EmeryAllen v. MaxLite - Complaint

2:20-cv-04332-RMG Date Filed 12/14/20 Entry Number 1 Page 1 of 21
UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
EMERYALLEN, LLC, C/A No. 2:20-cv-4332-RMG

Plaintiff, VERIFIED COMPLAINT
v.
Jury Trial Requested
MAXLITE INC.,
Defendant.
Plaintiff, EmeryAllen, LLC (“EmeryAllen”) files this complaint against Defendant,
MaxLite Inc. (“Defendant”), and in support thereof asserts the following:
NATURE OF THE ACTION
1. This civil action is brought under the federal laws of the United States and South Carolina
law. Specifically, this action is for: patent infringement, breach of contract, breach of
contract accompanied by a fraudulent act, violation of the South Carolina Unfair Trade
Practices Act, and unjust enrichment.
THE PARTIES
2. Plaintiff EmeryAllen is privately owned limited liability company organized and existing
under the laws of South Carolina, having its principal place of business at 359 Wando Place
Dr., E, Mt. Pleasant, SC 29464.
3. Upon information and belief, Defendant MaxLite is a corporation organized and existing
under the laws of the State of New York, having a principal place of operations at 12 York
Avenue, West Caldwell, NJ 07006.
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JURISDICTION AND VENUE
4. This is an action for patent infringement arising under the patent laws of the United States,
Title 35 of the United States Code. Pursuant to 28 U.S.C. §§ 1331, 1332, and 1338, this
Court has exclusive subject matter jurisdiction over the subject matter of this action. The
jurisdictional minimum of 28 U.S.C. § 1332(a) is met because the amount in controversy
exceeds $75,000.
5. This Court has personal and supplemental jurisdiction over the subject matter of this action
under 28 U.S.C. §§ 1331, 1332, 1338, and 1367 et seq.
6. This Court has personal jurisdiction over Defendant because Defendant has engaged in
business activities and committed acts giving rise to this Complaint in South Carolina.
7. As discussed further herein, Defendant executed a Non-Disclosure Agreement (the
“NDA”) that includes, in bolded font, a choice of law provision stating: “THIS
AGREEMENT IS MADE UNDER, AND WILL BE CONSTRUED ACCORDING
TO, THE LAWS OF THE STATE OF SOUTH CAROLINA.” Defendant executed
the NDA at its own free will, and thus expressly availed itself to the jurisdiction of South
Carolina.
8. Despite freely and willingly signing the NDA and as a result obtaining the benefit of
EmeryAllen's disclosure of certain otherwise confidential information, Defendant
knowingly profited from EmeryAllen’s confidential disclosure of its innovative technology
and related know-how which, at the time, constituted trade secret information that had not
been made publicly known by EmeryAllen.
9. In addition to conducting business and misappropriating EmeryAllen trade and trade secret
information, MaxLite has committed, and continues to commit, acts of infringement. For
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at least the foregoing reasons, venue is proper in this District under 28 U.S.C. §§ 1391(c)
& 1400(b) et seq.
EMERYALLEN’S PATENTED TECHNOLOGY
10. EmeryAllen is a privately-owned company located in Charleston, South Carolina,
dedicated to the development of innovative LED technologies for the commercial sector.
EmeryAllen has developed a world-wide reputation for its high quality and highly
innovative products, culminating in EmeryAllen having the most well-rounded portfolio
of miniature LED lamps currently on the market.
11. As a result of EmeryAllen expending significant resources, time, and efforts in developing
its unique range of products, it has made significant contributions to the LED technology
landscape. In fact, EmeryAllen was first to successfully develop miniature LED lamps that
comply with JA8-2016 specification. By successfully meeting the performance standards
imposed under JA8-2016, EmeryAllen’s state-of-the-art “120V EmeryAllen® G9 Retrofit
Lamp” became the first miniature LED lamp suitable for retrofitting or replacement in
standard halogen lamps.
12. EmeryAllen’s innovative technologies, such as the 120V EmeryAllen® G9 Retrofit Lamp,
are protected through various patents, and specifically including United States Patent No.
10,605,412 (“the ‘412 Patent”) and United States Design Patent D0850,663 (the “‘663
Patent”) (“Asserted Patents”).
13. The Asserted Patents, discussed further below, are directed to various embodiments of
EmeryAllen’s innovative LED miniature lamp technology, including the commercialized
embodiment sold by EmeryAllen as the “120V EmeryAllen® G9 Retrofit Lamp” which is
also fully encompassed by the scope of one more claims of the Asserted Patents. The ‘412
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Patent is directed to and protects the overall and design, construction, and operation of a
miniature LED lamp satisfying performance standards suitable for retrofit or replacement
of a standard halogen lamp, and the ‘663 Patent is directed to and protects the overall
ornamental design of a miniature LED lamp.
14. The ‘412 Patent, titled “Miniature Integrated Omnidirectional LED Bulb,” was duly and
legally issued by the USPTO on March 31, 2020, and is directed to and protects the overall
design, construction, and operation of EmeryAllen’s novel miniature LED lamp. By virtue
of an assignment from Thomas Garber – the sole named inventor, EmeryAllen is the
original and current owner of the ‘412 Patent, having the full right, title, and interest therein
and thereto. A true and correct copy of the ‘412 Patent is attached as Exhibit A.
15. The ‘663 Patent, titled “Miniature LED Bulb,” was duly and legally issued by the USPTO
on June 4, 2019. By virtue of an assignment from Thomas Garber – the sole named
inventor, EmeryAllen is the original and current owner of the ‘663 Patent, having the full
right, title, and interest therein and thereto. A true and correct copy of the ‘663 Patent is
attached as Exhibit B.
16. The ‘412 Patent and the ‘663 Patent are valid and duly enforceable by EmeryAllen under
United States patent laws.
17. The Asserted Patents claim various embodiments of EmeryAllen’s innovative miniature
lamp. As recited in claim 1 of the ‘412 Patent, the miniature LED lamp comprises: base
portion that has electrical contacts; an envelope portion with a substantially cylindrical
body portion coupled to the base portion; a substantially cylindrical ceramic heat sink
coupled to an inner circumference of the body portion; and a substantially cylindrical light
diffusing portion coupled to an upper circumference of the body portion. The light
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diffusing portion and the body portion define an interior portion of the envelope portion,
which interior portion is less than 50 mm in length and less than 20 mm in diameter, and
houses the miniature LED assembly. The LED light assembly includes a flexible printed
circuit board and a plurality of electrically- and thermally-connected LEDs disposed on a
surface thereof. Also disposed on the surface of the flexible printed circuit board is an
electronics assembly that is operably engaged with electrical contacts that include an LED
driver and an integrated circuit. The electronics assembly is operably engaged with the
electrical contact(s) and the plurality of LEDs to provide power to the LED array, which is
configured to have a luminous efficiency of at least 90 lumens per watt. The flexible circuit
board is folded at one or more plane axes to define a circumference when housed in the
interior portion of the envelop portion. The miniature LED array and the electronics
assembly are operably configured to have a luminous efficiency of a least 45 lumens per
watt.
18. Selected Figures of the Asserted Patents, representative of embodiments of the claimed
invention and design, are shown and labeled below:
FIG. 6 of ‘412 Patent FIG. 1 of ‘663 Patent

