DCT
3:19-cv-00797
CHM Industries Inc v. Trastar Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CHM INDUSTRIES, INC. dba CAROLINA HIGH MAST (Texas)
- Defendant: Trastar Inc. (Texas)
- Plaintiff’s Counsel: Foley Lardner LLP / Foley & Lardner LLP
- Case Identification: 3:19-cv-00797, N.D. Tex., 04/01/2019
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because Defendant Trastar has a regular and established place of business in the district and has allegedly committed acts of infringement there, including offering to sell the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s high mast LED luminaires infringe two patents related to thermal management and structural configuration in lighting systems.
- Technical Context: The dispute concerns high-intensity LED lighting systems used for large outdoor areas like roadways and sports venues, where managing heat generated by the LEDs and their power drivers is critical to the product's lifespan and performance.
- Key Procedural History: The complaint alleges that Plaintiff CHM notified Defendant Trastar of U.S. Patent No. 9,677,754 on or about July 21, 2017. Knowledge of the second patent, U.S. Patent No. 9,903,581, is alleged to have occurred at the time of the complaint's filing. This alleged notice date for the first patent forms the basis for the willful infringement claim related to that patent.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-07 | Priority Date for '754 and '581 Patents |
| 2016-01-01 | Alleged launch of Accused Product (approximate, "at least 2016") |
| 2017-06-13 | '754 Patent Issued |
| 2017-07-21 | Defendant allegedly notified of '754 Patent |
| 2018-02-27 | '581 Patent Issued |
| 2019-04-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,677,754 - "Rotating Light Emitting Diode Driver Mount," Issued June 13, 2017
The Invention Explained
- Problem Addressed: The lifespan of a high-power LED lighting apparatus is often limited not by the LEDs themselves, but by the overheating of the driver (the power source). The combined heat from the driver and the LEDs can degrade performance and cause premature failure, a particular challenge in high mast applications where servicing is difficult and expensive (’754 Patent, col. 1:13-24).
- The Patented Solution: The invention proposes a lighting apparatus with two physically separate main components: an LED housing for the lights and a power housing for the driver. The power housing is positioned above the LED housing, separated by a gap, to reduce conductive heat transfer (’754 Patent, col. 2:10-14). Crucially, the design uses cooling fins on both housings arranged to create a "chimney effect," where hot air rising from the LED housing flows up and along the power housing's fins, actively cooling the driver components (’754 Patent, col. 9:22-35, Fig. 5).
- Technical Importance: This design approach seeks to improve luminaire reliability and lifespan by thermally isolating the sensitive driver electronics from the primary heat source (the LEDs) and using convective airflow for passive cooling, avoiding the need for mechanical fans (’754 Patent, col. 10:58-63).
Key Claims at a Glance
- The complaint asserts dependent Claim 5, which incorporates independent Claim 1. The key elements of Claim 5 are:
- A light emitting diode (LED) high mast lighting apparatus.
- An LED housing supporting a plurality of LEDs and having cooling fins extending from and substantially covering its back face.
- A power housing that is separate from and coupled to the LED housing.
- The power housing is disposed above the LED housing.
- The positioning creates a gap between the two housings.
U.S. Patent No. 9,903,581 - "Rotating Light Emitting Diode Driver Mount," Issued February 27, 2018
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’754 Patent, this patent addresses the same core problem of driver overheating in high mast LED luminaires (’581 Patent, col. 1:21-32). It also addresses the need to aim the light source for optimal illumination without compromising thermal management (’581 Patent, col. 6:1-10).
- The Patented Solution: The invention claims a lighting apparatus where the LED housing is "rotatably coupled to and thermally separated from the power housing" (’581 Patent, Abstract). This dual function is achieved by an extension member connecting the two housings, which creates a physical gap for thermal isolation while also serving as a pivot point, allowing the LED housing to be aimed (rotated) independently of the fixed power housing (’581 Patent, col. 6:11-25; col. 9:6-12).
