Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 1 of 32 IN UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS

Transcription

1 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 1 of 32 IN UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS IKAN INTERNATIONAL, ) CIVIL ACTION NO. LLC ) ) 4:16 - CV Plaintiff, ) ) FIRST AMENDED COMPLAINT FOR DECLARATORY V. ) JUDGMENT OF ) NON-INFRINGEMENT AND PHILIPS LIGHTING NORTH ) INVALIDITY AMERICA COPORATION ) ) JURY TRIAL REQUEST and ) ) PHILIPS LIGHTING HOLDING, BV ) ) Defendants. ) FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND INVALIDITY Plaintiff IKAN International LLC, formerly known as IKAN International Corporation ( IKAN ), through counsel, hereby brings its First Amended Original Complaint for Declaratory Judgment against Philips Lighting North America Corporation and Philips Lighting Holding, BV (collectively Philips Defendants ), and alleges as follows: INTRODUCTION 1. This is a declaratory judgment action seeking a declaration of non-infringement and invalidity of United States Patent Nos. 6,692,136 ( the 136 patent ), 6,788,011 ( the 011 patent ), 7,014,336 ( the 336 patent ), 7,180,252 ( the 252 patent ), and 7,255,457 ( the 457 patent ) (collectively, the Asserted Patents ) to establish the rights of IKAN to manufacture, use, market, sell, offer to sell, and/or import certain of its LEDbased lights in the United States. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 1

2 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 2 of 32 PARTIES 1. IKAN International, LLC., formerly known as IKAN International Corporation, is a Texas limited liability company having its principal place of business at S. Sam Houston Parkway W, Houston, TX USA. 2. On information and belief, Philips Lighting North America Corp. is a Delaware having its principal place of business at 200 Franklin Square Drive, Somerset, NJ 08873, United States. The registered agent for service of process for Philips Lighting North America Corp. is Corporation Service Company with offices at 84 State Street, Boston, MA USA. 3. On information and belief, Philips Lighting Holding, BV. is a business entity having its principal place of business at Mathildelaan 1, Eindhoven, 5611 BD, The Netherlands. On information and belief, Philips Lighting Holding B.V. operates as a holding company which, through its subsidiaries, manufactures light bulbs. The company is based in Eindhoven, the Netherlands. Philips Lighting Holding B.V. operates as a subsidiary of Koninklijke Philips N.V. Philips Lighting Holding, BV may be served pursuant to Fed. R. Civ. P. 4 et seq. JURISDICTION AND VENUE 4. This Complaint arises under the Patent Laws of the United States, 35 U.S.C. 100 et seq., and the Declaratory Judgment Act, 28 U.S.C and 2202, based upon an actual controversy between the parties to declare that IKAN s manufacture, use, marketing, sale, offers to sell, and/or importation of its LED-based products, as more fully described herein, does not infringe any of the claims of any of the Asserted Patents. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 2

3 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 3 of This Court has original jurisdiction over the subject matter of these claims pursuant to 28 U.S.C and 1338(a). 6. This Court has personal jurisdiction over the Philips Defendants at least because of their continuous and systematic contacts with the state of Texas, including conducting of substantial and regular business therein through licensing activities directed to residents of the state of Texas, including without limitation, Plaintiff, and through making assertions of patent infringement directed to residents of the state of Texas, including without limitation, Plaintiff. 7. Venue is proper in this District under 28 U.S.C (b), (c), and 1400 (b) because, among other reasons, the Philips Defendants are subject to personal jurisdiction in this judicial district. The Philips Defendants and their agents, acting on behalf of the Philips Defendants, have conducted or conduct business in this judicial district, or because a substantial part of the events or omissions giving rise to the claim occurred in this judicial district. THE PATENTS-IN-SUIT The 136 Patent 8. On its face, United States Patent 6,692,136 to Marshall, et al., entitled LED/phosphor- LED hybrid lighting systems ( 136 Patent ) indicates it was issued by the United States Patent and Trademark Office on February 17, On information and belief, Philips Lighting Holding B.V. is the assignee and owner of all right, title and interest in the 136 patent, a copy of which is attached as Exhibit A. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 3