Representative embodiment of an assembled Representative embodiment of claimed ornamental
miniature LED lamp of the invention design of miniature LED light
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Body Portion Heat Sink Lens
Envelope
Portion
Base
Electrical LED Light
Connection Assembly
FIG. 1 of ‘412 Patent

Visible Light Producing Device of Miniature LED Lamp
FIG. 2 of ‘412 Patent

Visible Light-Producing Portion Comprising LED Array(s)
19. EmeryAllen’s 120V EmeryAllen® G9 Retrofit Lamp is a commercial embodiment of the
invention as claimed under the Asserted Patents. An image of this product is shown below,
with detailed specifications provided in the associated Product Data Sheet, attached hereto
as Exhibit C.
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20. In addition to being suitable for use in most standard 120V G9 fixtures, these highly
innovative miniature lamps have a lighting output of corresponding conventional
incandescent G9 bulbs. As the first of its kind, the 120V EmeryAllen® G9 Retrofit lamps
satisfied the long-felt industry need for an energy-efficient alternative to conventional
incandescent G9 base lamps.
21. EmeryAllen has been marketing and selling the Patented Product at least as early as
January 2, 2019.
22. Following the respective issuances of the Asserted Patents as noted above, the Patented
Products and all other EmeryAllen products or components of such products that include
features of the Asserted Patents, have been appropriately marked to reference the relevant
patents, including the Asserted Patents.
ACTS GIVING RISE TO THIS ACTION
23. Defendant’s business pertains to developing and selling energy-efficient lighting solutions,
including LED technologies, and thus is in the same general technical field of endeavor as
EmeryAllen.
24. Prior to learning of EmeryAllen’s breakthrough technology, Defendant did not
manufacture or sell any miniature LED lamps that were compliant with applicable
specification requirements. In fact, on March 5, 2018, Defendant submitted a summary of
recommendations to the California Energy Commission (CEC) in reference to recent
Building Energy Efficiency Standard Rulemaking under Title 24, Part 6, specifically
addressing what it believed were overly stringent requirements of JA8-2016 that made
compliance simply not possible for miniature LED lamps. A copy of Defendant’s
submission is attached as Exhibit D.
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25. In its recommendations to the CEC, Defendant states the following (with emphasis added):
Issue:
Industry has been unable to meet some of the specifications of JA8
such as flicker and dimmability in some popular residential
miniature lamp types due to the physical size of these tiny lamps.
(many less than 1” dia x less than 2” L).
Comments:
Since JA8-2016 was released in June 2015, light source manufacturers
have made various attempts to achieve JA8 compliance with miniature
LED lamps such as G9 base LED lamps. However, there products have
been unable to meet JA8 specifications largely due to the electrical
components needed to achieve flicker, PF, and dimmability metrics. As
these miniature lamps are smaller in 1” diameter in many cases, there is a
physical size limitation in being able to meet these metrics in these
products.
26. In its own letter to the CEC dated March 7, 2018 (attached as Exhibit E), EmeryAllen
submitted the following “Rebuttal” to Defendant’s assertions above:
The above statement is false. Although it has been extremely