- Technical Importance: This configuration provides a solution that combines directional light control with the thermal benefits of a separated housing design, allowing for both precise illumination of a target area and enhanced driver longevity (’581 Patent, col. 6:5-10).
Key Claims at a Glance
- The complaint asserts dependent Claim 15, which incorporates independent Claim 1. The key elements of Claim 15 are:
- A high mast lighting apparatus.
- A power housing with an opening to receive a high mast extension member.
- A plurality of drivers contained within the power housing.
- An LED housing that is rotatably coupled to and thermally separated from the power housing.
- A plurality of LED cooling fins extending from the LED housing toward the power housing.
- A plurality of LEDs supported by the LED housing and powered by the drivers.
III. The Accused Instrumentality
Product Identification
- Trastar’s JXM-ST High Mast LED luminaires (the "Accused Product") (Compl. ¶4).
Functionality and Market Context
- The complaint describes the Accused Product as a high mast lighting apparatus used for illuminating large outdoor areas (Compl. ¶¶ 6-7, 16). The allegations focus on the product's physical structure, specifically its use of a two-part housing system. This system allegedly consists of an "LED housing" that holds the LEDs and a separate "power housing" for the power components, with the two parts arranged in a specific spatial relationship to each other (Compl. ¶¶ 17, 20-21). The complaint also alleges the presence of cooling fins on both housings (Compl. ¶¶ 18, 38). Plaintiff CHM identifies Defendant Trastar as a direct competitor (Compl. ¶9).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’9,677,754 Infringement Allegations
| Claim Element (from Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A light emitting diode (LED) high mast lighting apparatus, comprising: a LED housing supporting a plurality of LEDs... | The Accused Product is an LED high mast lighting apparatus and includes an LED housing supporting a plurality of LEDs. | ¶16-17 | col. 13:37-38 |
| ...and having a plurality of cooling fins extending from and substantially covering a back face of the LED housing; | The Accused Product has cooling fins extending from a back face of the LED housing and substantially covering that back face. | ¶18-19 | col. 13:38-41 |
| and a power housing separate from and coupled to the LED housing, | The Accused Product includes a power housing separate from and coupled to the LED housing. | ¶20 | col. 13:42-43 |
| the power housing being disposed above the LED housing | In the Accused Product, the power housing is disposed above the LED housing. | ¶21 | col. 13:43-44 |
| and creating a gap therebetween. | The arrangement of the two housings in the Accused Product creates a gap between them. | ¶21 | col. 13:44-45 |
- Identified Points of Contention:
- Scope Question: The analysis may focus on the term "substantially covering". The court will need to determine the degree of coverage required to meet this limitation and whether the Accused Product's fin arrangement meets that standard.
- Technical Question: A key factual question will be whether the alleged "gap" in the Accused Product functions to "thermally separate" the housings in the manner described and claimed in the patent, which teaches a configuration that reduces heat transfer and creates a specific convective airflow.
’9,903,581 Infringement Allegations
| Claim Element (from Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A high mast lighting apparatus, comprising: a power housing defining an opening configured to receive a high mast extension member therethrough; | The Accused Product is a high mast lighting apparatus with a power housing that has an opening for a high mast extension member. | ¶34-35 | col. 12:15-17 |
| a plurality of drivers contained within the power housing; | The Accused Product includes multiple drivers contained within its power housing. | ¶36 | col. 12:18 |
| a light emitting diode (LED) housing rotatably coupled to and thermally separated from the power housing; | The Accused Product's LED housing is allegedly rotatably coupled to and thermally separated from the power housing. | ¶37 | col. 12:19-21 |
| a plurality of LED cooling fins extending from the LED housing toward the power housing; and | The Accused Product has LED cooling fins that extend from the LED housing in the direction of the power housing. | ¶38 | col. 12:22-23 |
| a plurality of LEDs supported by the LED housing and powered by the plurality of drivers. | The Accused Product has LEDs supported by the LED housing, which are powered by the drivers in the power housing. | ¶39 | col. 12:24-26 |
- Identified Points of Contention:
- Scope Question: A central issue will be the construction of "rotatably coupled" and "thermally separated". The dispute may turn on the degree and mechanism of rotation and the effectiveness of the thermal separation required by the claims.