4 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 4 of 32 The 011 Patent 10. On its face, United States Patent 6,788,011 to Mueller, et al., entitled Multicolored LED lighting method and apparatus ( 011 Patent ) indicates it was issued by the United States Patent and Trademark Office on September 7, On information and belief, Philips Lighting North America Corporation is the assignee and owner of all right, title and interest in the 011 patent, a copy of which is attached as Exhibit B. The 336 Patent 12. On its face, United States Patent 7,014,336 to Ducharme, et al., entitled Systems and methods for generating and modulating illumination conditions ( 336 Patent ) indicates it was issued by the United States Patent and Trademark Office on March 21, On information and belief, Philips Lighting North America Corporation is the assignee and owner of all right, title and interest in the 336 patent, a copy of which is attached as Exhibit C. The 252 Patent 14. On its face, United States Patent 7,180,252 to Lys, et al., entitled Geometric Panel Lighting Apparatus and Methods ( 252 Patent ) indicates it was issued by the United States Patent and Trademark Office on February 27, On information and belief, Philips Lighting North America Corporation is the assignee and owner of all right, title and interest in the 252 patent, a copy of which is attached as Exhibit D. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 4

5 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 5 of 32 The 457 Patent 16. On its face, United States Patent 7,255,457 to Dowling, et al., entitled Methods and Apparatus for Generating and Modulating Illumination Conditions ( 457 Patent ) indicates it was issued by the United States Patent and Trademark Office on August 14, On information and belief, Philips Lighting North America Corporation is the assignee and owner of all right, title and interest in the 457 patent, a copy of which is attached as Exhibit E. The First Asserted Claims 18. In an dated April 2, 2013, the Philips Defendants advised IKAN, through their respective counsel, of the following claims that the Philips Defendants asserted as infringed by certain of IKAN s accused products (the First Asserted Claims ) (Exhibit F ): a. U. S. Patent No (claims 1, 2, 23, and 24); b. U. S. Patent No (claims 1 and 4); c. U. S. Patent No (claims 7, 10, 11, 15, 16, and 20); d. U. S. Patent No (claims 1 2); e. U. S. Patent No (claims 89, 91, 92, 93, 102, 103, 118, 120, 121, 122, and 130); f. U. S. Patent No (claims 1, 15, 17, and 22); g. U. S. Patent No (claims 132, 137, 138, 141, 142, 153, , 166, and 186); h. U. S. Patent No (claim 35); PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 5

6 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 6 of 32 i. U. S. Patent No (claim 56); j. U. S. Patent No (claims 23, 25, 59, 77, 92, 92, 104, and 105); and k. U. S. Patent No (claim 10). THE SUBSTANTIAL CONTROVERSY BETWEEN THE PARTIES 19. On February 15, 2013, the Philips Defendants, apparently acting through Philips Intellectual Property & Standards, as agent, sent IKAN a letter (Exhibit G ) communicating the Philips Defendants accusation that certain of IKAN s LED-based products, and in particular its tunable-white LED-based lights (e.g., Product Nos. IB500, IB508, IB1000, IB1500, TDMX1500B, iled120, iled312, Multi-K, and Multi-K XL and systems or kits incorporating these lights (hereinafter, First Accused Products ), infringed certain claims in certain United States patents in which the Philips Defendants held an interest. 20. On March 14, 2013, IKAN responded to the Philips Defendants February 15, 2013 letter, through its counsel, asserting the reasoning for its belief that IKAN did not infringe any of the Asserted Patents and further, that the asserted claims of the Asserted Patents should be deemed invalid (Exhibit H ). 21. On March 31, 2016, the Philips Defendants gave notice to IKAN, through their respective counsel, that unless IKAN accepted a proposed License Agreement offered by the Philips Defendants, the Philips Defendants would contact a major trade show sponsored by the National Association of Broadcasters ( NAB ) that IKAN would be attending and seek an appropriate remedy. (Exhibit I ). Such comments indicated an intention on the part of the Philips Defendants to interfere with IKAN s business activities at the NAB trade show. The Philips Defendants March 31, 2016 letter indicated that IKAN must PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 6

7 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 7 of 32 take a license from Philips or be subjected to a patent enforcement action and interference by the Philips Defendants with IKAN s business at the NAB trade show. 22. Plaintiff filed the present lawsuit on April 6, 2016, seeking declarations that: a. IKAN has not infringed and does not infringe, either directly or indirectly, any valid and enforceable claim of any of the First Asserted Claims, either literally or under the doctrine of equivalents; and b. the First Asserted Claims of the First Asserted Patents are invalid. 23. Defendants filed patent infringement claims in a separate lawsuit in the United States District for the District of Massachusetts on May 31, 2016, asserting the following claims (collectively, the Second Asserted Claims): a. US Patent No. 6,692,136 (Claim 1); b. US Patent No. 6,788,011 (Claims 93, 102, 120); c. US Patent No. 7,014,336 (Claim 132); d. US Patent No. 7,180,252 (Claim 11); and e. US Patent No. 7,255,457 (Claims 1 and 75). 24. IKAN has not infringed and does not infringe, either directly or indirectly, any valid and enforceable claim of any of the Second Asserted Claims, either literally or under the doctrine of equivalents. 25. The Second Asserted Claims of the Second Asserted Patents are invalid. 26. By virtue of the foregoing, a substantial controversy exists between the parties that is of sufficient immediacy and reality to warrant declaratory relief. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 7