challenging to meet these requirements, EmeryAllen has developed a
series of LED lamps that encompass multiple wattages, voltages and
base configurations (120v – G9, G8, E11, E12, BA15D and 12v -GF4
and GY6.35). Our products have been submitted to a third party
NVLAP test lab. We have successfully passed the performance section
of the test requirement and are in the middle of life testing. Based on
the LM80 data provided to us from the manufacturer and our initial
lumen depreciation results, we should have no problem in meeting the
life testing requirement. [emphasis added]
27. Prior to learning of EmeryAllen’s innovative accomplishments, Defendant had not been
able to develop and thus did not sell any miniature LED lamps that were compliant with
JA8 specifications. In fact, as acknowledged in its comments to the CEC, Defendant
believed that it was simply and physically not possible for light source manufacturers to
achieve JA8 compliance with miniature LED lamps.
28. Defendant readily recognized the commercial significance of EmeryAllen’s reported
technological achievements, and promptly requested a meeting with EmeryAllen to
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determine if EmeryAllen could supply its JA8-compliant miniature LED lamp to
Defendant under a private label supply arrangement.
29. Due to EmeryAllen’s desire to maintain confidentiality pertaining to its technological
developments at the time, and to protect its innovative technology and related know-how
as proprietary Trade Secret, the Parties’ meeting was premised on Defendant entering into
a Non-Disclosure Agreement (NDA). The NDA was freely and willingly executed by
Defendant on or about October 14, 2016, and constitutes a valid and binding contract
between the Parties. A copy of the executed contract is attached as Exhibit F.
30. Despite Defendant submitting, approximately one year earlier, formal recommendations to
the CEC based on its established belief that achieving JA8 compliance with miniature LED
bulbs was simply not possible, after receiving EmeryAllen’s trade secrets, Defendant
allegedly managed to achieve in approximately one year what it (and other lighting
manufacturers) had failed to do for the nearly half-decade since the implementation of JA8:
developing miniature LED technology that met specification requirements of JA8.
31. At least as early as February 2020, if not before, Defendant began to advertise, market, and
sell what it referred to as its new “G9 JA8 Series Retrofit Lamps,” including at least Product
Model Nos. 4G9D927/JA8 and 4G9D930/JA8 (“Accused Products”).
32. A visual comparison of Defendant’s Accused Product and EmeryAllen’s Patented Product
is provided below. As shown, Defendant’s Accused Products are not only substantially
similar, but nearly identical – if not identical – to EmeryAllen’s Patented Products.
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G9 JA8 Series Retrofit Lamp EmeryAllen’s Patented

(Model 4G9D927/JA8) Product
33. Based on EmeryAllen’s physical examination of the Accused Product (MaxLite G9 JA8
Series Retrofit Lamp, Model 4G9D927/JA8) and additional information provided in
Defendant’s associated product Data Sheet (attached as Exhibit G), an analysis of the
claims of the Asserted Patents and corresponding features of the Accused Product
confirmed that the Accused Product is fully encompassed by one or more claims of the
Asserted Patents, i.e., the Accused Product infringes one or more claims of the Asserted
Patents.
34. Defendant’s Accused Product infringes one or more claims of the Asserted Patents,
including at least claims 1 and 20 of the ‘412 Patent. Specifically, as identified in the
Accused Product shown below and based on information provided in Defendant’s Data
Sheet of Exhibit G, Defendant’s Accused Product contains, inter alia: an envelope portion
that is less than 50 mm in length and less than 20 mm in diameter, and an LED array and
electronics assembly comprising a luminous efficiency of at least 45 lumens per watt.
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- SUBSTANTIALLY LIGHT DIFFUSING

