Graziano LED IP LLC v. Home Depot Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Graziano LED IP LLC (Texas)
  • Defendant: The Home Depot, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 2:24-cv-01071, E.D. Tex., 12/23/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains "regular and established places of business" within the district, specifically identifying a retail location in Longview, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s sale of certain LED lighting fixtures integrated with electric fans infringes a patent related to the structural and functional design of such lamp assemblies.
• Technical Context: The technology concerns the field of solid-state lighting, specifically the design of integrated LED light modules for ceiling fans that aim to provide uniform, color-adjustable illumination in a compact form factor.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity and has previously entered into settlement licenses with other parties, but alleges these licenses did not pertain to the production of patented articles and therefore do not impact the analysis of patent marking under 35 U.S.C. § 287(a). Notably, the complaint’s substantive infringement counts focus exclusively on U.S. Patent No. 10,125,971, but the prayer for relief requests judgment on different patents ('984 and '793 patents), suggesting a significant drafting error.

Case Timeline

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

U.S. Patent No. 10,125,971, "LED lamp integrated to electric fan," issued November 13, 2018

The Invention Explained

• Problem Addressed: The patent describes prior art lighting for ceiling fans as employing bulky and inefficient traditional incandescent or fluorescent bulbs, which offered limited aesthetic options and did not allow for changing the color of the emitted light on demand ('971 Patent, col. 2:55-63; col. 2:10-15). Existing LED solutions were also described as lacking color-changing capabilities and specific geometrical arrangements ('971 Patent, col. 2:3-9).
• The Patented Solution: The invention is a flat or annular LED lamp assembly designed for integration with an electric fan. It consists of a "light box" containing a multiplicity of LED packages mounted on a printed circuit board. These LEDs are arranged at a specifically determined pitch (distance 'd' from each other) and at a specific distance ('h') from an "optical diffuser" to ensure that the light rays from individual LEDs overlap and mix, creating "uniform and high brightness" illumination ('971 Patent, Abstract; col. 4:29-33; Fig. 6B). The use of multi-color (RGB) LEDs, controlled by a programmable driver, allows the color and hue of the light to be adjusted on demand ('971 Patent, col. 2:23-29).
• Technical Importance: The claimed invention sought to provide a slim-profile, energy-efficient, and highly customizable lighting fixture for ceiling fans, enabling features like on-demand color changes that were not available with prior art lighting technologies ('971 Patent, col. 2:44-49).

Key Claims at a Glance

• The complaint asserts claims 1-20 of the '971 patent (Compl. ¶¶ 13, 14). Independent claim 1 is the basis for the allegations.
• Independent Claim 1 requires:
  • A combination of a light box with an electric fan.
  • The light box having a "translucent plastic outer body" with a base and at least one side wall defining a cavity.
  • An "optical diffuser" placed on the rim of the cavity to form an enclosure.
  • Internal surfaces of the body coated with an "optically reflective coating".
  • The body having a plurality of "vent holes".
  • A "multiplicity of light emitting diode (LED) packages" within the enclosure.
  • The LED packages are assembled with a "predetermined pitch" and at a "predetermined distance" from the diffuser.
  • This pitch and distance bear a "fixed relationship for uniform light emission".
  • The LED packages contain "LED chips emitting different colors of light".
  • The light box is "continuously powered during operation of said fan".
• The complaint does not explicitly reserve the right to assert other claims, but its general allegations cover claims 1-20 (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products by name or model number, referring to them generally as "lights with ceiling fans and related systems" sold by Defendant (Compl. ¶14).

Functionality and Market Context

The complaint alleges that Defendant makes, uses, sells, and imports infringing products within the district (Compl. ¶6). To support its allegations, the complaint references an online product instruction manual, alleging it "suggests an infringing use" (Compl. ¶15). This manual, available via a URL, is presented as evidence of the functionality of the accused products (Compl. ¶15, referencing a PDF on https://images.thdstatic.com). The complaint makes no specific allegations regarding the products' market position beyond noting that Defendant is a large commercial entity conducting substantial business in the district (Compl. ¶6).

IV. Analysis of Infringement Allegations

The complaint alleges infringement of the ’971 patent but references an "exemplary table included as Exhibits B" that was not filed with the public complaint (Compl. ¶12). Therefore, a detailed element-by-element analysis based on a provided claim chart is not possible.