8 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 8 of 32 COUNT I (DECLARATORY JUDGMENT OF NON-INFRINGEMENT ('136 PATENT)) 27. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 28. As a result of the acts described in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 29. A judicial declaration is necessary and appropriate so that IKAN may ascertain its rights regarding the '136 Patent. 30. Defendants assert that IKAN s product known as the Multi-K XL lighting device infringes Claim 1 of the 136 Patent, which claims: A lighting system for producing white light, the system comprising: at least one light emitting diode; and a phosphor-light emitting diode disposed adjacent to the at least one light emitting diode. 31. The Multi-K XL lighting device produces a wide range of light colors other than white. 32. The Multi-K XL further does not comprise at least one light emitting diode and a phosphor-light emitting diode disposed adjacent to the at least one light emitting diode. 33. IKAN is entitled to a declaratory judgment that it has not infringed and does not infringe, directly or indirectly, jointly, contributorily, by inducement, or under the doctrine of equivalents, any claims of any valid and enforceable claim of the '136 Patent. 34. IKAN makes this preliminary identification of aspects of its alleged infringing products and alleged infringed claims without the benefit of discovery or claim construction in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 8

9 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 9 of 32 COUNT II (DECLARATORY JUDGMENT OF NON-INFRINGEMENT ('011 PATENT)) 35. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 36. As a result of the acts described in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 37. A judicial declaration is necessary and appropriate so that IKAN may ascertain its rights regarding the 011 Patent. 38. Defendants assert that IKAN s product known as the Multi-K XL lighting device infringes Claim 93 of the 011 Patent, which claims: In an illumination apparatus comprising at least one first LED adapted to output at least first radiation having a first spectrum and at least one second LED adapted to output second radiation having a second spectrum different than the first spectrum, an illumination control method, comprising acts of: a) receiving at least one signal formatted at least in part using a DMX protocol and including lighting information based at least in part on user operation of at least one user interface; and b) controlling at least the first intensity and the second intensity based at least in part on the lighting information. 39. The Multi-K XL lighting device utilizes a control protocol substantially different from the DMX protocol claimed in the 011 Patent. 40. Defendants further assert that IKAN s products known as the iled312 and the IB508 lighting device infringe Claim 102 of the 011 Patent, which claims: In an illumination apparatus, comprising: at least one first LED adapted to output at least first radiation having a first spectrum; at least one second LED adapted to output second radiation having a second spectrum different than the first spectrum; PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 9

10 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 10 of 32 at least one user interface; and at least one controller coupled to the at least one first LED and the at least one second LED and configured to respond to user operation of the at least one user interface, the at least one controller further configured to independently control at least a first intensity of the first radiation and a second intensity of the second radiation in response to the user operation, wherein the at least one user interface comprises at least one external adjustment means. 41. iled312 and the IB508 lighting devices are not configured with at least one controller coupled to the at least one first LED and the at least one second LED and configured to respond to user operation of the at least one user interface. 42. iled312 and the IB508 lighting devices are not configured with the at least one controller further configured to independently control at least a first intensity of the first radiation and a second intensity of the second radiation in response to the user operation. 43. Defendants further assert that IKAN s products known as the Multi-K XL, iled 144, iled 312, IB508 and StudioPRO 600 lighting device infringe Claim 120 of the 011 Patent, which claims: In an illumination apparatus comprising at least one first LED adapted to output at least first radiation having a first spectrum and at least one second LED adapted to output second radiation having a second spectrum different than the first spectrum, an illumination control method, comprising acts of: independently controlling at least a first intensity of the first radiation and a second intensity of the second radiation in response to user operation of at least one user interface; and variably regulating power to at least one of the at least one first LED and the at least one second LED. 44. The Multi-K XL, iled 144, iled 312 and IB508 lighting devices do not comprise an illumination control method, comprising acts of independently controlling at least a first intensity of the first radiation and a second intensity of the second radiation in response to user operation of at least one user interface. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 10