PORTION defining an interior portion of the
ENVELOPE PORTION
- LED light assembly is housed in interior of
envelope
- LED light assembly comprises an array
BASE PORTION
with electrical contacts
SUBSTANTIALLY
CYLINDRICAL BODY coupled
to base portion
35. A detailed Claim Chart representative of and supporting EmeryAllen’s analysis and
conclusion of infringement is attached hereto as Exhibit H. As shown therein, the Accused
Product includes each and every limitation of claims 1 and 20 of the ‘412 Patent and of the
design claim of the ‘663 Patent.
36. After confirming Defendant’s infringement of its Patents, EmeryAllen sent Defendant a
Cease and Desist Letter, informing Defendant of the Asserted Patents and offering
Defendant an opportunity to discuss potential licensing arrangements. The Cease and
Desist Letter not only expressly informed Defendant of the Asserted Patents, but also
included EmeryAllen’s supporting theories of infringement accompanied with detailed
claim charts, which are attached hereto as Exhibit H.
37. Despite the objectively high risk of infringement of the Asserted Patents, Defendant has
continued and continues to engage in conduct that infringes one or more claims of the
Asserted Patents. The objectively high risk of infringement was known to Defendant or
otherwise so obvious that it reasonably should have been known.
38. In short, Defendant has made and continues to make extensive use of EmeryAllen’s
innovative and patented technologies. Defendant’s manufacture, use, offers for sale, and
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sales of products embodying EmeryAllen’s claimed inventions constitute infringement of
the Asserted Patents.
39. Defendant’s infringement has caused, and continues to cause, damage and irreparable harm
to EmeryAllen, which damage and irreparable harm will continue unless and until such
time that Defendant’s continued infringement is enjoined by this Court. EmeryAllen is
entitled to injunctive relief and damages in accordance with 35 U.S.C. §§ 271, 281, 283,
and 284.
40. This is an exceptional case. In accordance with 35 U.S.C. § 285, EmeryAllen is
additionally entitled to attorneys’ fees and costs incurred as a result of Defendant’s willful
infringement of the Patents.
COUNT I
(PATENT INFRINGEMENT)
41. EmeryAllen realleges and incorporates herein by this reference the paragraphs above and
below of this Complaint as though fully set forth herein. All exhibits are incorporated
herein as if set forth fully.
42. EmeryAllen owns all right, title and interest in and to:
(i) U.S. Patent No. 10,605,412, issued on March 31, 2020, titled: “Miniature
Integrated Omnidirectional LED Bulb,” which is directed to the general
design, construction and operation of its novel LED lamps, as embodied by
the 120V EmeryAllen® G9 Retrofit Lamp (the “412 Patent”); and
(ii) U.S. Design Patent No. D850,663, issued on June 4, 2019, titled “Miniature
LED Bulb,” which is directed to the ornamental design of its novel 120V
EmeryAllen® G9 Retrofit Lamp (the “663 Patent”).
43. Defendant has directly infringed, and has induced others to infringe, one or more claims of
the ‘412 Patent, as well as the ‘663 Patent, either literally or under the doctrine of
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equivalents under 35 U.S.C. § 271, by making, using, offering to sell, selling, importing,
or exporting the accused product and other products to those of the accused products.
44. Defendant continues to directly infringe and induce others to infringe either literally, or
under the doctrine of equivalents, one or more claims of the ‘412 and ‘663 Patents.
45. Prior to the filing of this suit, Defendant was aware of EmeryAllen’s Asserted Patents.
Specifically, Defendant was placed on constructive notice of the Asserted Patents at least
as early as June 4, 2019 when EmeryAllen began providing constructive notice of its patent
rights on its product materials and website, in accordance with the requirements of 35
U.S.C § 287. Thereafter, on or about April 16, 2020, Defendant additionally received
actual notice by way of the Cease and Desist Letter from EmeryAllen.
46. Upon gaining actual knowledge of the Patents, it was indisputably apparent to Defendant
that the manufacture, sale, and offer for sale of its miniature lamps, including but not
limited to its accused products referenced herein, as well as other products containing
similar features, infringed EmeryAllen’s Patents.
47. Despite Defendant’s express knowledge of the Patents, and in reckless disregard of the
claims of the Patents and of EmeryAllen’s rights therein, Defendant has continued to
willfully, deliberately, and intentionally infringe one or more claims of the Asserted Patents
at least by continuing to make, use, offer for sale, sell, import or export the accused
products, and any other products containing similar features to the accused products.
48. Defendant has acted despite an objectively high likelihood that its actions constitute
infringement of the Asserted Patents. In addition, the risk of infringement was either
known by Defendant or so clearly obvious that the risk should reasonably have been known
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to Defendant, if not sooner than after receiving EmeryAllen’s clear notification to that
extent.
49. EmeryAllen has suffered significant damages and will continue to suffer additional
damages as a result of Defendant’s infringement, including lost sales, lost market share,
and lost goodwill. EmeryAllen is entitled to recover damages adequate to compensate it
for Defendant’s infringing activities in an amount to be determined at trial, but in no event
less than a reasonable royalty, together with interest and costs.
50. For ongoing and future infringement, EmeryAllen will continue to suffer irreparable harm
unless this Court enjoins Defendant and its agents, employees, representatives, and all
others acting in concert with Defendant from continuing to infringe the Asserted Patents.
51. EmeryAllen has no choice but to defend its proprietary and patented technology.
EmeryAllen thus requests that this Court award it damages sufficient to compensate for
Defendants’ infringement of the Asserted Patents, punitive damages due to the
infringement being willful, treble damages, and attorneys’ fees and costs due to
Defendant’s willful misappropriation of trade secrets and based on a finding that this case
is an exception, and grant an injunction against Defendant to prevent ongoing infringement
of the Asserted Patents.
COUNT II
(BREACH OF CONTRACT)
52. EmeryAllen realleges and incorporates herein the paragraphs above and below.
53. The parties entered into a binding contract in the form of a Non-Disclosure Agreement
(NDA) attached hereto as Exhibit F.
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54. The contract specified, among other things, that South Carolina law applies. Any dispute
