DCT

6:19-cv-00656

Trusun Tech LLC v. Eaton Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:19-cv-00656, W.D. Tex., 01/04/2021
  • Venue Allegations: Venue is alleged based on Defendants having regular and established places of business in the district, transacting business in the district, and having committed acts of patent infringement within the district.
  • Core Dispute: Plaintiffs allege that Defendants’ high-intensity LED lighting products infringe a patent related to light-generating systems, and separately seek to correct the inventorship of thirty-two patents assigned to Defendants, alleging the technology claimed therein was derived from Plaintiffs' inventor under a non-disclosure agreement.
  • Technical Context: The dispute centers on high-intensity light-emitting diode (LED) systems used for large-scale applications such as sports stadiums, arenas, and warehouses, a market that has seen significant technological transition and commercial growth.
  • Key Procedural History: The complaint alleges a history wherein inventor John F. Johnston developed LED technology and filed for the patent-in-suit. Subsequently, Johnston engaged in partnership discussions with Ephesus Technologies, a predecessor to Defendants, under a non-disclosure agreement (NDA). Plaintiffs allege that after these discussions, Ephesus terminated the partnership effort, filed patent applications on technology disclosed by Johnston without naming him as an inventor, and commercialized infringing products. Plaintiffs further allege sending a notice letter of infringement to Ephesus in 2014, prior to its acquisition by Defendant Eaton in 2015.

Case Timeline

Date Event
2009-06-10 Priority Date for U.S. Patent No. 8,188,685
2011-04-01 NDA signed between Johnston's company and Ephesus Technologies
2011-12-13 Priority Date for U.S. Patent Nos. 9,657,930 and 10,539,310
2012-05-29 U.S. Patent No. 8,188,685 Issues
2014-07-15 Johnston sends notice letter to Ephesus regarding '685 Patent infringement
2015-11-17 U.S. Patent No. 9,189,996 Issues
2015-11-24 Eaton announces purchase of Ephesus Lighting
2016-08-02 U.S. Patent No. 9,408,271 Issues
2016-11-07 U.S. Patent No. 9,188,307 Issues
2017-05-23 U.S. Patent No. 9,657,930 Issues
2017-08-08 U.S. Patent No. 9,730,302 Issues
2017-08-15 U.S. Patent No. 9,736,904 Issues
2017-09-12 U.S. Patent No. 9,759,418 Issues
2017-10-24 U.S. Patent No. 9,800,431 Issues
2018-01-02 U.S. Patent No. 9,857,066 Issues
2018-02-06 U.S. Patent No. 9,888,545 Issues
2018-08-14 U.S. Patent No. 10,051,709 Issues
2018-09-25 U.S. Patent No. 10,085,317 Issues
2018-10-09 U.S. Patent No. 10,098,201 Issues
2018-10-30 U.S. Patent No. 10,117,303 Issues
2018-11-20 U.S. Patent No. 10,136,501 Issues
2018-11-27 U.S. Patent No. 10,143,053 Issues
2018-12-11 U.S. Patent No. 10,154,560 Issues
2018-12-25 U.S. Patent No. 10,161,577 Issues
2018-12-25 U.S. Patent No. 10,161,619 Issues
2019-01-15 U.S. Patent No. 10,182,485 Issues
2019-02-05 U.S. Patent No. 10,201,057 Issues
2019-04-02 U.S. Patent No. 10,251,225 Issues
2019-08-06 U.S. Patent No. 10,371,345 Issues
2019-11-05 U.S. Patent No. 10,470,270 Issues
2019-11-26 U.S. Patent No. 10,492,266 Issues
2019-12-10 U.S. Patent No. 10,502,399 Issues
2019-12-10 U.S. Patent No. 10,502,400 Issues
2019-12-24 U.S. Patent No. 10,517,153 Issues
2020-01-21 U.S. Patent No. 10,539,310 Issues
2020-04-21 U.S. Patent No. 10,631,377 Issues
2020-06-30 U.S. Patent No. 10,701,778 Issues
2021-01-04 Complaint Filing Date

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

U.S. Patent No. 8,188,685 - “Light-Generating System”

Issued May 29, 2012 (Compl. ¶1, ¶12).