11 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 11 of Plaintiff does not manufacture, sell, offer to sell or import the StudioPRO 600 lighting device. 46. IKAN is entitled to a declaratory judgment that it has not infringed and does not infringe, directly or indirectly, jointly, contributorily, by inducement, or under the doctrine of equivalents, any claims of any valid and enforceable claim of the 011 Patent. 47. IKAN makes this preliminary identification of aspects of its alleged infringing products and alleged infringed claims without the benefit of discovery or claim construction in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. COUNT III (DECLARATORY JUDGMENT OF NON-INFRINGEMENT ('336 PATENT)) 48. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 49. As a result of the acts described in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 50. A judicial declaration is necessary and appropriate so that IKAN may ascertain its rights regarding the '336 Patent. 51. Defendants assert that IKAN s products known as the iled 144, iled 312, IB508 and StudioPRO 600 lighting device infringe Claim 132 of the 336 Patent, which claims: A lighting fixture for generating white-light, comprising: a plurality of component illumination sources including at least two white LEDs configured to generate electromagnetic radiation of at least two different spectrums; and a mounting holding said plurality, said mounting designed to allow said spectrums of said plurality to mix and form a resulting spectrum; PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 11

12 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 12 of 32 wherein the visible portion of said resulting spectrum has intensity greater than background noise at its lowest spectral valley. 52. The iled 144, iled 312 and IB508 lighting devices do not comprise a mounting holding said plurality, said mounting designed to allow said spectrums of said plurality to mix and form a resulting spectrum; wherein the visible portion of said resulting spectrum has intensity greater than background noise at its lowest spectral valley. 53. Plaintiff does not manufacture, sell, offer to sell or import the StudioPRO 600 lighting device. 54. IKAN is entitled to a declaratory judgment that it has not infringed and does not infringe, directly or indirectly, jointly, contributorily, by inducement, or under the doctrine of equivalents, any claims of any valid and enforceable claim of the '336 Patent. 55. IKAN makes this preliminary identification of aspects of its alleged infringing products and alleged infringed claims without the benefit of discovery or claim construction in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. COUNT IV (DECLARATORY JUDGMENT OF NON-INFRINGEMENT ('252 PATENT)) 56. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 57. As a result of the acts described in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 58. A judicial declaration is necessary and appropriate so that IKAN may ascertain its rights regarding the '252 Patent. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 12

13 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 13 of Defendants assert that IKAN s products known as the iled 144, iled 312 and IB508 lighting device infringe Claim 11 of the 252 Patent, which claims: A geometric panel apparatus, comprising: a plurality of LEDs adapted to output at least first radiation having a first spectrum and second radiation having a second spectrum different than the first spectrum; at least one geometric panel disposed with respect to the plurality of LEDs so as to at least partially diffuse the first radiation and the second radiation to provide a mixed spectrum when both the first radiation and the second radiation are generated; and at least one controller coupled to the plurality of LEDs and configured to independently control at least a first intensity of the first radiation and a second intensity of the second radiation at a plurality of graduated intensities from a minimum intensity to a maximum intensity. 60. The iled 144, iled 312 and IB508 lighting devices do not comprise at least one geometric panel disposed with respect to the plurality of LEDs so as to at least partially diffuse the first radiation and the second radiation to provide a mixed spectrum when both the first radiation and the second radiation are generated. 61. Further, the iled 144, iled 312 and IB508 lighting devices do not comprise at least one controller coupled to the plurality of LEDs and configured to independently control at least a first intensity of the first radiation and a second intensity of the second radiation at a plurality of graduated intensities from a minimum intensity to a maximum intensity. 62. IKAN is entitled to a declaratory judgment that it has not infringed and does not infringe, directly or indirectly, jointly, contributorily, by inducement, or under the doctrine of equivalents, any claims of any valid and enforceable claim of the '252 Patent. 63. IKAN makes this preliminary identification of aspects of its alleged infringing products and alleged infringed claims without the benefit of discovery or claim construction in this PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 13