regarding the contract is to be litigated in courts in South Carolina.
55. The contract also specified, among other things, that confidential information provided to
or shared with Defendant by EmeryAllen would be used only for the purpose of and in
connection with the Parties’ business relationship.
56. Defendant breached the contract as set forth above, including by (inter alia) using
EmeryAllen’s confidential information and technical data for Defendant’s own
commercial purposes, which had no connection with the parties’ business relationship.
57. As a result of Defendant’s breach, EmeryAllen has suffered damages, and continues to
suffer damages, and requests that the Court award those damages to EmeryAllen.
COUNT III
(BREACH OF CONTRACT ACCOMPANIED BY A FRAUDULENT ACT)
59. Defendant and EmeryAllen entered into a binding contract in the form of an NDA as
specified above.
60. Defendant induced EmeryAllen into sharing its confidential information with Defendant
based on assurances of Defendant’s confidentiality afforded by the NDA, which Defendant
entered into with fraudulent intent so as to obtain and then use EmeryAllen’s proprietary
information and data for Defendant’s own commercial purposes.
61. Defendant has breached the Parties’ NDA contract, as set forth above.
62. Defendant’s breach was not only willful, but from the outset was premised on Defendant’s
fraudulent intentions.
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63. As a result of Defendant’s actions, EmeryAllen has been damaged and continues to suffer
damages, and requests that the Court award compensatory and punitive damages to
EmeryAllen.
COUNT IV
(SOUTH CAROLINA UNFAIR TRADE PRACTICES ACT)
65. The South Carolina Unfair Trade Practices Act, S.C. Code § 39-5-10 et seq., prohibits
unfair methods of competition and unfair or deceptive acts or practices in the conduct of
any trade or commerce. The provisions of that Act are incorporated herein by reference.
66. Defendant has engaged in unfair methods of competition and unfair or deceptive practices
in the conduct of trade or commerce, as set forth above.
67. Defendant’s unlawful acts have proximately caused damages to EmeryAllen, by
improperly taking and using EmeryAllen’s confidential information and data for
Defendant’s commercial purposes.
68. Defendant’s unlawful actions affect the public interest and are capable of repetition.
69. The development of energy-efficient light bulbs and energy-saving technology is a priority
in the United States and in South Carolina, and the improper taking and use of such
proprietary information constitutes improper and unfair competition, and harms the public
interest in energy-efficient lighting technologies by discouraging companies, such as
EmeryAllen, from further development of innovative energy-saving products.
70. Moreover, the public interest is also harmed by Defendant holding itself out to the public
as developing a certain innovative technology, such as the Infringing Products discussed
herein, when in fact Defendant improperly and unlawfully obtained such technology from
EmeryAllen.
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71. There is a reasonable and high potential for Defendant’s repetition of its unlawful actions,
as Defendant willfully holds itself out to the public as the developer and seller of certain
innovative technologies which it willfully and fraudulently obtained and misappropriated
from EmeryAllen.
72. As evidenced by Defendant’s continued and consistent conduct to date, Defendant’s
actions were and remain willful and deliberate, and EmeryAllen is entitled to treble
damages, as well as to attorneys’ fees and costs.
COUNT V
(UNJUST ENRICHMENT)
73. EmeryAllen realleges and incorporates herein the paragraphs above and below, and asserts
a claim of unjust enrichment against Defendant.
74. EmeryAllen conferred a benefit upon the Defendant, as discussed above, including in ¶¶
23-51.
75. Defendant realized that benefit and profited from it, as discussed above, including in ¶¶
23-51.
76. It would be inequitable under the circumstances for Defendant to retain the benefit without
paying its value to EmeryAllen and providing restitution to EmeryAllen.
REQUEST FOR RELIEF
WHEREFORE, EmeryAllen respectfully requests that the Court enter Judgment against
Defendant and an Order:
A. Declaring that Defendant has infringed and continues to infringe, either literally or
under the doctrine of equivalents, at least one valid and enforceable claim of the
Patents under 35 U.S.C. § 271(b);
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B. Declaring that Defendant has breached the Parties’ contract (NDA);
C. Declaring that Defendant’s breach of the contract was willful and accompanied by
fraudulent intent;
D. Declaring that Defendant has engaged in unfair methods of competition and unfair
or deceptive practices in the conduct of trade or commerce, at least in violation of
The South Carolina Unfair Trade Practices Act;
E. Declaring that there is a reasonable and high potential for Defendant’s repetition of
its unlawful actions;
F. Awarding EmeryAllen damages adequate to compensate it for damages resulting
from Defendant’s acts above, but in no event less than a reasonable royalty for past
infringement together with pre-judgment and post-judgment interest;
G. Declaring that Defendant’s infringement is willful and that EmeryAllen is entitled
to treble damages under applicable law, including 35 U.S.C. § 284 for past
infringement, and the South Carolina Uniform Trade Practices Act;
H. Either (a) permanently enjoining Defendant and all its affiliates, employees, agents,
officers, directors, attorneys, successors, and assigns, and all those acting on behalf
of or in active concert or participation with any of them from further (i) infringing
the Patents and (ii) making, using, offering for sale and selling the infringing
products, or (b) awarding damages in lieu of an injunction, in an amount consistent
with the fact that for future infringement Defendant will be an adjudicated infringer
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of a valid patent, and thus trebling that amount in view of the fact that the future
infringement will be willful as a matter of law;
I. Declaring that this is an exceptional case under 35 U.S.C. § 285 and awarding
EmeryAllen its attorney’s fees, costs, and expenses, based in part on—but not
limited to—Defendant’s willful infringement;
J. Should Defendant contend the Patents to be invalid or unenforceable, enter a
declaratory judgment holding the Patents not invalid and not unenforceable;
K. Awarding EmeryAllen actual damages, consequential damages, special damages,
punitive damages as shown at trial;
L. Awarding EmeryAllen attorneys’ fees and costs; and
M. Granting EmeryAllen such other and further relief as the Court may deem just,
proper, and equitable.
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Respectfully submitted,
FORD WALLACE THOMSON LLC
By: s/Ian S. Ford

