DCT
2:21-cv-00610
Lumiforce v. Liquid Lumens
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lumiforce (Utah)
- Defendant: Liquid Lumens LP (Utah)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 2:21-cv-00610, D. Utah, 12/22/2022
- Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendant is a registered Utah company that maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s underwater boat lighting packages infringe three patents related to the design and thermal management of high-powered LED lighting assemblies.
- Technical Context: The patents concern high-intensity, chip-on-board (COB) LED lights for marine applications, a market where brightness, durability, and heat dissipation are critical performance factors.
- Key Procedural History: Defendant previously initiated ex parte reexamination proceedings at the USPTO against all three asserted patents. The complaint notes that while certain claims were amended during these proceedings, the USPTO ultimately confirmed the patentability of all claims, a fact that may be presented by the Plaintiff to suggest the patents’ validity has been reinforced.
Case Timeline
| Date | Event |
|---|---|
| 2015-09-14 | Earliest Priority Date for all Asserted Patents ('556 Provisional) |
| 2021-07-27 | U.S. Patent No. 11,073,272 Issues |
| 2021-07-27 | U.S. Patent No. 11,073,273 Issues |
| 2021-09-07 | U.S. Patent No. 11,112,105 Issues |
| 2021-12-22 | Defendant files requests for ex parte reexamination for all Asserted Patents |
| 2021-12-31 | Asserted Patents assigned to Plaintiff Lumiforce, LLC |
| 2022-02-02 | USPTO grants ex parte reexamination for the '272 Patent |
| 2022-02-07 | USPTO grants ex parte reexamination for the '273 Patent |
| 2022-02-09 | USPTO grants ex parte reexamination for the '105 Patent |
| 2022-12-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,073,272 - "LIGHTING DEVICES INCLUDING AT LEAST ONE LIGHT-EMITTING DEVICE, SYSTEMS INCLUDING AT LEAST ONE LIGHTING DEVICE, AND RELATED METHODS"
The Invention Explained
- Problem Addressed: High-powered Chip-on-Board (COB) LEDs generate substantial heat during operation. If this heat is not adequately dissipated, it can damage the LED or surrounding components, which is a particular challenge for sealed, waterproof lighting fixtures. (’272 Patent, col. 1:50-54).
- The Patented Solution: The patent describes a lighting assembly where the housing is intentionally designed to allow the surrounding ambient environment (e.g., water) to enter the housing and make direct contact with the back of the LED's heat-conducting substrate, thereby cooling it. The front, light-emitting area of the LED remains sealed from this environment to prevent water damage. (’272 Patent, Abstract; Fig. 3).
- Technical Importance: This approach uses the surrounding water as a dynamic coolant, potentially enabling the use of more powerful LEDs in a compact form factor than would be possible with purely passive, sealed heat sinks. (’272 Patent, col. 7:6-14).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 4. The language below reflects amendments made during ex parte reexamination. (’272 Reexam Cert., col. 1:20-54, col. 2:4-14).
- Independent Claim 1 (as amended):
- A lighting system comprising a housing, wherein the housing is a single body with mounting holes and a generally flat back face for mounting to a marine vehicle.
- A chip-on-board (COB) light-emitting device comprising a substrate, a light-emitting area, and a raised template surrounding the light-emitting area, with the substrate extending beyond the template.
- At least one lens element positioned adjacent to the housing.
- A voltage converter external to the housing.
- A reflector element positioned between the light-emitting area and the lens.
- Wherein the COB device is attached to and positioned within the housing, which has a generally cylindrical outer surface, has a power consumption of 50 watts, and its light-emitting area is sealed from the ambient environment.
- Independent Claim 4 (as amended):
- A lighting system comprising a housing and a COB light-emitting device.
- At least one lens element adjacent to the housing.
- A thermal cutoff to protect against overheating.
- A voltage converter to operate the device.
- A reflector element between the light-emitting area and the lens.
- A heat sink in thermal communication with the COB device.
- Wherein the COB device is attached to and positioned within the housing, consumes at least 50 watts, has its light-emitting area sealed, and the voltage converter is external.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,073,273 - "LIGHTING DEVICES INCLUDING AT LEAST ONE LIGHT-EMITTING DEVICE, SYSTEMS INCLUDING AT LEAST ONE LIGHTING DEVICE, AND RELATED METHODS"
The Invention Explained
- Problem Addressed: Similar to the ’272 Patent, this invention addresses the need for robust, high-power underwater LED lighting systems that can be securely mounted and effectively cooled in a marine environment. (’273 Patent, col. 1:50-54).
- The Patented Solution: This patent focuses on specific structural configurations of the lighting assembly, including multiple housings and COB LEDs. It details arrangements of mounting holes on both the housing and the LED substrate, as well as the use of multiple electrical passageways within the housing to facilitate wiring and sealing. (’273 Patent, col. 12:46-54, col. 14:40-50; ’273 Reexam Cert., col. 1:24-30).