14 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 14 of 32 action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. COUNT V (DECLARATORY JUDGMENT OF NON-INFRINGEMENT ('457 PATENT)) 64. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 65. As a result of the acts described in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 66. A judicial declaration is necessary and appropriate so that IKAN may ascertain its rights regarding the '457 Patent. 67. Defendants assert that IKAN s products known as the Multi-K XL, iled 144, iled 312, IB508 and StudioPRO 600 lighting devices infringe Claim 1 of the 457 Patent, which claims: An apparatus for generating essentially white light, comprising: at least one first white LED characterized by a first spectrum having a first color temperature, the at least one first white LED including a first phosphor, the at least one first white LED generating at least one first wavelength that is converted by the first phosphor to provide the first spectrum; and at least one second white LED characterized by a second spectrum having a second color temperature, the at least one second white LED including a second phosphor, the at least one second white LED generating at least one second wavelength that is converted by the second phosphor to provide the second spectrum, wherein; the first color temperature differs from the second color temperature by at least 2200 degrees Kelvin. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 14

15 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 15 of The Multi-K XL, iled 144, iled 312 and IB508 lighting devices do not comprise at least one second white LED characterized by a second spectrum having a second color temperature, the at least one second white LED including a second phosphor, the at least one second white LED generating at least one second wavelength that is converted by the second phosphor to provide the second spectrum. 69. Defendants further assert that IKAN s products known as the Multi-K XL, iled 144, iled 312, IB508 and StudioPRO 600 lighting device infringe Claim 75 of the 457 Patent, which claims: A method for generating essentially white light, comprising: generating first radiation from at least one first white LED, the first radiation characterized by a first spectrum having a first color temperature, the at least one first white LED including a first phosphor, the at least one first white LED generating at least one first wavelength that is converted by the the first phosphor to provide the spectrum; generating second radiation from at least one second white LED, the second radiation characterized by a second spectrum having a second color temperature, the at least one second white LED including a second phosphor, the at least one second white LED generating at least one second wavelength that is convened by the second phosphor to provide the second spectrum, wherein the first color temperature differs from the second color temperature by at least 2200 degrees Kelvin; and combining the first radiation and the second radiation to form a light output. 70. The Multi-K XL, iled 144, iled 312 and IB508 lighting devices do not comprise generating second radiation from at least one second white LED, the second radiation characterized by a second spectrum having a second color temperature, the at least one second white LED including a second phosphor, the at least one second white LED generating at least one second wavelength that is convened by the second phosphor to provide the second spectrum. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 15

16 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 16 of Plaintiff does not manufacture, sell, offer to sell or import the StudioPRO 600 lighting device. 72. IKAN is entitled to a declaratory judgment that it has not infringed and does not infringe, directly or indirectly, jointly, contributorily, by inducement, or under the doctrine of equivalents, any claims of any valid and enforceable claim of the '457 Patent. 73. IKAN makes this preliminary identification of aspects of its alleged infringing products and alleged infringed claims without the benefit of discovery or claim construction in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. COUNT VI (DECLARATORY JUDGMENT OF INVALIDITY ('136 PATENT)) 74. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 75. Claim 1 of the 136 Patent, which claims: A lighting system for producing white light, the system comprising: at least one light emitting diode; and a phosphor-light emitting diode disposed adjacent to the at least one light emitting diode should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 102, 35 U.S.C. 103, and/or 35 U.S.C In particular, U. S. Patent No. 5,752,766 to Bailey (Multi-Color Focusable LED Stage Light) issued May 19, 1998 ( Bailey 766 ) claims the following apparatus: A multi-color, focusable, lighting apparatus particularly adapted for illuminating performance stages and other visual displays comprises an array of light emitting diodes (LEDs) supported on a flexible base member which in turn is supported by PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 16

17 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 17 of 32 a housing of the apparatus. A linear actuator is operable to move the base member between a generally planar position and a deflected position to cause the LED array to change the direction of the optical axes of a substantial number of LEDs in the array to focus light emitted from the LEDs, respectively. The LEDs are preferably provided in clusters of three LEDs, each cluster including a red, blue and green LED. A generally cylindrical shield may be connected to the housing to project light from the apparatus. 77. Claim 1 of the 136 Patent should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, under 35 U.S.C. 102 as anticipated by Bailey 766 and/or under 35 U.S.C. 103 as being obvious to persons of ordinary skill in the art of providing lighting to combine the teachings of Bailey 766 with respect to multiple colored LEDs to produce colored and white light with aspects of the art well known at the time of the invention. 78. Claim 1 of the 136 Patent should further be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 112 as it fails to contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. In particular, the Asserted Claim fails to clearly and concisely identify the term phosphor-light emitting diode as such term is used in the specification and the claim it is supporting. 79. IKAN makes this preliminary identification of aspects of invalidity of the 136 Patent without the benefit of discovery in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 17

