DCT

3:22-cv-00706

Signify North America Corporation v. Menard, Inc.

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-00706, N.D. Ohio, 08/12/2022
  • Venue Allegations: Venue is alleged to be proper based on Defendant owning and operating regular and established places of business, specifically physical retail stores, within the Northern District of Ohio.
  • Core Dispute: Plaintiff alleges that LED lighting products sold by Defendant under its proprietary brands infringe six patents related to LED power control methods, configurable lighting systems, and the physical design of lighting apparatuses.
  • Technical Context: The technology at issue addresses fundamental challenges in the solid-state lighting industry, including powering LEDs from conventional AC dimmer circuits and enabling user-configurable features like color temperature.
  • Key Procedural History: The complaint notes that U.S. Patent 7,038,399 survived an inter partes review (IPR) proceeding, with several claims confirmed patentable by the Patent Trial and Appeal Board (PTAB) and the decision affirmed by the U.S. Court of Appeals for the Federal Circuit. A second IPR petition against the same patent was denied institution. The complaint also details extensive pre-suit communications, including notice letters and the provision of claim charts, which form the basis for allegations of willful infringement.

Case Timeline

Date Event
2002-05-09 U.S. Patent 7,038,399 Priority Date
2004-03-15 U.S. Patent 7,256,554 Priority Date
2004-03-15 U.S. Patent 7,737,643 Priority Date
2005-05-20 U.S. Patent 7,348,604 Priority Date
2006-05-02 U.S. Patent 7,038,399 Issued
2006-05-12 U.S. Patent 7,658,506 Priority Date
2007-08-14 U.S. Patent 7,256,554 Issued
2008-03-25 U.S. Patent 7,348,604 Issued
2010-02-09 U.S. Patent 7,658,506 Issued
2010-06-15 U.S. Patent 7,737,643 Issued
2015-05-28 IPR Petition filed against ’399 Patent
2016-02-19 U.S. Patent 10,299,336 Priority Date
2016-11-23 PTAB Final Written Decision upholds claims of ’399 Patent
2018-03-14 CAFC affirms PTAB decision on ’399 Patent
2018-10-10 Second IPR Petition against ’399 Patent is denied institution
2019-05-21 U.S. Patent 10,299,336 Issued
2019-12-09 USPTO issues IPR Certificate confirming claims of ’399 Patent
2021-02-08 Alleged actual notice of ’399 and ’336 Patents provided to Defendant
2021-08-13 Alleged actual notice of ’554 and ’643 Patents provided to Defendant
2022-08-12 Complaint Filed

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

U.S. Patent No. 7,038,399 - “Methods and Apparatus for Providing Power to Lighting Devices”

Issued May 2, 2006 (the ’399 Patent). (Compl. ¶13).

The Invention Explained

  • Problem Addressed: The patent describes the technical challenge of using LED-based light sources on conventional alternating current (AC) power circuits that are controlled by dimmers. Standard AC dimmers work by "chopping" the AC voltage waveform, a technique incompatible with LEDs, which typically require a stable direct current (DC) power source. This incompatibility hinders the use of energy-efficient LEDs as direct replacements for traditional incandescent bulbs in existing infrastructure. (’399 Patent, col. 1:11-20, col. 9:1-12).
  • The Patented Solution: The invention is an illumination apparatus, such as a self-contained light bulb, containing a controller. This controller is designed to receive the non-standard, chopped AC signal from a dimmer circuit and convert it into a suitable power source for driving at least one LED. The controller interprets variations in the dimmer signal, such as changes in its duty cycle, to variably control a parameter of the light generated by the LED, such as its intensity. (’399 Patent, Abstract; col. 20:20-43).
  • Technical Importance: This technology was significant because it enabled LED lamps to function as "drop-in" replacements for incandescent bulbs within the vast installed base of conventional AC dimmer circuits, facilitating market adoption of more energy-efficient lighting. (’399 Patent, col. 1:47-53).