The Invention Explained

The complaint does not provide the text of the ’685 Patent, preventing a detailed analysis of the invention based on its specification. The complaint alleges that the patented invention is an LED light system that in some embodiments "utilizes pulse width management and constant current to aid in temperature management and cooling" (Compl. ¶45).

  • Problem Addressed: The complaint does not provide sufficient detail for analysis of this element.
  • The Patented Solution: The complaint does not provide sufficient detail for analysis of this element.
  • Technical Importance: The complaint alleges the technology was developed to replace "more expensive, energy-intensive 400-watt metal halide fixtures" used in large venues such as factories, warehouses, and arenas (Compl. ¶45).

Key Claims at a Glance

The complaint asserts at least independent Claim 1 (Compl. ¶60, ¶61). The text of Claim 1 is not reproduced in the complaint and the patent document was not provided, precluding a breakdown of its elements.

III. The Accused Instrumentality

Product Identification

The complaint identifies representative accused products as the Visium Series, All Field Series, and Arena Series (Compl. ¶61). It further identifies on information and belief the Altus Series, Arena Pro Series, Prism Series, Arena Downlight Series, Lumadapt 8 Series, Prism RGBA Series, Stadium Series, Stadium Pro Series, and Luxor Series as infringing in substantially the same way (Compl. ¶61).

Functionality and Market Context

The accused products are described as "LED lighting products" (Compl. ¶60) and specifically as "connected LED sports lighting products" (Compl. ¶64). The complaint alleges these products have been "wildly successful" and used for lighting major sporting venues, including for four of the last six Super Bowls and the "first NASCAR track with LED lighting" (Compl. ¶56). No further technical details on the functionality of the accused products are provided.

IV. Analysis of Infringement Allegations

The complaint incorporates by reference claim chart exhibits (Exs. 37, 38, 39) that allegedly detail how the accused products meet each element of Claim 1 of the ’685 Patent (Compl. ¶61). These exhibits were not attached to the complaint provided for analysis. Therefore, a claim chart summary cannot be constructed. The complaint’s narrative theory is that Defendants Eaton and Cooper have directly infringed, both literally and under the doctrine of equivalents, by making, using, selling, and/or offering for sale LED lighting products that include all limitations of at least Claim 1 (Compl. ¶60).

No probative visual evidence provided in complaint.

Identified Points of Contention

Without the text of asserted Claim 1 or the referenced claim chart exhibits, a detailed analysis of potential technical and legal points of contention regarding infringement is not possible. The analysis would depend on the court's construction of the claim terms and the evidence presented concerning the specific operation of the accused products.

V. Key Claim Terms for Construction

The complaint does not provide the text of the asserted claims of the ’685 Patent, which precludes the identification of key terms for claim construction.

VI. Other Allegations

Willful Infringement

The complaint alleges willful infringement of the ’685 Patent based on pre-suit knowledge imputed to Defendants (Compl. ¶65). The alleged bases for this knowledge include that Defendants' predecessor, Ephesus Technologies, was provided with a copy of the patent application in 2011, and that Ephesus Lighting had either direct knowledge or was willfully blind to the patent from its issuance in 2012 (Compl. ¶65). The complaint further alleges that Ephesus Lighting was put on express written notice of its infringement on July 15, 2014 (Compl. ¶65).

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

  • A central factual issue will be the alleged misappropriation of technology: The case appears to substantially rely on whether Plaintiffs can prove that Defendants’ predecessor, Ephesus Technologies, derived the technology for its products and patents from inventor John Johnston's confidential disclosures under the NDA. This narrative underpins both the infringement claim and the thirty-two separate counts for correction of inventorship.
  • A key legal issue will be the imputation of liability and knowledge: The dispute will likely involve whether the alleged pre-acquisition knowledge and infringing conduct of Ephesus Lighting can be legally imputed to Defendants Eaton and Cooper, which is central to Plaintiffs' claims for willful infringement and damages that pre-date the 2015 acquisition.
  • The primary infringement question will be one of claim scope and evidentiary proof: Assuming the patent is valid, the case will turn on how the court construes the specific limitations of Claim 1 of the '685 Patent and whether Plaintiffs can produce sufficient evidence to show that the technical operation of the various accused LED lighting systems meets each of those limitations, either literally or under the doctrine of equivalents.