Federal Court Bans ELCO Lighting and Those Acting in Concert with ELCO from Selling ELL LED Modules that ELCO Copied from DMF
LOS ANGELES, CA – March 12, 2019 – DMF Lighting® (DMF), a leader in LED downlighting innovation, announced today the United States District Court for the Central District of California granted DMF’s motion for a preliminary injunction against AMP Plus, Inc. d/b/a ELCO Lighting and ELCO Lighting, Inc. (ELCO), based on recessed lighting products that DMF alleged infringed DMF’s U.S. Patent No. 9,964,266 (“the ‘266 Patent”). The Court ruled that ELCO and “all those acting in concert with them” shall “immediately cease all manufacture, use, sales, offers for sale or importation of all three versions of the ELL LED Module or any other products that infringe the Patent.” This ruling not only impacts ELCO, but sales representatives, distributors, online retailers, and others who are acting in concert with ELCO to offer for sale or sell the infringing products.
As the Court noted, the ‘266 Patent protects DMF’s invention of a modular LED recessed lighting system that includes a compact LED module with a low-profile heat conducting casting. The LED module fits into traditional “cans” or other lighting fixtures but is also small enough to fit into standard junction boxes. The LED lighting system also includes a twist-and-lock connection so that trims of different sizes and designs can be attached to the LED module by hand without tools.
Observing that a preliminary injunction is an “extraordinary remedy,” the Court found that, among other things, a preliminary injunction is warranted because DMF “has shown that it is more likely than not that it will prevail on infringement” and ELCO had not raised a substantial question about the patent’s validity. Further, DMF “demonstrated a likelihood of irreparable harm” to DMF by ELCO’s infringement. The Court also found that the public interest weighed in favor of enforcing DMF’s patent rights.
The evidence showed that DMF has a reputation as a “specification grade manufacturer” whose products have garnered many awards for innovation. ELCO, by contrast, is a “light commercial grade” vendor that sells commodity products. Evidence showed that ELCO “developed a scheme to increase its LED market presence by directly copying DMF’s DRD2 LED Module lighting system and started selling its infringing products – ELCO’s ELL LED Modules – two years after DMF publicly introduced its LED lighting system.” As the Court noted, rather than stop infringing sales in response to DMF’s cease and desist letters, evidence showed that ELCO’s President urged ELCO sales representatives to increase their sales efforts and “dominate the market.”
Although ELCO argued that a preliminary injunction would be a “harsh consequence” for ELCO, the Court found that the record indicates “ELCO intentionally copied DMF’s product” and “[o]ne who elects to build a business on a product found to infringe cannot be heard to complain if an injunction against continuing infringement destroys the business so elected.”
“This ruling affirms the strength of DMF’s patent protection for its DRD2 Module, offered under DMF’s OneFrame and OneLED brands,” said Michael Danesh, Vice President and inventor of the ‘266 Patent. “DMF invests heavily in research and development and is proud of the training and skill of its employees who are dedicated to delivering premium, innovative products to the industry. We will enforce our patent rights to protect our investments and our employees.”
DMF filed this patent infringement action against ELCO on August 15, 2018 in the federal court for the Central District of California. In addition to an injunction, DMF is seeking monetary damages, enhanced damages due to ELCO’s willful infringement, and attorneys’ fees.
DMF Lighting designs and builds LED downlighting that sets the bar for simplicity, flexibility and quality. At our in-house R&D lab, our engineers and designers are at work constantly pushing boundaries and refining products to ensure that your light and lighting consistently exceeds expectations. Every DMF product delivers outstanding performance and aesthetics while saving you time and money year after year.
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