Ian S. Ford (Fed. Bar No. 9057)
Ian.Ford@FordWallace.com
Ainsley F. Tillman (Fed. Bar No. 12847)
Ainsley.Tillman@FordWallace.com
715 King Street | Charleston, SC 29403
(843) 277-2011
www.FordWallace.com
FINCH PAOLINO, LLC
Gregory Finch
gfinch@finchpaolino.com
91 Rutledge Ave.
Charleston, SC 29401
(843) 641-7786
www.finchpaolino.com
Attorneys for Plaintiff EmeryAllen, LLC
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UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
EMERYALLEN, LLC,
Plaintiff, VERIFICATION OF COMPLAINT
v.
MAxLITE INC.,
Defendant.
I, TOM GARBER, Jr., being duly sworn, say that I an officer and corporate designee of
the Plaintiff, EmeryAllen, LLC, herein, and have read the foregoing Complaint and know the
contents thereof, that the same is true to the best of my knowledge, except as matters therein stated
to be alleged on information and belief; and to those matters I believe to be true.
Tom Garber
2:20-cv-04332-RMG Date Filed 12/14/20 Entry Number 1-1 Page 1 of 26
EXHIBIT A
U.S. Patent No. 10,605,412 (the ‘412 Patent)
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EXHIBIT B
U.S. Patent No. D0850,663 (the ‘663 Patent)
23
EXHIBIT C
EmeryAllen’ Product Sheet
Data Sheet for 120V EmeryAllen® G9 Retrofit Lamp
24
EXHIBIT D
MaxLite Recommendations Submitted to CEC on March 5, 2018
25
DOCKETED
Docket Number: 17-BSTD-02
Project Title: 2019 Title 24, Part 6, Building Energy Efficiency Standards Rulemaking
TN #: 222906
Document Title: MaxLite Comments on 2019 Building Energy Efficiency Stds 45-Day
Express Terms
Description: N/A
Filer: System
Organization: MaxLite
Submitter Role: Public
Submission 3/6/2018 1:24:35 PM
Date:
Docketed Date: 3/6/2018
Comment Received From: Chris Primous

