent
Shortly after May 2017 Defendants allegedly release first examples of Accused Products
2018-02 Banknote featuring Accused Product wins industry award
2018-11-28 Application filed for ’191 Patent
2019-01-29 ’294 Patent Issued
2019-06-11 ’691 Patent Issued
2021-01-19 Application filed for ’863 Patent
2021-01-21 Plaintiff sends letter to Defendants identifying ’691, ’294, and ’191 Patents
2021-01-26 ’191 Patent Issued
2022-09-20 ’863 Patent Issued
2023-03-22 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,317,691 - Arrays Of Individually Oriented Micro Mirrors Providing Infinite Axis Activation Imaging For Imaging Security Devices

  • Patent Identification: U.S. Patent No. 10,317,691, "Arrays Of Individually Oriented Micro Mirrors Providing Infinite Axis Activation Imaging For Imaging Security Devices," issued June 11, 2019. (Compl. ¶¶1, 57).

The Invention Explained

  • Problem Addressed: The patent addresses the shortcomings of prior art anti-counterfeiting technologies like moiré patterns and holograms, which the patent asserts are becoming increasingly susceptible to forgery and are limited in the visual effects they can produce. (Compl. ¶¶25-27; ’691 Patent, col. 2:4-15).
  • The Patented Solution: The invention uses an array of microscopic mirrors, where different groups ("sets") of mirrors are precisely oriented to reflect ambient light to common points ("pixels"). (Compl. ¶30). These focused points of light create images that appear to float in different spatial planes above the surface on which the mirrors are located. By assigning different sets of mirrors to create pixels for different images, and giving each of these sets a unique "cone angle offset," the invention can display multiple distinct images that are visible only from different viewing angles, creating an animated or three-dimensional effect. (Compl. ¶¶63-64; ’691 Patent, col. 3:51-64). The complaint includes a reproduction of the patent's Figure 2, which illustrates two distinct images being generated on two separate planes above the micro-mirror substrate. (Compl. ¶33, p. 7).
  • Technical Importance: This approach enables the creation of complex, multi-layered visual security features that do not require special lighting or glasses and are described as "practically, if not literally, impossible to replicate." (Compl. ¶28).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶63).
  • Essential elements of Claim 1 include:
    • A substrate with an array of micro mirrors that displays a plurality of images in a plane spaced apart from the substrate.
    • For each pixel of each image, a "set" of micro mirrors is oriented to reflect ambient light toward that pixel's corresponding point.
    • The sets of mirrors corresponding to different images have a "differing cone angle offset."
    • The cones of reflected light have an angle between 10 and 45 degrees and are offset so they do not overlap at a predefined height, making only one image observable at a time.
    • Each set includes at least two micro mirrors whose reflected light intersects at the pixel point, which corresponds to the apex of a cone.
    • The micro mirrors for each set are "selected randomly from available micro mirrors in the base of the cone," resulting in a "random pattern."

U.S. Patent No. 10,189,294 - Arrays Of Individually Oriented Micro Mirrors For Use In Imaging Security Devices For Currency And Brand Authentication

  • Patent Identification: U.S. Patent No. 10,189,294, "Arrays Of Individually Oriented Micro Mirrors For Use In Imaging Security Devices For Currency And Brand Authentication," issued January 29, 2019. (Compl. ¶¶1, 74).

The Invention Explained

  • Problem Addressed: The patent identifies a need for new anti-counterfeiting technology that is more secure than holograms or micro-lenses and can produce a "wow factor" with images that appear to truly float in 3D space. (’294 Patent, col. 2:11-33).
  • The Patented Solution: The invention provides a visual display assembly where an array of micro mirrors is formed on a substrate. Each mirror is "individually oriented" by having its body rotated about one or two axes. (’294 Patent, col. 7:1-9). This precise orientation allows different sets of mirrors to concurrently reflect ambient light to generate a plurality of pixels. The intersection of two or more beams of this reflected light creates a "voxel" at each pixel point, producing the effect of a "point source of light floating above the surface of the substrate." (’294 Patent, Claim 1).
  • Technical Importance: This technology allows for the fabrication of security elements that produce robust, three-dimensional images, which are described as being "extremely difficult, if not impossible, to replicate and copy." (Compl. ¶24).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶80).
  • Essential elements of Claim 1 include:
    • A substrate with an array of micro mirrors displaying an image in a plane spaced apart from the substrate.
    • For each pixel, a different "set" of micro mirrors is used, each having a reflective surface oriented in a fixed manner by rotating the mirror's body about at least one of a first and second rotation axis.
    • The different sets concurrently reflect ambient light to generate the plurality of pixels.
    • A "voxel" is created at each point on the plane via the intersection of two or more beams of reflected light.
    • Each created voxel produces the effect of a "point source of light floating above the surface of the substrate."

