Graziano LED IP LLC v. Amazon.com Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Graziano LED IP LLC (Texas)
  • Defendant: Amazon.com, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:24-cv-00342, W.D. Tex., 12/26/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business within the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s products incorporating lights with ceiling fans infringe a patent related to LED lamps integrated with electric fans.
• Technical Context: The technology involves the design of integrated, customizable LED lighting systems intended to be combined with electric ceiling fans, offering an alternative to traditional bulb-based light kits.
• Key Procedural History: Plaintiff states it is a non-practicing entity and discloses that it has previously entered into settlement licenses related to its patents. The complaint presents arguments that these prior licenses do not trigger marking requirements under 35 U.S.C. § 287, which could otherwise limit pre-suit damages.

Case Timeline

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

U.S. Patent No. 10,125,971 - "LED lamp integrated to electric fan"

The Invention Explained

• Problem Addressed: The patent describes prior art lighting fixtures for ceiling fans as employing either traditional incandescent or fluorescent lamps, which can be bulky and are not easily adaptable to change the color of the emitted light on demand (’971 Patent, col. 3:40-48). The background also notes that existing LED solutions lacked color-changing capabilities and versatile geometries (’971 Patent, col. 2:7-15).
• The Patented Solution: The invention is a self-contained, flat LED lamp assembly designed for integration with an electric fan. It comprises a "light box" with a translucent body, an internal reflective coating to maximize light output, and vent holes for cooling (’971 Patent, col. 4:12-24). Inside, a multiplicity of LED packages, which can include color-changing (RGB) LEDs, are arranged at a specific pitch and distance from a diffuser to create uniform light emission (’971 Patent, Abstract; col. 4:26-37). A programmable driver can control the LEDs to produce different colors and hues, potentially based on the time of day (’971 Patent, col. 2:23-29).
• Technical Importance: This approach sought to provide a more compact, energy-efficient, and aesthetically versatile lighting solution for ceiling fans than was available with traditional fixtures (’971 Patent, col. 2:32-54).

Key Claims at a Glance

• The complaint asserts infringement of one or more of claims 1-20 (Compl. ¶13). Independent claim 1 is representative.
• Essential elements of Independent Claim 1 include:
  • A combination of a light box with an electric fan.
  • The light box has a "translucent plastic outer body" with a base and side wall defining a cavity, and an "optical diffuser" on top to form an enclosure.
  • The body's internal surfaces are coated with an "optically reflective coating."
  • The body has "vent holes" for cooling.
  • The light box contains a "multiplicity of light emitting diode (LED) packages."
  • 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 chips that emit "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 dependent claims, but its broad allegation against claims 1-20 implicitly includes them.

III. The Accused Instrumentality

Product Identification

The complaint broadly identifies the accused instrumentalities as "lights with ceiling fans and related systems" that Defendant commercializes (Compl. ¶14).

Functionality and Market Context

The complaint alleges that Defendant "makes, uses, sells, offers for sale, imports, ships, distributes, advertises, promotes, and/or otherwise commercializes" infringing products in the United States (Compl. ¶6). The complaint provides a URL to an Amazon.com storefront that allegedly "offers the products and/or service with instruction or advertisement that suggests an infringing use," but does not identify specific products or describe their technical operation (Compl. ¶15). The complaint does not provide sufficient detail for analysis of the specific functionality of any accused product.

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant directly infringes, induces infringement, and contributes to the infringement of "one or more of claims 1-20 of the '971 patent" (Compl. ¶13, ¶14). The infringement theory is based on Defendant's commercialization of "lights with ceiling fans and related systems" (Compl. ¶14). The complaint states that support for these allegations is found in an "exemplary table included as Exhibits B," but this exhibit was not filed with the complaint (Compl. ¶12). In the absence of this exhibit or any other detailed mapping, the specific basis for how the accused products meet each claim limitation is not articulated in the pleading.

The complaint’s infringement analysis raises the following questions:

• Scope Questions: The complaint does not identify a specific accused product, raising the question of which of Defendant's many "lights with ceiling fans and related systems" are alleged to practice the patent (Compl. ¶14).
• Technical Questions: Without a claim chart or technical description, it is unclear what evidence the complaint relies on to allege that the accused products meet specific structural limitations, such as the "optically reflective coating" or the "fixed relationship" between LED pitch and distance required for "uniform light emission" (’971 Patent, col. 8:19-38).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "translucent plastic outer body" (’971 Patent, col. 8:17)

• Context and Importance: The definition of this term is central to the structural scope of the claim. Practitioners may focus on this term because the materiality and required degree of translucency could be a point of dispute, particularly if accused products are made of glass, metal with translucent windows, or different types of polymers not explicitly listed.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification lists several exemplary materials, including "plexi-glass or poly-carbonate or polyester or parelene or polyethylene or polyimide," suggesting the term is not limited to a single type of plastic (’971 Patent, col. 4:14-16).
  • Evidence for a Narrower Interpretation: The consistent use of the word "plastic" throughout the patent could be argued to explicitly exclude non-plastic materials such as glass. An opponent might argue that the term "body" implies a single, unitary structure, potentially excluding composite assemblies.

• The Term: "predetermined pitch and said predetermined distance bearing a fixed relationship for uniform light emission" (’971 Patent, col. 8:34-38)

• Context and Importance: This is a functional limitation tied to a structural arrangement. Its construction will be critical because it requires not only a specific configuration ("pitch" and "distance") but also that this configuration achieves a particular result ("uniform light emission"). Infringement may turn on whether an accused product's LED layout meets this functional requirement.

• 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," which could be interpreted to mean any intentional, non-random arrangement aimed at achieving uniformity falls within the claim’s scope (’971 Patent, col. 4:30-32).
  • Evidence for a Narrower Interpretation: This language could be construed to require a specific, demonstrable optimization process or a quantifiable level of "uniformity," potentially rendering the term indefinite if not sufficiently described. Figure 6B provides a specific visual example of this relationship, which a party could argue cabins the scope to similar arrangements (’971 Patent, Fig. 6B).

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant encourages 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). Contributory infringement is alleged on the grounds that the accused products' "only reasonable use is an infringing use" and that they are not staple articles of commerce with substantial non-infringing uses (Compl. ¶14).
• Willful Infringement: The complaint alleges Defendant has known of the ’971 Patent "from at least the filing date of the lawsuit" and seeks a finding of willful infringement based on post-filing conduct (Compl. ¶13, ¶14; Prayer ¶e). Plaintiff expressly "reserves the right to amend if discovery reveals an earlier date of knowledge" (Compl. ¶13, fn. 1).

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

1. A primary issue appears to be one of pleading sufficiency and evidence: Given that the complaint does not identify any specific accused product or provide a claim chart, a key question will be whether the general allegations against "lights with ceiling fans and related systems" are sufficient to proceed and, if so, whether Plaintiff can produce evidence in discovery showing that a specific Amazon product meets every limitation of an asserted claim.

2. The case will likely involve a significant dispute over claim scope and construction. The construction of the functional limitation "predetermined pitch and said predetermined distance bearing a fixed relationship for uniform light emission" will be critical. The court’s interpretation will determine whether the claim covers a broad range of modern LED fan lights or is limited to a specific, highly optimized structural arrangement as depicted in the patent.

3. A central procedural question will concern damages. The complaint dedicates substantial attention to arguing that Plaintiff, as a non-practicing entity with prior settlement licenses, is exempt from the patent marking requirements of 35 U.S.C. § 287 (Compl. ¶16-21). The court’s decision on this issue will determine whether potential damages are limited to the period after Defendant received notice of infringement via this lawsuit.