- Technical Importance: The claimed configurations provide specific mechanical and electrical solutions for creating durable, multi-light underwater arrays, addressing practical challenges of installation and waterproofing for more complex lighting effects. (’273 Patent, col. 18:35-37).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11. The language below reflects amendments made during ex parte reexamination. (’273 Reexam Cert., col. 1:22-52, col. 2:21-42).
- Independent Claim 1 (as amended):
- A lighting system comprising a plurality of housings, each with holes for accepting fasteners to attach to a marine vehicle.
- A plurality of COB light-emitting devices, each with a substrate and a generally square template.
- The substrate of each COB LED extends beyond the template and includes mounting holes.
- At least one lens element with a convex surface adjacent to each housing.
- Wherein each housing is a single body with a cylindrical outer surface, each COB substrate is attached to a housing, power consumption is at least 50 watts, and the light-emitting area is sealed.
- Independent Claim 11 (as amended):
- A lighting assembly comprising a housing with two electrical passageways.
- A plurality of COB light-emitting devices.
- Two passageway sealant elements, each in a respective electrical passageway.
- At least one lens element with a convex surface.
- Wherein the housing is generally cubic, each COB device is attached by fasteners, power consumption is at least 100 watts, and the devices are sealed.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,112,105 - "LIGHTING DEVICES INCLUDING AT LEAST ONE LIGHT-EMITTING DEVICE, SYSTEMS INCLUDING AT LEAST ONE LIGHTING DEVICE, AND RELATED METHODS"
- Technology Synopsis: This patent discloses a lighting system with specific structural details for the COB LED and its integration into the housing. The claims, as amended in reexamination, focus on a single-body housing and a COB LED with a metal substrate that includes solder pads and adjacent "access holes" extending through the substrate, providing a specific wiring and mounting architecture. (Compl. ¶35; ’105 Reexam Cert., col. 2:16-24).
- Asserted Claims: Independent Claim 1 (as amended). (Compl. ¶35).
- Accused Features: The complaint alleges that the PIPELINE and SURFRIDER products infringe by including features such as a single-body aluminum housing and a COB LED with a metal substrate, solder pads, and access holes adjacent to the solder pads. (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- Defendant’s "Lumen-Boost" underwater lighting packages, including the "SURFRIDER PACKAGE," "PIPELINE PACKAGE," and "MAVERICKS PACKAGE." (Compl. ¶17).
Functionality and Market Context
- The accused products are underwater lighting systems designed to be installed on the rear surfaces of boats, such as on the transom below the waterline. (Compl. ¶18). They are marketed for creating lighting effects during activities like wakesurfing and while the boat is floating. (Compl. ¶18). The complaint includes a photograph of the accused products in use, showing them generating a bright, wide underwater illumination pattern behind a boat. (Compl. p. 6).
- The packages are alleged to include high-power COB LEDs, lens elements, and a step-up voltage converter to power the LEDs from a standard marine battery. (Compl. ¶17). The complaint provides images of the product packages, showing components such as two light heads, a control box, and wiring harnesses. (Compl. p. 5). The SURFRIDER and PIPELINE packages appear to use two separate, cylindrical light housings, while the MAVERICKS package appears to use a single, larger housing containing two LEDs. (Compl. ¶17, p. 5).
IV. Analysis of Infringement Allegations
'272 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing, wherein the housing is a single body... and wherein the housing has a generally flat back face for mounting... | The PIPELINE and SURFRIDER products include two aluminum housings, each with a generally flat back face for mounting. | ¶23 | col. 6:35-44 |
| a chip-on-board light-emitting device, comprising: a substrate; a light-emitting area; a raised template surrounding the light-emitting area... | Within each housing, a high-powered COB LED is attached, comprising a substrate, a light-emitting area, and a raised template surrounding it. | ¶23 | col. 3:31-40; Fig. 1A |
| a reflector element positioned between the light-emitting area and the at least one lens element | A reflector element is positioned between each COB LED and its associated lens element. | ¶23 | col. 6:57-62 |
| wherein... an outer surface of the housing is generally cylindrical | The outer surface of the housing is generally cylindrical. | ¶23 | col. 6:37-38 |
| the light-emitting area is sealed from an ambient environment | A sealing element is compressed by a ring-shaped retaining element to create a waterproof seal. | ¶23 | col. 6:21-24 |
- Identified Points of Contention:
- Scope Questions: Claim 1, as amended, requires "a housing, wherein the housing is a single body." The complaint alleges the accused products "include two aluminum housings." (Compl. ¶23). This raises the question of whether a system comprising two separate housings can infringe a claim reciting "a housing" that is a "single body." Similarly, Claim 4 recites "a housing."
- Technical Questions: The complaint alleges the presence of a "raised template surrounding the light-emitting area" as required by amended Claim 1. (Compl. ¶23). A key factual question will be whether the specific COB LEDs used in the accused products possess this particular claimed structure.