Key Claims at a Glance

  • The complaint asserts at least dependent Claim 7 (which incorporates independent Claim 1) and dependent Claim 34 (which incorporates independent Claim 30). (Compl. ¶¶86, 96).
  • Independent Claim 1 (Apparatus):
    • An illumination apparatus comprising:
    • at least one LED; and
    • at least one controller coupled to the at least one LED and configured to receive a power-related signal from an A.C. power source that provides signals other than a standard A.C. line voltage,
    • the at least one controller further configured to provide power to the at least one LED based on the power-related signal.
  • Independent Claim 30 (Method):
    • An illumination method, comprising an act of:
    • providing power to at least one LED based on a power-related signal from an alternating current (A.C.) power source that provides signals other than a standard A.C. line voltage.
  • The complaint expressly reserves the right to assert additional claims. (Compl. ¶90).

U.S. Patent No. 7,256,554 - “LED Power Control Methods and Apparatus”

Issued August 14, 2007 (the ’554 Patent). (Compl. ¶16).

The Invention Explained

  • Problem Addressed: The patent notes that many power drivers for LEDs rely on feedback loops that monitor the voltage or current at the load to regulate the power delivered. This approach adds circuit complexity, cost, and potential for instability. (’554 Patent, col. 5:11-24).
  • The Patented Solution: The invention discloses a "feed-forward" power driver that controls LED intensity by modulating the average power delivered over time without requiring a feedback signal from the LED load itself. The driver stores a quantum of energy from a power source in an energy transfer element (e.g., an inductor) and then delivers that energy to the LED, with the process being controlled by a switch. Because this process operates without feedback from the output, it can be implemented with simpler and potentially more efficient circuitry. (’554 Patent, Abstract; col. 2:50-58).
  • Technical Importance: This feed-forward control method allows for the design of smaller, less complex, and more efficient power drivers for LED-based lighting systems by eliminating the need for feedback-related components. (’554 Patent, col. 15:4-14).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 and independent Claim 46. (Compl. ¶¶100, 110).
  • Independent Claim 1 (Method):
    • A method, comprising acts of:
    • A) generating first radiation having a first spectrum from at least one first LED; and
    • B) controllably varying a first intensity of the first radiation without monitoring or regulating a first voltage or a first current provided to the at least one first LED and without optically monitoring the first radiation.
  • Independent Claim 46 (Method):
    • A method, comprising acts of:
    • storing input energy derived from a power source to at least one energy transfer element;
    • providing output energy from the at least one energy transfer element to at least one first LED; and
    • controlling at least the input energy stored to the at least one energy transfer element via at least one switch coupled to the at least one energy transfer element.
  • The complaint expressly reserves the right to assert additional claims. (Compl. ¶104).

U.S. Patent No. 7,737,643 - “LED Power Control Methods and Apparatus”

Issued June 15, 2010 (the ’643 Patent). (Compl. ¶17).

  • Technology Synopsis: This patent, which stems from the same original application as the ’554 Patent, is also directed to "feed-forward" power control methods for LED lighting. The invention provides a way to control the power to an LED load without requiring feedback information from that load, such as by monitoring its voltage or current. (’643 Patent, Abstract).
  • Asserted Claims: At least Claim 25. (Compl. ¶115).
  • Accused Features: The dimming functionality of various Patriot Lighting® and Norm Black branded products, which allegedly practice the claimed feed-forward power control method during operation. (Compl. ¶116).

U.S. Patent No. 7,348,604 - “Light-Emitting Module”

Issued March 25, 2008 (the ’604 Patent). (Compl. ¶18).

  • Technology Synopsis: The patent describes a modular lighting device comprising a heat dissipation element, a substrate (e.g., a printed circuit board) to which light-emitting elements are coupled, and a housing that connects to the heat dissipation element. The design provides for thermal coupling between the substrate and the heat sink to manage heat generated by the LEDs. (’604 Patent, Abstract).
  • Asserted Claims: At least Claim 1. (Compl. ¶131).
  • Accused Features: The physical construction of the Masterforce® 10,000 lumen portable work light and the Patriot Lighting® Seattle II Nickel vanity light, which are alleged to embody the claimed modular structure. (Compl. ¶132).

U.S. Patent No. 7,658,506 - “Recessed Cove Lighting Apparatus for Architectural Surfaces”

Issued February 9, 2010 (the ’506 Patent). (Compl. ¶19).

  • Technology Synopsis: The invention relates to a lighting apparatus for creating a recessed cove or "light surface effect" within an architectural surface like a wall or ceiling. It consists of a cove member placed within a gap in the surface, with an LED-based source positioned to illuminate an interior surface of the cove member, creating the appearance of a light source that is flush with the architectural surface. (’506 Patent, Abstract).
  • Asserted Claims: At least Claim 1 and Claim 15. (Compl. ¶¶142, 152).
  • Accused Features: Patriot Lighting® round recessed and ultra-thin downlight products, which are alleged to form the claimed gap and irradiate an interior surface to create a light effect that is essentially flush with the ceiling surface when installed. (Compl. ¶¶143, 151).