- Technical Question: What evidence does the complaint provide that the Accused Product's LED housing is, in fact, "rotatably coupled" to the power housing? The complaint makes this conclusory allegation without describing the mechanism that allows for rotation (Compl. ¶37).
V. Key Claim Terms for Construction
The Term: "substantially covering" (’754 Patent, Claim 5)
- Context and Importance: This term is critical because the degree to which the cooling fins cover the back of the LED housing is a key structural limitation. The infringement analysis will depend on whether the Accused Product’s fin density and layout meet this threshold. Practitioners may focus on this term as it is a term of degree and lacks a precise numerical definition in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not define "substantially" with any specific percentage, which may support an argument that the term should be given its plain and ordinary meaning, connoting a large or significant portion of the surface area without requiring 100% coverage (e.g., ’754 Patent, Claim 5).
- Evidence for a Narrower Interpretation: The figures, such as Figure 4C, show a dense array of fins covering nearly the entire back surface of the LED housing (112). A party could argue that "substantially" should be interpreted in light of these embodiments to mean a very high degree of coverage necessary to achieve the patent's heat dissipation objectives.
The Term: "thermally separated" (’581 Patent, Claim 15)
- Context and Importance: This term is the foundation of the '581 patent's inventive concept. The case will hinge on what level of separation is required—is any physical gap sufficient, or must it achieve a specific thermal isolation performance? The complaint alleges the Accused Product has this feature, but the standard for proving it will be a central dispute (Compl. ¶37).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the separation primarily in structural terms, as an "extension member" creating a "gap" between the housings (’581 Patent, col. 6:22-26). This could support an interpretation where a physical gap itself constitutes thermal separation.
- Evidence for a Narrower Interpretation: The patent states the purpose of the extension member is to "reduce thermal conduction" and "provide thermal isolation" (’581 Patent, col. 6:30-32). A defendant might argue this functional language requires proof of a meaningful reduction in heat transfer, not just the mere presence of a physical space.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. For the ’754 Patent, it alleges Trastar has been "actively and knowingly inducing others" and selling a product "especially made or especially adapted" for infringement since July 2017 (Compl. ¶¶ 13-14). For the ’581 Patent, similar allegations are made based on conduct since the filing of the complaint (Compl. ¶¶ 31-32). The complaint does not specify the acts constituting inducement, such as referencing user manuals or installation guides.
- Willful Infringement: Willfulness is alleged for both patents but on different timelines. For the ’754 Patent, willfulness is based on alleged knowledge of the patent and infringement "since at least on or about July 21, 2017," when CHM claims it informed Trastar (Compl. ¶¶ 22, 25). For the ’581 Patent, the allegation of willfulness is based on knowledge "since at least the filing of this Complaint" (Compl. ¶¶ 40, 43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: How will the court construe terms of degree like "substantially covering" and "thermally separated"? The outcome of the infringement analysis will likely depend on whether these terms are interpreted broadly to mean any significant coverage or physical gap, or narrowly to require specific structural densities and thermal performance characteristics shown in the patent's embodiments.
- A second key issue will be a question of fact and evidence: Does the accused Trastar luminaire, in its actual operation and construction, possess the specific functionalities claimed? In particular, what evidence will be presented to prove that its LED housing is "rotatably coupled" to its power housing and that the arrangement creates the specific convective cooling pathway described in the patents?
- Finally, a central question for damages will be timing and knowledge: Can the plaintiff prove that the defendant had pre-suit knowledge of the ’754 patent as of July 2017? The answer will be critical to the claim for enhanced damages related to willful infringement for that patent.