DCT
4:23-cv-00937
ILUMI Solutions Inc v. Gemstone Lights Canada Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ILUMI SOLUTIONS, INC. d/b/a MESHTEK LABS, INC. (Delaware)
- Defendant: Gemstone Lights Canada Ltd. (Canada)
- Plaintiff’s Counsel: Friedman, Suder & Cooke
- Case Identification: 4:23-cv-00937, E.D. Tex., 10/20/2023
- Venue Allegations: The complaint alleges venue is proper because Defendant is not a resident of the United States and may be sued in any judicial district. It further alleges Defendant conducts substantial business in the district, including sales through an online website and a network of local dealers.
- Core Dispute: Plaintiff alleges that Defendant’s intelligent lighting systems infringe six patents related to the wireless control, networking, and operation of multi-color LED lighting devices.
- Technical Context: The technology concerns wirelessly programmable LED lighting systems that can be controlled by user devices like smartphones to create custom colors and lighting effects.
- Key Procedural History: The asserted patents claim priority to a provisional application filed on March 11, 2011. The complaint contains no mention of prior litigation or post-grant proceedings involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-11 | Priority Date for all Patents-in-Suit (Provisional App. 61/464,917) |
| 2014-06-03 | U.S. Patent No. 8,742,694 Issues |
| 2014-11-18 | U.S. Patent No. 8,890,435 Issues |
| 2014-11-25 | U.S. Patent No. 8,896,218 Issues |
| 2014-11-25 | U.S. Patent No. 8,896,232 Issues |
| 2014-12-30 | U.S. Patent No. 8,922,126 Issues |
| 2016-03-22 | U.S. Patent No. 9,295,144 Issues |
| 2023-10-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,890,435 - WIRELESS LIGHTING CONTROL SYSTEM
The Invention Explained
- Problem Addressed: The patent’s background section describes limitations of then-new lighting technologies like CFLs (dimming, color issues) and LEDs (high cost), as well as the expense and installation complexity of existing lighting control and automation systems. It notes a need for solutions that could be controlled by evolving mobile device platforms. (’435 Patent, col. 1:20-47).
- The Patented Solution: The invention is a lighting device that can be controlled wirelessly to produce a blended, specified color. It achieves this by using a controller to send signals to an LED current control circuit, which in turn provides separate on/off signals with specific "cycle times" to at least two different colored LEDs. The final blended color is determined by how long each individual LED is turned on or off during its cycle time, a technique which the patent states can reduce the current requirements of the device. (’435 Patent, Abstract; col. 1:51-2:13; Fig. 1).
- Technical Importance: This approach enabled the creation of affordable, wirelessly programmable multi-color lighting systems that did not require specialized or customized installation. (’435 Patent, col. 1:51-60).
Key Claims at a Glance
- The complaint asserts independent method claim 6 (Compl. ¶32).
- Claim 6 includes the following essential steps for controlling a lighting device:
- sending one or more control signals from the controller/processor to the LED current control circuit corresponding to a blended light having a specified color; and
- sending an on/off signal having a cycle time from the LED current control circuit to each LED in response to the control signals such that the two or more LEDs produce the blended light having the specified color based on how long each LED is turned ON and/or OFF during the cycle time.
- The complaint expressly reserves the right to assert additional claims (Compl. ¶36).
U.S. Patent No. 8,922,126 - WIRELESS LIGHTING CONTROL SYSTEM
The Invention Explained
- Problem Addressed: The patent addresses the same problems as the ’435 Patent, namely the high cost, installation complexity, and lack of mobile device integration for advanced lighting control systems. (’126 Patent, col. 1:20-47).
- The Patented Solution: The invention is a lighting device in the form of a flexible LED strip with an electrical connector. The control components—including the power converter, controller/processor, and LED current control circuit—are "remotely located" from the strip and connected via a wire or cable. This modular design separates the "brains" from the lights, allowing for more versatile installations while using the same on/off signal cycle time method to create blended light. (’126 Patent, Abstract; col. 2:31-41; Fig. 9).
- Technical Importance: This design decouples the control circuitry from the LED strip, providing greater flexibility for custom and architectural lighting applications that could not be served by a standard bulb form factor. (’126 Patent, col. 2:31-41).
Key Claims at a Glance
- The complaint asserts independent apparatus claim 1 (Compl. ¶41).