18 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 18 of 32 COUNT VII (DECLARATORY JUDGMENT OF INVALIDITY ('011 PATENT)) 80. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 81. Claim 93 of the 011 Patent, which claims: In an illumination apparatus comprising at least one first LED adapted to output at least first radiation having a first spectrum and at least one second LED adapted to output second radiation having a second spectrum different than the first spectrum, an illumination control method, comprising acts of: a) receiving at least one signal formatted at least in part using a DMX protocol and including lighting information based at least in part on user operation of at least one user interface; and b) controlling at least the first intensity and the second intensity based at least in part on the lighting information. should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 102, 35 U.S.C. 103, and/or 35 U.S.C Claim 102 of the 011 Patent, which claims: In an illumination apparatus, comprising: at least one first LED adapted to output at least first radiation having a first spectrum; at least one second LED adapted to output second radiation having a second spectrum different than the first spectrum; at least one user interface; and at least one controller coupled to the at least one first LED and the at least one second LED and configured to respond to user operation of the at least one user interface, the at least one controller further configured to independently control at least a first intensity of the first radiation and a second intensity of the second radiation in response to the user operation, wherein the at least one user interface comprises at least one external adjustment means. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 18

19 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 19 of 32 should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 102, 35 U.S.C. 103, and/or 35 U.S.C Claim 120 of the 011 Patent, which claims: In an illumination apparatus comprising at least one first LED adapted to output at least first radiation having a first spectrum and at least one second LED adapted to output second radiation having a second spectrum different than the first spectrum, an illumination control method, comprising acts of: independently controlling at least a first intensity of the first radiation and a second intensity of the second radiation in response to user operation of at least one user interface; and variably regulating power to at least one of the at least one first LED and the at least one second LED. should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 102, 35 U.S.C. 103, and/or 35 U.S.C In particular, U. S. Patent No. 5,752,766 to Bailey (Multi-Color Focusable LED Stage Light) issued May 19, 1998 ( Bailey 766 ) claims the following apparatus: A multi-color, focusable, lighting apparatus particularly adapted for illuminating performance stages and other visual displays comprises an array of light emitting diodes (LEDs) supported on a flexible base member which in turn is supported by a housing of the apparatus. A linear actuator is operable to move the base member between a generally planar position and a deflected position to cause the LED array to change the direction of the optical axes of a substantial number of LEDs in the array to focus light emitted from the LEDs, respectively. The LEDs are preferably provided in clusters of three LEDs, each cluster including a red, blue and green LED. A generally cylindrical shield may be connected to the housing to project light from the apparatus. Bailey 766 Abstract. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 19

20 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 20 of Further, U. S. Patent No. 6,095,661 to Lebens (Method and Apparatus for an L.E.D. Flashlight) issued August 1, 2000 ( Lebens 661 ) claims the following method and apparatus: Improved method and apparatus for hand-held portable illumination. A flashlight and corresponding method are described. The flashlight includes a housing, a plurality of LEDs, and an electrical circuit that selectively applies power from the DC voltage source to the LED units. In one embodiment, the first electrical circuit further includes a control circuit for maintaining a predetermined light output level of the LED units as a charge on a battery varies. In another embodiment, the control circuit maintains an average predetermined light output level of the LED units as the charge on the battery cell varies by changing a pulse width or frequency as the charge on the battery cell varies to maintain a given average light output. Another aspect provides an illumination source that includes a light-emitting diode (LED) housing including one or more LEDs, and a control circuit that selectively applies power from a source of electric power to the LEDs, the control circuit substantially maintaining a light output characteristic of the LEDs as a voltage of the voltage source varies over a range that would otherwise vary the light output characteristic. Still another aspect provides an illumination source including a light-emitting diode (LED) housing including one or more LEDs; and a control circuit that selectively applies power from a source of electric power to the LEDs, thus maintaining or controlling a light output color spectrum of the LEDs. Lebens 661 Abstract. 86. Further, U. S. Patent No. 6,211,626 to Lys (Illumination Components) issued April 3, 2001 ( Lys 626 ) claims the following apparatus: Disclosed herein is a current control for a lighting assembly, which may be an LED lighting assembly, which may be a pulse width modulated ("PWM") current control or other form of current control where each current-controlled unit is uniquely addressable and capable of receiving illumination color information on a computer lighting network. In an embodiment, the invention includes a binary tree network configuration of lighting units (nodes). In another embodiment, the present invention comprises a heat dissipating housing, made out of a heatconductive material, for housing the lighting assembly. The heat dissipating housing contains two stacked circuit boards holding respectively the power module and the light module. The light module is adapted to be conveniently interchanged with other light modules. (Lys 626 Abstract). PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 20

