Lighting Science Group Corporation v. Sea Gull Lighting Products LLC et al

Filing 49

ORDER -- On or before February 3, 2016, all parties in the Related Actions shall conduct a single meeting--in person, telephonically, or both--to discuss and determine the best procedures and deadlines to resolve these Related Actions without dup licative efforts, risk of inconsistent rulings, waste of resources, or unnecessary delay. On or before February 7, 2016, the parties shall jointly file a written Report, which summaries: (a) the parties' new proposed deadlines and hearing dates; and (b) any other recommendations for the Court concerning the efficient management of these Related Actions through trial. Signed by Judge Roy B. Dalton, Jr. on 1/26/2017. (VMF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION

LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-338-Orl-37GJK

SEA GULL LIGHTING PRODUCTS,
LLC; and GENERATION BRANDS,
LLC,
Defendant

LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-413-Orl-37GJK

NICOR, INC.,
Defendant

LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-1087-Orl-37GJK

AMERICAN DE ROSA LAMPARTS,
LLC,
Defendant

LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-1255-Orl-37GJK

TECHNICAL CONSUMER PRODUCTS,
INC.,
Defendant,

LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-1256-Orl-37GJK

SATCO PRODUCTS, INC.,
Defendant

LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-1321-Orl-37GJK

AMAX LIGHTING,
Defendant
ORDER
The six patent infringement actions identified above (“Related Actions”) are
before the Court on its own review.

2

BACKGROUND
Alleging infringement of three U.S. Patents (“Patents-in-Suit”)—numbered
8,201,968 (“‘968 Patent”), 8,672,518 (“‘518 Patent”), and 8,967,844 (“‘844 Patent”)—
patentee Lighting Science Group Corporation (“Plaintiff”) initiated the Related Actions
in 2016.1 Among others,2 Plaintiff sued:
(1)

Sea Gull Lighting Products, LLC and Generation
Brands, LLC (“Sea Gull Defendants”) in case
6:16-cv-338-Orl-37GJK (“Sea Gull Action”);

(2)

Nicor, Inc. (“Nicor”) in case 6:16-cv-413-Orl-37GJK
(“Nicor Action”);

(3)

American De Rosa Lamparts, LLC (“Luminance”) in
case 6:16-cv-1087-37GJK (“Luminance Action”);

(4)

Technical Consumer Products, Inc. (“TCP”) in case
6:16-cv-1255-37GJK (“TCP Action”);

(5)

Satco Products, Inc. (“Satco”) in case 6:16-cv-1256Orl-37GJK (“Satco Action”); and

(6)

Amax Lighting (“Amax”) in case 6:16-cv-1321-Orl37GJK (“Amax Action”).

To facilitate resolution of infringement, invalidity, and other claims and defenses
raised in patent infringement actions, the courts must construe any disputed claim
terms.3 Because the same Patents-in-Suit are at issue in all but one of the Related

1

Some of the Related Actions were initially assigned to other judicial officers,
but—to avoid duplication of efforts and waste of judicial resources—they were
reassigned to the Undersigned in accordance with Local Rule 1.04(b). (E.g., Amax
Action, Doc. 6.)
2
Plaintiff filed—but has settled or dismissed—several other patent actions that
claimed damages for infringement of the same Patents-in-Suit.
3
“Claim construction is an issue of law” for the courts to resolve. See Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d,
517 U.S. 370 (1996).

3

Actions,4 the Court anticipates that the parties will request construction of many of the
same claim terms. Indeed, in the Sea Gull and Nicor Actions, the parties’ joint claim
construction statements (“CC Statement”) show that the parties have identified the
same seven disputed claim terms (see Sea Gull Action, Doc. 41; Nicor Action, Doc. 64):
Claim Term

Patents/Claims

1

“disposed around and coupled to an outer periphery ‘968 Patent, Claim 1
of the heat spreader”

2

“disposed around . . . an outer periphery of the heat ‘844 Patent, Claims 1, 24
spreader”

3

“the heat spreader and heat sink are integrally ‘968 Patent, Claim 2
formed”
‘844 Patent, Claim 75

4

“a heat spreader and a heat sink thermally coupled ‘968 Patent, Claims 1 & 20
to the heat spreader”

5

“a heat spreader and a heat sink, the heat sink . . . in ‘844 Patent, Claims 1 & 24
thermal communication with . . . the heat spreader”

6

“a power conditioner . . . configured . . . to provide ‘844 Patent, Claim 1 & 24
DC voltage”

7

“disposed diametrically outboard”

‘968 Patent, Claim 20
‘844 Patent, Claim 22

In the Nicor Action, eight additional disputed claim terms are identified in the
CC Statement: (a) three terms from the ‘518 Patent—(1) “a heat spreader; a heat sink
disposed in thermal communication with the heat spreader” (Claim 1), (2) “disposed
around and coupled to an outer periphery of the heat spreader” (Claim 1), and (3) “an

4

(See Sea Gull Action, Doc. 35 (alleging infringement of the ‘968 and ‘844
Patents, but not the ‘518 Patent).)
5
Although some disputed claim terms appear in more than one of the Patents-inSuit, the Court must consult different claim language and specifications in construing
such claims. Courts must “consult the intrinsic record, which includes the specification
and prosecution history.” See Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d
1298, 1304 (Fed. Cir. 2015). Thus, such disputed claim terms should be counted
separately for purposes of the ten-claim limit set forth in the CMSO. (See infra n.6.)