- Claim 1 includes the following essential elements:
- a flexible strip;
- an electrical connector affixed to the flexible strip;
- two or more LEDs affixed to the flexible strip and electrically connected to the electrical connector;
- a DC/DC power converter, a controller/processor and a LED current control circuit that are remotely located with respect to the flexible strip and electrically connected to the electrical connector via a wire, a cable or a connecting strip;
- wherein the LED current control circuit provides an on/off signal having a cycle time to each LED...such that the two or more LEDs produce a blended light.
- The complaint expressly reserves the right to assert additional claims (Compl. ¶45).
U.S. Patent No. 9,295,144 - WIRELESS LIGHTING CONTROL SYSTEM
- Technology Synopsis: The patent describes a lighting device capable of operating within a wireless network. The technology enables features such as entering a "discovery mode" to detect other lights, transmitting status information, and allowing a user to assign multiple lights to a "group" via a user interface, forming a mesh network. (Compl. ¶29).
- Asserted Claims: Independent claim 12 is asserted (Compl. ¶50).
- Accused Features: The Accused System's lights allegedly enter a "discovery mode," transmit status information, and can be assigned to a "group" via the user app, operating as part of a mesh network (Compl. ¶29).
U.S. Patent No. 8,742,694 - WIRELESS LIGHTING CONTROL SYSTEM
- Technology Synopsis: The patent describes the fundamental apparatus of a lighting device with a power converter, a controller/processor, an LED current control circuit, and at least two different colored LEDs. It claims the core method of using time-cycled on/off signals to generate a specified blended light color. (’694 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶59).
- Accused Features: The core architecture of the Accused Products, including the processor, power converter, and LED current control circuit, which allegedly produces variable colors using timed on/off signals (Compl. ¶23, 25).
U.S. Patent No. 8,896,218 - WIRELESS LIGHTING CONTROL SYSTEM
- Technology Synopsis: The patent details the internal components of an intelligent lighting device. In addition to the core power and processing elements, the claims specifically recite the inclusion of a real time clock (RTC) circuit and a hard reset circuit. (’218 Patent, Abstract; Compl. ¶15).
- Asserted Claims: Independent claim 3 is asserted (Compl. ¶68).
- Accused Features: The Accused Products allegedly include a real time clock (IC HT1381) and a reset switch (Compl. ¶23).
U.S. Patent No. 8,896,232 - WIRELESS LIGHTING CONTROL SYSTEM
- Technology Synopsis: The patent is directed to a system of two or more lighting devices. The invention focuses on the ability of these devices to communicate with each other via wireless transceivers to form a coordinated group or mesh network. (’232 Patent, Abstract; Compl. ¶29).
- Asserted Claims: Independent claim 24 is asserted (Compl. ¶77).
- Accused Features: The Accused Products allegedly comprise intelligent lights that can be assigned to a "group" and operate as part of a mesh network (Compl. ¶29).
III. The Accused Instrumentality
- Product Identification: The Gemstone Lights System, which includes lights, a light strip, a controller, and the Gemstone Lights Hub App. The complaint identifies the "GM-02" WiFi & Bluetooth controller as a representative hardware component. (Compl. ¶21, 23).
- Functionality and Market Context: The Accused System is an intelligent lighting solution for producing variable colored light. The complaint alleges the system includes a controller and intelligent lights with red, green, blue, and white LEDs (Compl. ¶23). A user controls the system via the Gemstone app on a smartphone, which sends commands to the controller (Compl. ¶24). The controller, in turn, allegedly executes programs to control an LED current control circuit, which generates light by turning LEDs on and off at specified frequencies (Compl. ¶25). The complaint provides a photograph of the internal circuitry of the GM-02 controller, identifying components such as a WiFi module, memory IC, and other circuits (Compl. p. 10, ¶23).
IV. Analysis of Infringement Allegations
8,890,435 Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [preamble referencing a lighting device with a power converter, a controller/processor, an LED current control circuit, and two or more LEDs] | The Accused Products are alleged to comprise these components, including an AC/DC power supply, a WiFi/Bluetooth controller, and an LED current control circuit with red, green, blue, and white LEDs. | ¶23 | col. 29:64-30:9 |
| sending one or more control signals from the controller/processor to the LED current control circuit corresponding to a blended light having a specified color; | A controller/processor is alleged to execute programs to control an LED current control circuit to produce a light in accordance with programs sent from a user device. | ¶25 | col. 30:10-13 |
| and sending an on/off signal having a cycle time from the LED current control circuit to each LED in response to the one or more control signals such that the two or more LEDs produce the blended light... | The controller is alleged to send signals causing LEDs to turn on and off at specified frequencies with time offsets, so they are not "on" at the same time, to create variable colors. An oscilloscope waveform is presented as evidence of these on/off signals. | ¶25, ¶26, p. 12 | col. 30:14-22 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges the accused product uses offset on/off signals to create blended light and provides an oscilloscope waveform as evidence (Compl. p. 12, ¶26). A central question will be whether this signaling method is technically equivalent to the method claimed in the patent. The patent specification describes a scheme where alternating the on-time of different colored LEDs allows each to receive the maximum available current, thereby maximizing luminosity while blending color (’435 Patent, col. 10:48-62). The dispute may turn on whether the accused product's signaling achieves the same result in the same way.