'273 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of housings, wherein each of the housings comprises... holes formed through each housing, wherein the holes are configured for accepting fasteners for attaching each housing to a hull of a marine vehicle | The PIPELINE and SURFRIDER products include two aluminum housings with holes formed through each housing for accepting fasteners. | ¶29 | col. 12:46-51 |
| a plurality of chip-on-board light-emitting devices, each comprising... a substrate... a generally square template surrounding the light-emitting area | Within each housing, a high-powered COB LED is attached, comprising a substrate, a light-emitting area, and a generally square template. | ¶29 | col. 3:31-40; Fig. 1A |
| each substrate of the plurality of chip-on-board light-emitting devices extends beyond the template and includes mounting holes | Each substrate of the COB LEDs extends beyond the template and includes mounting holes. | ¶29 | col. 4:47-48; Fig. 1A |
| each of the plurality of chip-on-board light-emitting devices is sealed from an ambient environment | A sealing element is compressed by the ring-shaped retaining element to create a waterproof seal. | ¶29 | col. 6:21-24 |
- Identified Points of Contention:
- Scope Questions: Claim 11, asserted against the MAVERICKS product, requires a housing that includes "two electrical passageways" and "two passageway sealant elements." (Compl. ¶30; ’273 Reexam Cert., col. 2:21-29). The infringement analysis may focus on whether the internal construction of the single MAVERICKS housing meets these specific structural limitations for routing and sealing wires.
- Technical Questions: A central factual issue for infringement of Claim 1 will be whether the COB LEDs in the PIPELINE and SURFRIDER products have a substrate that "extends beyond the template and includes mounting holes," as alleged. (Compl. ¶29).
V. Key Claim Terms for Construction
'272 Patent
- The Term: "a housing, wherein the housing is a single body" (Claim 1)
- Context and Importance: This term is critical because the complaint alleges that the accused PIPELINE and SURFRIDER products contain "two aluminum housings." (Compl. ¶23). The construction of whether a "system" can satisfy this limitation when it is composed of multiple, separate physical components will likely be a central point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "a housing" refers to the housing for a single COB LED, and because the system has multiple such housings, it meets the limitation multiple times over. The patent title and claims refer to "systems including at least one lighting device," which could suggest that a system may comprise multiple such devices, each with its own housing. (’272 Patent, Title; Claim 5).
- Evidence for a Narrower Interpretation: The explicit addition of the "single body" language during reexamination may suggest a specific intent to limit the claim to a unitary construction. The specification consistently depicts the housing (e.g., element 110 in Fig. 3, element 210 in Fig. 8) as a single, integrated component for one or more LEDs, not as an aggregation of separate parts. (’272 Patent, Fig. 3, Fig. 8).
'273 Patent
- The Term: "each substrate... includes mounting holes" (Claim 1)
- Context and Importance: Practitioners may focus on this term because it defines a specific structural feature of the COB LED component itself. Infringement will depend on whether the accused products use off-the-shelf or custom COB LEDs that incorporate this feature, as opposed to LEDs that are mounted by other means (e.g., adhesive, clamping without substrate holes).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the substrate "may include mounting holes 12," suggesting it is an optional feature of an embodiment, which might support an argument that the term should not be unduly limited. (’273 Patent, col. 4:47-48).
- Evidence for a Narrower Interpretation: Figure 1A, referenced in the specification, clearly depicts distinct mounting holes (12) passing through the substrate (30) at its corners, separate from the electrical connection points. (’273 Patent, col. 4:47-48; Fig. 1A). This explicit depiction may be used to argue that "mounting holes" must be distinct, through-substrate structures intended for mechanical fastening.
VI. Other Allegations
- The complaint does not provide sufficient detail for analysis of indirect or willful infringement.
- Indirect Infringement: The complaint does not contain specific factual allegations to support claims of either induced or contributory infringement.
- Willful Infringement: While the complaint does not use the word "willful," it requests that the case be found "exceptional" under 35 U.S.C. § 285, which can be related to willful infringement. (Compl. ¶27, ¶33, ¶38). However, the complaint does not plead specific facts establishing pre-suit knowledge of the patents or egregious conduct by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
The dispute appears to center on specific structural limitations added to the claims during reexamination. The outcome will likely depend on the court's claim construction and the factual details of the accused products' design.
- A core issue will be one of structural scope: can a lighting system composed of two separate physical light housings (as alleged for the PIPELINE and SURFRIDER products) infringe claims that were amended to recite "a housing, wherein the housing is a single body"?
- A key evidentiary question will be one of component-level structure: do the specific COB LED components used in the Defendant's products contain the precise physical features required by the amended claims, such as a "raised template" ('272 patent), substrate "mounting holes" ('273 patent), or substrate "access holes" adjacent to solder pads ('105 patent)?
- A final question will concern prosecution history: how will the amendments and arguments made by the patent owner during the ex parte reexaminations, which were initiated by the Defendant, influence the construction of the disputed claim terms and potentially give rise to prosecution history estoppel?