21 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 21 of Claims 93, 102 and 120 of the 011 Patent should be found to be invalid because they fail to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, under 35 U.S.C. 102 as anticipated by Bailey 766 and/or under 35 U.S.C. 103 as being obvious to persons of ordinary skill in the art of providing lighting to combine the teachings of Bailey 766 with respect to multiple colored LEDs to produce colored and white light with aspects of the art well known at the time of the invention and further in combination with the teachings of Lebens 611 and Lys 626 with respect to the application of control schemes and circuitry for LED lighting systems and further in combination with the well-known DMX512 standard (For "Digital Multiplex with 512 pieces of information") that was created in 1986 and subsequently revised in 1990 leading to USITT DMX512/ Claim 93 of the 011 Patent should further be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 112 as it fails to contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. In particular, the Asserted Claim fails to clearly and concisely identify the term DMX as such term is used in the specification and the claim it is supporting. 89. IKAN makes this preliminary identification of aspects of invalidity of the 011 Patent without the benefit of discovery in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 21

22 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 22 of 32 COUNT VIII (DECLARATORY JUDGMENT OF INVALIDITY ('336 PATENT)) 90. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 91. Claim 132 of the 336 Patent, which claims: A lighting fixture for generating white-light, comprising: a plurality of component illumination sources including at least two white LEDs configured to generate electromagnetic radiation of at least two different spectrums; and a mounting holding said plurality, said mounting designed to allow said spectrums of said plurality to mix and form a resulting spectrum; wherein the visible portion of said resulting spectrum has intensity greater than background noise at its lowest spectral valley. should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 102, 35 U.S.C. 103, and/or 35 U.S.C In particular, U. S. Patent No. 5,752,766 to Bailey (Multi-Color Focusable LED Stage Light) issued May 19, 1998 ( Bailey 766 ) claims the following apparatus: A multi-color, focusable, lighting apparatus particularly adapted for illuminating performance stages and other visual displays comprises an array of light emitting diodes (LEDs) supported on a flexible base member which in turn is supported by a housing of the apparatus. A linear actuator is operable to move the base member between a generally planar position and a deflected position to cause the LED array to change the direction of the optical axes of a substantial number of LEDs in the array to focus light emitted from the LEDs, respectively. The LEDs are preferably provided in clusters of three LEDs, each cluster including a red, blue and green LED. A generally cylindrical shield may be connected to the housing to project light from the apparatus. 93. Claim 132 of the 336 Patent should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, under 35 PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 22

23 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 23 of 32 U.S.C. 102 as anticipated by Bailey 766 and/or under 35 U.S.C. 103 as being obvious to persons of ordinary skill in the art of providing lighting to combine the teachings of Bailey 766 with respect to multiple colored LEDs to produce colored and white light with aspects of the art well known at the time of the invention. 94. Claim 132 of the 336 Patent should further be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 112 as it fails to contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. In particular, the Asserted Claim fails to clearly and concisely identify the term intensity greater than background noise at its lowest spectral valley as such term is used in the specification and the claim it is supporting. 95. IKAN makes this preliminary identification of aspects of invalidity of the 336 Patent without the benefit of discovery in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. COUNT IX (DECLARATORY JUDGMENT OF INVALIDITY ('252 PATENT)) 96. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 97. Claim 11 of the 252 Patent, which claims: A geometric panel apparatus, comprising: a plurality of LEDs adapted to output at least first radiation having a first spectrum and second radiation having a second spectrum different than the first spectrum; PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 23