U.S. Patent No. 10,299,336 - “Configurable Lighting System”

Issued May 21, 2019 (the ’336 Patent). (Compl. ¶20).

  • Technology Synopsis: This patent describes a luminaire that includes a switch coupled to the main housing via an electrical cable. The switch is disposed remotely from the housing and has multiple positions, each corresponding to a discrete correlated color temperature (CCT) output by the luminaire's light sources. This allows a single lighting product to be field-configurable for different aesthetic or functional requirements. (’336 Patent, Abstract).
  • Asserted Claims: At least Claims 1 and/or 13. (Compl. ¶156).
  • Accused Features: Various Patriot Lighting® round and square recessed downlights that allegedly include a switch for selecting the color temperature output of the fixture. (Compl. ¶157).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentalities as "Accused Menards Products," which are LED lighting products sold under the "Patriot Lighting," "MasterForce," and "Smart Electrician" brands controlled by Defendant. (Compl. ¶¶25-26). The complaint lists dozens of specific Stock Keeping Units (SKUs) and provides detailed examples, such as the "Patriot Lighting® 5-1/2" (4" internal diameter) round recessed downlight LED lighting product (SKU# 349-1348)." (Compl. ¶¶27-28).

Functionality and Market Context

  • The accused products encompass a range of consumer and professional LED lighting fixtures, including recessed downlights of various sizes and shapes, vanity lights, pendant lights, and portable work lights. (Compl. ¶¶28-51). The complaint alleges these products are offered for sale, sold, and distributed through Defendant's more than 300 physical retail stores and its commercial website. (Compl. ¶21). It further alleges that these products are tested and operated within Defendant's in-store "Expanded Lighting Showrooms." (Compl. ¶¶30, 33, 36).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’399 Patent Infringement Allegations

Claim Element (from Independent Claim 30) Alleged Infringing Functionality Complaint Citation Patent Citation
A) providing power to at least one LED based on a power-related signal from an alternating current (A.C.) power source that provides signals other than a standard A.C. line voltage The accused products are designed for and marketed for use with conventional AC dimmer circuits, which output a chopped, non-standard AC waveform to control lighting. ¶95 col. 28:22-28
C) variably controlling at least one parameter of light generated by the at least one LED in response to operation of the user interface The products' light intensity is controlled by a user operating the associated AC dimmer circuit's user interface (e.g., a slider or knob). ¶95 col. 28:44-48
D) variably controlling the at least one parameter of the light based at least on the variable duty cycle of the power-related signal The operation of the dimmer's user interface varies the duty cycle of the AC power signal, and the accused products' internal circuitry interprets this change in duty cycle to adjust the light output. ¶95 col. 28:50-54
  • Identified Points of Contention:
    • Scope Questions: A potential point of contention may be the scope of a "power-related signal... other than a standard A.C. line voltage." A dispute could arise over whether the specific waveforms produced by modern digital dimmers fall within the scope of a term arguably focused on the phase-chopped signals from legacy triac-based dimmers.
    • Technical Questions: An evidentiary question may concern how the accused products' internal controllers translate the variable duty cycle of the incoming AC signal into a power signal for the LEDs, and whether this mechanism performs the function as claimed.

’554 Patent Infringement Allegations

Claim Element (from Independent Claim 46) Alleged Infringing Functionality Complaint Citation Patent Citation
storing input energy derived from a power source to at least one energy transfer element The internal power circuitry of the accused products stores input energy in an energy transfer element, such as an inductor. ¶109 col. 56:46-48
providing output energy from the at least one energy transfer element to the at least one first LED The circuitry subsequently provides the stored energy from the energy transfer element to power the LEDs. ¶109 col. 56:49-51
controlling at least the input energy stored to the at least one energy transfer element via at least one switch coupled to the at least one energy transfer element The process of storing and transferring energy is controlled by at least one switch (e.g., a transistor) within the power circuitry. ¶109 col. 56:52-55
  • Identified Points of Contention:
    • Scope Questions: The core of the infringement analysis for this patent will likely turn on the negative limitation recited in Claim 1: "without monitoring or regulating a first voltage or a first current provided to the at least one first LED." The key question for the court will be whether the accused products' circuitry includes any mechanism that performs this function, which would place it outside the claim scope.
    • Technical Questions: What evidence does the complaint provide that the accused products operate in a true "feed-forward" manner? A technical dispute may arise over whether internal safety or protection circuits (e.g., for over-current or thermal protection) constitute "monitoring or regulating" the voltage or current provided to the LED load as contemplated by the patent.