Submitted On: 3/6/2018
MaxLite Comments on 2019 Building Energy Efficiency Stds 45-Day Express Terms
Additional submitted attachment is included below.

Date: March 5, 2018
California Energy Commission

Commissioner Andrew McAllister
Docket No. 17-BTSD-02
1516 Ninth Street
Sacramento, CA 95814-5512
RE: MaxLite Comments on 2019 Building Energy Efficiency Standards 45-Day EXPRESS TERMS
Thank you for allowing us to comment on the 45-Day express terms for the California Building Energy
Efficiency Standards, Title 24, Part 6. We appreciate the Commission’s hard work on these standards and
willingness to consider industry feedback and proposals.
Summary of recommendations
Document Title TN# Section Recommendation
45-day Express 222176 Table 150.0-A Allow Safety Listed miniature SSL lamps with ANSI base types G4, GY6.35,
Terms 2019 Classification and G9 to be automatically classified as high-efficacy light sources for T24.
Standards Ch 7 of High
Efficacy Light
Sources
45-day Express 222216 JA 8.4.5 Include language that makes it clear that SSL filament lamps that are
Terms 2019 Lumen 2200K and 2500K CCT can utilize same “early certification” life test
Standards JA8 Maintenance, methods as all other CCTs of LED lamps.
Rated Life
and Survival
Rate
45-day Express 222216 JA 8.5 Maintain JA8-2016 marking exemption for lamps and LED light engines
Terms 2019 Marking with diameters less than 1.0” and decorative lamps with diameters less
Standards JA8 than 2.0”
45-day Express 222216 JA 8.6 Simplify and streamline the MAEDBS database prior to the new product
Terms 2019 Data type called “T20 LAMP”
Standards JA8 Reporting
45-Day Express Terms 2019 Standards Ch 7

Table 150.0-A Classification of High Efficacy Light Sources
Issue:
Industry has been unable to meet some of the specifications of JA8 such as flicker and
dimmability in some popular residential miniature lamp types due to the physical size of these
tiny lamps. (Many less than 1” dia x less than 2” L.)
Comments:
Since JA8-2016 was released in June 2015, light source manufacturers have made various
attempts to achieve JA8 compliance with miniature LED lamps such as G9 base LED lamps.
However, these products have been unable to meet JA8 specifications largely due to the
electrical components needed to achieve flicker, PF, and dimmability metrics. As these
miniature lamps are smaller in 1” diameter in many cases, there is a physical size limitation in
being able to meet these metrics in these products.
These miniature lamps in LED are typically used in lieu of 25-50W halogen lamps in decorative
residential luminaires such as pendants and bath bars. Since no JA8 lamps of these types have
been able to be produced to-date, builders in California are unable to use any socketed
luminaire designs that feature these bases for new residential construction.
It is recommended that the Commission allows SSL lamps with the following ANSI standard
bases: G4, GY6.35, G9 base to be automatically classified as high efficacy.
Further conditions should also be included for these products that such lamps must be Safety
Listed using language similar to the electrical safety requirements found in ENERGY STAR Lamps
V2.1 sec. 11.1 below:
Lamp shall comply with ANSI/UL 1993-2012 and ANSI/UL 8750-2009 as applicable.
Recommendation:
Allow Safety Listed miniature SSL lamps with ANSI base types G4, GY6.35, and G9 base to be automatically classified as high-
efficacy light sources for T24.
45-Day Express Terms 2019 Standards JA8

Section JA 8.3.5 – Lumen Maintenance and Rated Life Test
Issue:
Much of this section refers to ENERGY STAR LAMPS V2.1 for light source testing. However,
ENERGY STAR LAMPS V2.1 has a restriction in Section 9.6 that excludes filament-style LED
lamps with certain CCTs from achieving early interim certification for life testing (3,000 hours
life test). While the JA8 document shows no specific exclusions for technologies or certain CCTs
of LED lamps, language needs to be added to this document to make it explicitly clear that,
unlike ES Lamps V2.1, no restrictions for filament-style LED lamps of any CCT exists that
prevents early certification.
Comments:
In December 2015, when ENERGY STAR LAMPS V2.0 (which later was updated to V2.1) was written by
EPA, they were concerned that these “vintage” filament lamp types and these two brand new CCT
categories introduced in ANSI C78 were too new to the market to allow early certification. By 2020,
when JA8-2019 is effective, there will be ample testing history to allow these lamps to utilize same life
test metrics as any other SSL lamp type.
Recommendation:
Include language that makes it clear that SSL filament lamps that are 2200K and 2500K CCT can utilize same
“early certification” life test methods as all other CCTs of LED lamps.