Multi-Patent Capsule: U.S. Patent No. 10,901,191

  • Patent Identification: U.S. Patent No. 10,901,191, "Method Of Fabricating Arrays Of Individually Oriented Micro Mirrors For Use In Imaging Security Devices," issued January 26, 2021. (Compl. ¶¶1, 91).
  • Technology Synopsis: This patent claims a method for fabricating the type of security elements described in the ’294 Patent. The claimed process involves providing a substrate and then forming an array of micro mirrors on its surface, where the mirrors are configured with bodies rotated about axes to create floating images composed of voxels. (Compl. ¶98).
  • Asserted Claims: Independent claim 1. (Compl. ¶97).
  • Accused Features: The complaint alleges that Defendants' acts of manufacturing the Accused Products constitute performance of the claimed method steps. (Compl. ¶98).

Multi-Patent Capsule: U.S. Patent No. 11,448,863

  • Patent Identification: U.S. Patent No. 11,448,863, "Method Of Fabricating Arrays Of Individually Oriented Micro Mirrors For Use In Imaging Security Devices," issued September 20, 2022. (Compl. ¶¶1, 108).
  • Technology Synopsis: This patent claims a computer-implemented method for designing and fabricating the security elements. The claimed process involves using a processor with an "array design module" to assign digital objects to different image planes, select sets of micro mirrors, determine the specific angular orientation for each mirror, generate a design output file with this data, and then form the physical mirror array based on that file. (Compl. ¶115).
  • Asserted Claims: Independent claim 1. (Compl. ¶114).
  • Accused Features: The complaint alleges that Defendants' manufacturing process for the Accused Products performs the claimed design and fabrication steps. (Compl. ¶115).

III. The Accused Instrumentality

Product Identification

  • The accused products are Defendants' "Galaxy®-branded security threads," similar micro-mirror threads sold under other brands, and banknotes incorporating these security features. (Compl. ¶42).

Functionality and Market Context

  • The Accused Products are security threads embedded into paper currency to serve as anti-counterfeiting measures. (Compl. ¶44). They are marketed as utilizing "millions of micro-mirrors arranged on nanoscale dimensions." (Compl. ¶44). The complaint provides an image of an exemplary Galaxy® security thread, showing dynamic, circular patterns that appear to have depth. (Compl. p. 9). These threads have been incorporated into banknotes for numerous countries, including Honduras, the UAE, Thailand, Hong Kong, and Guatemala. (Compl. ¶46). The complaint notes that a collector's note featuring the Galaxy® thread was named Regional Banknote of the Year in 2018, suggesting market success and recognition. (Compl. ¶45). Another image shows the Galaxy thread on a Hong Kong banknote, where it appears as a series of windows displaying dynamic imagery. (Compl. p. 10).

IV. Analysis of Infringement Allegations

10,317,691 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a visual display assembly... comprising: a substrate; and on a surface of the substrate, an array of micro mirrors... displaying a plurality of images in a plane spaced a distance apart from the surface of the substrate... The Accused Products include a visual display assembly useful as a security element on currency, comprising a substrate and, on a surface of the substrate, an array of micro mirrors displaying a plurality of images in a plane spaced apart from the surface. ¶64 col. 5:15-21
wherein each of the sets of the micro mirrors providing the pixels for each of the differing ones of the images has a differing cone angle offset... The Accused Products' sets of micro mirrors for differing images each have a differing cone angle offset. ¶64 col. 3:51-64
wherein the cone has a cone angle in the range of 10 to 45 degrees, wherein the cone angle offsets are selected whereby the cones do not overlap at a predefined height above the substrate, whereby only one of the images is observable at a time by a viewer... The Accused Products have a cone angle in the required range and cone angle offsets selected so the cones do not overlap at a predefined height, making only one image observable at a time. ¶64 col. 4:35-42
wherein each of the micro mirrors in each of the sets for the micro mirrors is selected randomly from available micro mirrors in the base of the cone coplanar with the surface of the substrate, whereby each of the sets of the micro mirrors is arranged in a random pattern. The micro mirrors in each set are selected randomly from available micro mirrors in the base of the cone, and the sets are arranged in a random pattern. ¶64 col. 8:35-43

10,189,294 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a visual display assembly... comprising: a substrate; and on a surface of the substrate, an array of micro mirrors... displaying an image in a plane spaced a distance apart from the surface of the substrate... The Accused Products are a visual display assembly comprising a substrate and an array of micro mirrors on its surface that displays an image in a plane spaced apart from the surface. ¶81 col. 3:9-19
wherein the array of micro mirrors includes for each of the pixels a different set of the micro mirrors each having a reflective surface oriented, in a fixed manner with a body of each of the micro mirrors rotated about at least one of first and second rotation axes extending through the body... The Accused Products' array includes, for each pixel, a different set of micro mirrors, each with a reflective surface oriented by rotating the mirror's body about at least one of first and second rotation axes. ¶81 col. 7:1-9
wherein a voxel is created at each of the points on the plane via intersection of two or more beams of the reflected ambient light and wherein each of the created voxels produces an effect of a point source of light floating above the surface of the substrate in the plane. The Accused Products create a voxel at each point on the image plane through the intersection of two or more reflected light beams, which produces the effect of a floating point source of light. ¶81 col. 6:50-65