V. Key Claim Terms for Construction

The Term: "power-related signal from an A.C. power source that provides signals other than a standard A.C. line voltage" (’399 Patent, Claim 1)

  • Context and Importance: This term is central to defining the type of input the patented device is designed to handle. Its construction will determine whether the patent covers devices compatible with the full range of modern and legacy dimmer switches. Practitioners may focus on this term because the accused products are alleged to be used with conventional dimmers that produce such non-standard signals. (Compl. ¶95).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification repeatedly refers to "conventional dimmers" and the technique of "angle modulation" or chopping portions of AC voltage half-cycles, indicating an intent to cover the common methods of AC dimming. (’399 Patent, col. 15:1-16).
    • Evidence for a Narrower Interpretation: A party might argue the term should be limited to the specific triac-based, phase-chopped waveforms explicitly depicted and discussed in the patent's detailed description, potentially excluding other types of modulated AC signals produced by different dimmer technologies. (’399 Patent, Fig. 1; col. 15:8-11).

The Term: "without monitoring or regulating a first voltage or a first current provided to the at least one first LED" (’554 Patent, Claim 1)

  • Context and Importance: This negative limitation is the key differentiator for the "feed-forward" control method claimed by the patent. The entire infringement question for this patent family may depend on whether the accused products' internal circuits perform any function that falls within the scope of "monitoring or regulating."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (i.e., finding infringement): The patent's abstract describes providing a "controlled predetermined power... without requiring any feedback information from the load." This suggests the exclusion is aimed at traditional feedback loops used for real-time power adjustment, and might not cover, for example, simple over-voltage protection circuits that are not part of the primary power control mechanism. (’554 Patent, Abstract).
    • Evidence for a Narrower Interpretation (i.e., finding non-infringement): A defendant may argue that any circuit that measures voltage or current at the LED load for any purpose (including safety or component protection) is performing "monitoring or regulating," thereby avoiding infringement. The plain language of the claim does not limit the purpose of the monitoring or regulating.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all asserted patents. The basis is that Defendant allegedly provides instructions, installation manuals, and product specifications that direct and encourage customers and downstream users to install and operate the accused products in a manner that directly infringes the method claims of the patents-in-suit (e.g., by connecting them to AC dimmers). (Compl. ¶¶93-95, 107-109, 123-125, 138, 149-151, 163).
  • Willful Infringement: The complaint alleges willful infringement of the ’399, ’554, ’643, and ’336 Patents. (Compl. ¶47, Prayer for Relief ¶H). The allegations are based on pre-suit knowledge, beginning with a notice letter sent on February 8, 2021, that allegedly identified the ’399 and ’336 patents and an exemplary infringing product. (Compl. ¶¶55, 58-59). The complaint further alleges that a 423-page document with detailed claim charts for the ’399, ’554, ’643, and ’336 patents was provided on August 13, 2021, and that Defendant failed to engage in substantive discussions thereafter. (Compl. ¶¶56, 71-72, 80-84).

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

  • A core issue will be one of technical operation: for the ’554 and ’643 patents, does the internal circuitry of the accused products operate in a true "feed-forward" manner as claimed? Or do they incorporate any form of voltage or current feedback from the LED load that would place them outside the scope of the claims' negative limitations?
  • A second central question will concern willfulness: given the detailed history of alleged pre-suit notice, including the provision of specific patent numbers and extensive claim charts over a year before the suit was filed, did the Defendant's continued sale of the accused products constitute "egregious" conduct sufficient to support a finding of willful infringement?
  • A third area of focus will be on feature-specific infringement: for the ’604, ’506, and ’336 patents, the case will likely turn on narrower factual inquiries into whether the specific physical construction, aesthetic effect upon installation, and user-selectable functionalities of the accused products meet the precise elements recited in the respective patent claims.