24 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 24 of 32 at least one geometric panel disposed with respect to the plurality of LEDs so as to at least partially diffuse the first radiation and the second radiation to provide a mixed spectrum when both the first radiation and the second radiation are generated; and at least one controller coupled to the plurality of LEDs and configured to independently control at least a first intensity of the first radiation and a second intensity of the second radiation at a plurality of graduated intensities from a minimum intensity to a maximum intensity should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 102, 35 U.S.C. 103, and/or 35 U.S.C In particular, U. S. Patent No. 5,752,766 to Bailey (Multi-Color Focusable LED Stage Light) issued May 19, 1998 ( Bailey 766 ) claims the following apparatus: A multi-color, focusable, lighting apparatus particularly adapted for illuminating performance stages and other visual displays comprises an array of light emitting diodes (LEDs) supported on a flexible base member which in turn is supported by a housing of the apparatus. A linear actuator is operable to move the base member between a generally planar position and a deflected position to cause the LED array to change the direction of the optical axes of a substantial number of LEDs in the array to focus light emitted from the LEDs, respectively. The LEDs are preferably provided in clusters of three LEDs, each cluster including a red, blue and green LED. A generally cylindrical shield may be connected to the housing to project light from the apparatus. Bailey 766 Abstract. 99. Further, U. S. Patent No. 6,095,661 to Lebens (Method and Apparatus for an L.E.D. Flashlight) issued August 1, 2000 ( Lebens 661 ) claims the following method and apparatus: Improved method and apparatus for hand-held portable illumination. A flashlight and corresponding method are described. The flashlight includes a housing, a plurality of LEDs, and an electrical circuit that selectively applies power from the DC voltage source to the LED units. In one embodiment, the first electrical circuit further includes a control circuit for maintaining a predetermined light output level of the LED units as a charge on a battery varies. In another embodiment, the control circuit maintains an average predetermined light output PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 24

25 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 25 of 32 level of the LED units as the charge on the battery cell varies by changing a pulse width or frequency as the charge on the battery cell varies to maintain a given average light output. Another aspect provides an illumination source that includes a light-emitting diode (LED) housing including one or more LEDs, and a control circuit that selectively applies power from a source of electric power to the LEDs, the control circuit substantially maintaining a light output characteristic of the LEDs as a voltage of the voltage source varies over a range that would otherwise vary the light output characteristic. Still another aspect provides an illumination source including a light-emitting diode (LED) housing including one or more LEDs; and a control circuit that selectively applies power from a source of electric power to the LEDs, thus maintaining or controlling a light output color spectrum of the LEDs. Lebens 661 Abstract Further, U. S. Patent No. 6,211,626 to Lys (Illumination Components) issued April 3, 2001 ( Lys 626 ) claims the following apparatus: Disclosed herein is a current control for a lighting assembly, which may be an LED lighting assembly, which may be a pulse width modulated ("PWM") current control or other form of current control where each current-controlled unit is uniquely addressable and capable of receiving illumination color information on a computer lighting network. In an embodiment, the invention includes a binary tree network configuration of lighting units (nodes). In another embodiment, the present invention comprises a heat dissipating housing, made out of a heatconductive material, for housing the lighting assembly. The heat dissipating housing contains two stacked circuit boards holding respectively the power module and the light module. The light module is adapted to be conveniently interchanged with other light modules. (Lys 626 Abstract) Claim 11 of the 252 Patent should be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, under 35 U.S.C. 102 as anticipated by Bailey 766 and/or under 35 U.S.C. 103 as being obvious to persons of ordinary skill in the art of providing lighting to combine the teachings of Bailey 766 with respect to multiple colored LEDs to produce colored and white light with aspects of the art well known at the time of the invention and further in combination with the teachings of Lebens 611 and Lys 626 with respect to the PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 25

26 Case 4:16-cv Document 11 Filed in TXSD on 08/15/16 Page 26 of 32 application of control schemes and circuitry for LED lighting systems and further in combination with the well-known DMX512 standard (For "Digital Multiplex with 512 pieces of information") that was created in 1986 and subsequently revised in 1990 leading to USITT DMX512/ Claim 11 of the 252 Patent should further be found to be invalid because it fails to comply with the requirements of 35 U.S.C. 101 et seq., including without limitation, 35 U.S.C. 112 as it fails to contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. In particular, the Asserted Claim fails to clearly and concisely identify the term geometric panel disposed with respect to the plurality of LEDs so as to at least partially diffuse the first radiation and the second radiation to provide a mixed spectrum when both the first radiation and the second radiation are generated as such term is used in the specification and the claim it is supporting IKAN makes this preliminary identification of aspects of invalidity of the 011 Patent without the benefit of discovery in this action, and expressly reserves the right to augment, supplement, and revise its identifications based on additional information obtained through discovery or otherwise. COUNT X (DECLARATORY JUDGMENT OF INVALIDITY ('457 PATENT)) 104. IKAN realleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein Claim 1 of the 457 Patent, which claims: An apparatus for generating essentially white light, comprising: PLAINTIFF S FIRST AMENDED ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT PAGE 26