Identified Points of Contention

  • Evidentiary Questions: The complaint's allegations for both patents track the claim language closely. A central point of contention may be evidentiary: what technical evidence supports the assertions that the Accused Products operate in the specific manner claimed? For the ’691 Patent, this raises the question of how "randomly" the mirrors are selected and arranged. For the ’294 Patent, it raises the question of whether the optical effect produced by the Accused Products is technically a "voxel" created by the "intersection of two or more beams."
  • Scope Questions: The dispute may also involve claim scope. For the ’691 Patent, the definition of a "random pattern" could be contested—does it require true mathematical randomness in the design process, or merely the absence of a visually discernible, regular pattern? For the ’294 Patent, the definition of "voxel" and "point source of light" may be critical in determining whether the claim reads on the specific optical phenomena generated by the Accused Products.

V. Key Claim Terms for Construction

The Term: "selected randomly" (’691 Patent, Claim 1)

  • Context and Importance: This term is central to how the mirror sets are formed. The infringement analysis will depend on whether the Defendants' design and fabrication process for the Accused Products can be characterized as using random selection. Practitioners may focus on this term because it pertains to the defendant's proprietary manufacturing process, which will likely require discovery to analyze.
  • Intrinsic Evidence for a Broader Interpretation: A party could argue for a broader meaning, suggesting it means only that the resulting pattern is not regular or predictable to a viewer. The specification states that random selection ensures the mirrors "do not provide an obvious, regular pattern." (’691 Patent, col. 8:36-37).
  • Intrinsic Evidence for a Narrower Interpretation: A party could argue for a narrower meaning tied to a specific computational method. The specification describes a design method where a "first mirror is chosen randomly" and "this random process is repeated," suggesting a specific algorithmic implementation. (’691 Patent, col. 12:40-45).

The Term: "voxel" (’294 Patent, Claim 1)

  • Context and Importance: The creation of a "voxel" is the core mechanism for generating the claimed visual effect. The viability of the infringement claim depends on whether the optical effect in the Accused Products meets this definition. Practitioners may focus on this term because its construction will determine whether the patent covers a wide range of 3D optical effects or is limited to a very specific technical implementation.
  • Intrinsic Evidence for a Broader Interpretation: The claim itself links the term functionally to the "intersection of two or more beams" that "produces an effect of a point source of light floating above the surface." (’294 Patent, Claim 1). This language may support a construction based on the resulting optical effect rather than a specific structural or data-based definition.
  • Intrinsic Evidence for a Narrower Interpretation: The term "voxel" has an established meaning in computer graphics as a value on a regular grid in three-dimensional space. A party could argue that the term should be construed in light of this established meaning, potentially narrowing the claim's scope. The patent, however, does not appear to use the term in this specific context.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges both induced and contributory infringement for all four asserted patents. Inducement is based on allegations that Defendants provide the Accused Products to customers with instructions and promotional materials that encourage infringing use (e.g., viewing the security features on a banknote). (Compl. ¶¶65, 82, 99, 116). Contributory infringement is based on allegations that the Accused Products contain special features specifically designed for infringement with no substantial non-infringing uses. (Compl. ¶¶66, 83, 100, 117).

Willful Infringement

  • The complaint alleges willful infringement for all four patents. For the ’691, ’294, and ’191 patents, willfulness is based on alleged pre-suit knowledge stemming from at least the January 21, 2021 letter sent by Plaintiff. (Compl. ¶¶67, 84, 101). For the ’863 patent, which issued after the letter, knowledge is alleged "since its issuance." (Compl. ¶118). The complaint further alleges willful blindness based on a purported "policy or practice of not reviewing the patents of others." (Compl. ¶¶68, 85, 102, 119).

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

  • A core issue will be one of definitional scope: Can the terms "selected randomly" (’691 Patent) and "voxel" (’294 Patent) be construed to cover the specific design and optical effects of Defendants' Galaxy® technology? The outcome will depend on the court's interpretation of these terms based on the intrinsic evidence within the patents.
  • A key evidentiary question will be one of process and function: What evidence will be adduced to show how the accused security threads are actually designed and manufactured, and how they function optically? This is particularly critical for the method claims of the ’191 and ’863 patents and the "randomly selected" limitation of the ’691 patent, all of which concern non-public aspects of Defendants' process.