8,922,126 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible strip; | The Accused Products are alleged to comprise a "smart strip," which is described as flexible. | ¶28 | col. 2:31-32 |
| an electrical connector affixed to the flexible strip; | The complaint alleges "an electrical connector [is] affixed to the flexible strip." | ¶28 | col. 2:32-33 |
| two or more LEDs affixed to the flexible strip and electrically connected to the electrical connector; | The system's intelligent lights allegedly include multiple LEDs capable of producing variable lighting on a strip. | ¶23, ¶25, ¶28 | col. 2:33-35 |
| a DC/DC power converter, a controller/processor and a LED current control circuit are remotely located with respect to the flexible strip... | The system includes a separate GM-02 controller that houses the processor and connects to the light strip. The controller is alleged to contain the power converter circuitry and processor that function as the LED current control circuit. | ¶21, ¶23 | col. 2:35-41 |
| wherein the LED current control circuit provides an on/off signal having a cycle time to each LED...to produce a blended light... | The controller is alleged to send signals causing LEDs to turn on and off at specified frequencies with time offsets to create variable colors. | ¶25, ¶26 | col. 2:41-49 |
- Identified Points of Contention:
- Scope Questions: The infringement theory relies on the GM-02 controller being "remotely located" from the flexible light strip. A potential point of contention could be the construction of this term and whether the standard product configuration of a separate controller box connected by a wire satisfies this limitation as a matter of law.
V. Key Claim Terms for Construction
- The Term: "on/off signal having a cycle time"
- Context and Importance: This term is the technological core of the asserted patents' method for creating blended light. Its construction is critical because it will determine whether the signaling protocol allegedly used by the Accused System (as shown in the oscilloscope waveform) falls within the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim itself does not appear to impose structural limitations beyond requiring a signal that is on/off and has a cycle time. The abstract describes the concept generally as producing "a blended light having a specified color based on how long each LED is turned ON and/or OFF during the cycle time." (’435 Patent, Abstract).
- Evidence for a Narrower Interpretation: The detailed description discloses specific embodiments, such as a Pulse Width Modulation (PWM) scheme where "The scheme in alternating PWM signals...does not allow for simultaneous PWM signals...at the same time. This maximizes the potential average current passed through" each LED arm (’435 Patent, col. 12:56-62). A party could argue that this functional goal of maximizing current by preventing simultaneous operation is a key aspect of the invention that should limit the claim's scope.
VI. Other Allegations
- Indirect Infringement: For each of the six patents, the complaint alleges both induced and contributory infringement. Inducement is based on Defendant's alleged provision of user manuals, online content, and step-by-step instructions that guide customers to use the Accused Systems in an infringing manner (Compl. ¶33-34, 42-43, 51-52, 60-61, 69-70, 78-79). Contributory infringement is based on the allegation that the products are especially designed for infringing use and have no substantial non-infringing use (Compl. ¶35, 44, 53, 62, 71, 80).
- Willful Infringement: The complaint alleges willful infringement for all asserted patents based on Defendant’s knowledge of the patents and infringement "at least from the time of receipt of the Complaint, if not earlier." (Compl. ¶38, 47, 56, 65, 74, 83).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core technical issue will be one of operational equivalence: does the Accused System's use of offset digital signals to power different colored LEDs, as depicted in the complaint’s oscilloscope visual, function in substantially the same way to achieve the same result as the "on/off signal having a cycle time" described and claimed in the patents-in-suit? The dispute may center on whether the accused method achieves the patents’ stated goal of maximizing current delivery to each LED by preventing simultaneous operation.
- A central legal issue will be one of claim scope: will the term "on/off signal having a cycle time" be construed broadly to cover a range of digital signaling techniques, or will it be limited to the specific Pulse Width Modulation (PWM) schemes disclosed in the patent specification? The outcome of this construction will likely be dispositive for infringement.
- An evidentiary question for the system-level patents will be one of network functionality: what evidence will demonstrate that the accused lights’ ability to be assigned to a "group" and communicate wirelessly constitutes the claimed "mesh network" and performs the required discovery and status-reporting functions?