4

accessory kit” (Claims 1, 2, 7, 12, & 13); and (b) five terms from the ‘968 Patent—“heat
spreader,” “heat sink,” “ring shaped,” “outer periphery,” and “integrally formed.”6 (See
Doc. 64, pp. 2, 3.)
DISCUSSION
In presiding over these Related Actions, the Court must construe, administer,
and apply the Federal Rules of Civil Procedure to secure “just, speedy, and
inexpensive” resolutions of each action. See Fed. R. Civ. P. 1. Where identical patents
are at issue in multiple infringement actions, courts have achieved these goals by
consolidating the proceedings for purposes of claim construction. See Patent Asset
Licensing, LLC v. Bright House Networks, LLC, 2016 WL 4431574, at *1 (M.D. Fla. Aug.
22, 2016); Brandywine Comms. Techs., LLC v. Apple Inc., No. 6:11-cv-36KRS, 2012
WL 527057, at *3 (M.D. Fla. Jan. 24, 2012); but see 35 U.S.C. § 299(b) (providing that
patent infringement defendants may not be joined and infringement trials may not be
consolidated “based solely on allegations” that the defendant “each have infringed” the
same patents-in-suit).
Here, after receipt of the parties’ Case Management Reports (“CMR”), the Court
entered Case Management and Scheduling Orders (“CMSO”) in each Related Action.
(E.g. Amax Action, Doc. 35.) Given the varied CMRs and initial filing dates for each
Related Action, the Court set different dates (“Deadlines”) in each CMSO for, among
6

Contending that certain terms have a plain and ordinary meaning, Plaintiff offers
no alternative constructions for: (1) “a heat spreader; a heat sink disposed in thermal
communication with the heat spreader,” (2) “an accessory kit,” and (3) “integrally
formed.” (See id.) Nonetheless, it appears that the parties in the Nicor Action have
ignored the Court’s warning that: “absent leave of Court, construction of more than (10)
claims terms is highly disfavored and will not be permitted except in extenuating
circumstances.” (E.g. Nicor Action, Doc. 34, p. 4.) Hence the Court will require that the
parties in the Nicor Action either: (1) identify only ten claim terms to be construed; or
(2) establish “extenuating circumstances” justifying departure from the ten-claim limit.

5

other things: (1) technology tutorials (“Tutorial”); (2) the CC Statement and the
Pre-Hearing Statement (“PH Statement); (3) Plaintiff’s Claim Construction Brief
(“CC Brief”); (4) Defendants’ Claim Construction Brief (“Response Brief”); (5) and the
Claim Construction Hearing (“CC Hearing”). As reflected in the table below, multiple
Tutorials, CC Hearings, and filing deadlines are set in each Related Action:
Tutorial
Sea Gull
Action
Nicor
Action
Luminance
Action
TCP Action
Satco
Action
Amax
Action

CC
Statement

CC Brief

Response
Brief

PH
CC
Statement Hearing

Cancelled

Filed (Doc. 41)

Filed (Doc. 44)

Filed (Doc. 48)

1/30/17

3/1/17

Cancelled

Filed (Doc. 64)

Filed (Doc. 79)

2/6/17

2/13/17

3/3/17

Cancelled

2/13/17

3/27/17

4/27/17

5/4/17

5/19/17

3/27/17
4/14/17

3/14/17
3/3/17

5/11/17
5/15/17

6/12/17
6/12/17

6/19/17
6/19/17

7/10/17
7/7/17

4/7/17

3/17/17

5/15/17

6/15/17

6/22/17

7/14/17

Upon consideration, the Court finds that these varied deadlines creates an
unnecessary risk of inconsistent rulings, duplicative proceedings, delay, and waste of
judicial resources. To minimize these issues and comply with the requirements of
Rule 1 of the Federal Rules of Civil Procedure, the Court will revise the Deadlines and
hearing dates after receipt of recommendations from the parties. See Bright House,
2016 WL 4431574, at *1 (requiring that the parties in five related patent infringement
actions agree to consistent pre-trial deadlines and a single claim construction hearing);
Brandywine, 2012 WL 527057, at *3 (noting that “coordinated case management”
permits a “unified approach to issues of claim construction and validity of the same”
patents).
CONCLUSION
Accordingly, it is hereby ORDERED AND ADJUDGED that:

6

(1)

On or before February 3, 2016, all parties in the Related
Actions

shall

conduct

a

single

meeting—in

person,

telephonically, or both—to discuss and determine the best
procedures and deadlines to resolve these Related Actions
without duplicative efforts, risk of inconsistent rulings, waste
of resources, or unnecessary delay.
At a minimum, the parties are DIRECTED to choose: (a) one
date for a joint Tutorial (if one is needed); (b) one date for a
joint CC Hearing; and (c) new deadlines for joint submission
of the CC Statement, CC Brief, Response Brief, and
PH Statement.
(2)

On or before February 7, 2016, the parties shall jointly file a
written Report, which summaries: (a) the parties’ new
proposed deadlines and hearing dates; and (b) any other
recommendations for the Court concerning the efficient
management of these Related Actions through trial.

(3)

On or before February 7, 2016, the parties in the Nicor
Action shall file a written notice with the Court, which does
one of two things: (1) identifies only ten claim terms to be
construed; or (2) establishes “extenuating circumstances”
justifying departure from the ten-claim limit.

(4)

On or before February 10, 2016, the Court will either file a
single revised Case Management Report for the Related
Actions or will set the matter for a scheduling hearing which

7

all parties must attend.
DONE AND ORDERED in Chambers in Orlando, Florida, on January 26, 2017.

Copies:
Counsel of Record

8