The narrative allegations assert that Defendant directly infringes, induces infringement, and contributes to the infringement of claims 1-20 of the ’971 patent (Compl. ¶¶ 13, 14). The theory of inducement is based on Defendant allegedly encouraging infringement by "instructing customers and others on the use of lights with ceiling fans and related systems through its website and product instruction manuals" (Compl. ¶14). The contributory infringement allegation is based on the assertion that the products are not staple articles of commerce and their "only reasonable use is an infringing use" (Compl. ¶15).

The complaint points to a product manual PDF as visual evidence supporting its claims of infringing functionality (Compl. ¶15). The document at the provided URL is an instruction manual for what appears to be an LED ceiling fan, which the complaint alleges contains instructions for an infringing use.

• Identified Points of Contention:
  • Evidentiary Questions: A primary question will be whether the unspecified accused products practice every limitation of the asserted claims. For example, what evidence will show that the products possess an "optically reflective coating" on their internal surfaces, as distinct from simply being made of a white or reflective-colored plastic?
  • Scope Questions: The dispute may turn on the scope of claim terms. For instance, does the accused product's structure meet the definition of a "light box" with a "translucent plastic outer body," or is its construction materially different?
  • Technical Questions: Does the arrangement of LEDs in the accused products bear the specific "fixed relationship for uniform light emission" required by claim 1, or is the resulting light distribution achieved through a different technical approach?

V. Key Claim Terms for Construction

• The Term: "a predetermined pitch and said predetermined distance bearing a fixed relationship for uniform light emission" (from Claim 1)

• Context and Importance: This limitation contains the core functional language of the invention. The infringement analysis will hinge on whether the accused products' LED layout is merely a conventional arrangement or if it meets this specific, purpose-driven functional requirement. Practitioners may focus on this term because it links the physical structure (pitch and distance) to a functional outcome (uniform emission).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification states that the parameters 'd' (pitch) and 'h' (distance) "are optimized to obtain an uniform and high brightness of light rays," which could support an interpretation where any arrangement optimized to create a visually uniform appearance infringes ('971 Patent, col. 4:29-33).
  • Evidence for a Narrower Interpretation: Figure 6B and its accompanying description detail a specific optical model where light rays (69b, 69d) overlap on the inner surface of the diffuser (69a). A party could argue the "fixed relationship" requires this specific mechanism of ray-mixing and is not met by any arrangement that simply "looks uniform" from the outside ('971 Patent, col. 4:33-37).

• The Term: "optically reflective coating" (from Claim 1)

• Context and Importance: This is a specific structural element. Whether the accused products include this feature as claimed will be a direct factual question in the infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim uses the general term "coating," and the specification provides "Aluminum or Chromium" only as examples ('971 Patent, col. 4:17-18). This could support an argument that other reflective layers, such as a layer of white paint applied for reflective purposes, would qualify as a "coating."
  • Evidence for a Narrower Interpretation: The term "coating" implies a distinct material applied over the substrate of the "translucent plastic outer body." A party could argue this requires a separate, applied layer (like a metallized film or vapor deposition) and is not met by a uniformly white-colored plastic, which lacks a distinct "coating."

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting that Defendant provides "product instruction manuals" that instruct customers on how to use the products in a manner that infringes the patent's claims (Compl. ¶14). Contributory infringement is alleged based on the theory that the products have no substantial non-infringing use (Compl. ¶15).
• Willful Infringement: The complaint alleges knowledge of the ’971 patent and its underlying technology "from at least the filing date of the lawsuit" (Compl. ¶¶ 13, 14). It reserves the right to seek enhanced damages for willfulness if discovery reveals Defendant had pre-suit knowledge of the patent (Compl. ¶VI.e). This framing suggests the primary basis for willfulness is post-suit conduct.

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

• A core issue will be one of claim scope: How will the court construe the functional language "bearing a fixed relationship for uniform light emission"? The case may turn on whether this requires proof of a specific, engineered optical design for achieving uniformity, or if it more broadly covers any LED fan light that produces a visually even light output.
• A second key issue will be evidentiary: Without a specific product identified in the complaint, a central question will be what evidence Plaintiff can marshal to prove that Defendant’s products incorporate each specific structural element of the claims, such as the "translucent plastic outer body" with an "optically reflective coating," as opposed to alternative, non-infringing designs.
• Finally, a threshold procedural issue must be addressed: The complaint's prayer for relief (Compl. ¶VI.a) seeks judgment on patents ('984 and '793) that are not mentioned anywhere else in the complaint, while omitting the '971 patent that is the sole subject of all substantive allegations. This apparent scrivener's error will need to be corrected through an amended pleading for the case to proceed on its intended basis.