Section JA 8.5 Marking
Issue:
There is not enough physical space on small engines and lamps to include the “JA8-2019” text
in letters large enough for it to be useful to an inspector. Additionally, it is problematic for
manufactures to add such text to light sources that are already required to contain quite a few
markings for Safety Certification, Marketing, and Replaceability.
Additionally, consumers have complained that markings on glass decorative lamps such as clear
glass LED filament candle lamps detract from the aesthetics of the products.
Comments:
Note that it is in a manufacturer’s best interest to include JA8 markings on all products that have
undergone JA8 testing and achieved JA8 compliance. Thus, we will certainly place the markings on all
products where we can. However, some products are just too tiny to include any more markings that
absolutely required for safety listings. A sample of markings/etchings that must already be placed on a
LED candle lamp (which is less than 2” diameter):
 Brand name
 Model number
 Voltage
 Power
 Wattage
 Frequency
 Lumen output
 CCT
 Date code
 Open/closed luminaire diagram or phrase that describes application environment
 Safety Marking (including Safety file number and product type)
As an alternative solution, some sort of JA8 logo could also be employed for these products which would
help to eliminate the 10 characters required for “JA8-2019-E.”
Recommendation:
Maintain JA8-2016 marking exemption for lamps and LED light engines with diameter less than 1.0” and
decorative lamps with a diameter less than 2.0” or the Commission develop a logo for such products

Section JA 8.6 Data Reporting
Issue:
This proposal intends to add a new category of product called a “T20 LAMP.” The MAEDBS is
already quite confusing for users seeking to find certified products. A new category called “T20
LAMP” is going to create additional confusion unless some effort is taken to streamline and
simplify MAEDBS.
Comments:
Due to confusing category names and overlapping voluntary, state-regulated, appliance, and building
codes all sharing the same database; consumers and industry stakeholders are finding it difficult to
search and find desired products and know which database in which to search.
For example, if this new “T20 LAMP” category is added, and a user is seeking a properly certified
omnidirectional lamp, it will be very difficult to know where in the database they should look to find
such a product. A product that is a “LAMP” could potentially be contained within any one of the
currently-existing MAEDBS databases below:
 2013 JA8 High Efficacy LEDs
 2016 JA8 High Efficacy Lighting
o Omnidirectional Lamp
o Directional Lamp
o Decorative Lamp
 Lamps
o 2-foot U-shaped general service fluorescent lamp
o 4-foot medium bi-pin general service fluorescent lamp
o 4-foot mini bi-pin high output general service fl. lamp
o 4-foot mini bi-pin std output general service fl. lamp
o 8-foot high output general service fluorescent lamp
o 8-foot slim line general service fluorescent lamp
o Candelabra incandescent lamp
o General service incandescent lamp
o Intermediate Base Incandescent lamp
o Incandescent reflector lamp
o LED lamps
o Modified spectrum incandescent reflector lamp
o Modified spectrum general service incandescent lamp
o Other
 State-regulated Light Emitting Diode Lamp
o E12 Candelabra Base
o E17 Intermediate Base
o E26 Medium Screw Base
o GU-24
o Retrofit Kit
 2019 JA8 High Efficacy Lighting (proposed for T24 2019)
o Omnidirectional Lamp
o Directional Lamp
o Decorative Lamp
o T20 Lamp
If this “T20 LAMP” category is indeed added as a product category for JA8-2019, there should be some
effort taken to considerably streamline and simplify the database and product category names in order
to ease user searchability and reduce the chance for confusion.
Also, note that the California APPLIANCE program does not have a product designation in the
regulations that is referred to as a “T20 LAMP,” so the labeling/naming of such a category of product in
JA8-2019 should perhaps be reconsidered.
Recommendation:
Simplify and streamline the MAEDBS database prior to the new product type called “T20 LAMP”
Thank you.
Regards,
Chris Primous
VP of OEM National Accounts and Industry Relations
cprimous@maxlite.com |862-485-9878
EXHIBIT E
EmeryAllen Rebuttal of MaxLite’s Recommendations, Submitted to CEC on March 7,
2018
26
DOCKETED
TN #: 222914
Document Title: Emery Allen LLC Comments On Maxlite Recommendations to CEC dated
03-05-18
Description: N/A
Filer: System
Organization: Emery Allen LLC
Submitter Role: Public
Submission 3/7/2018 11:18:12 AM
Date:
Docketed Date: 3/7/2018
Comment Received From: Emery Allen LLC

Submitted On: 3/7/2018
On Maxlite Recommendations to CEC dated 03-05-18
Additional submitted attachment is included below.

EmeryAllen LLC
359 WANDO PLACE DRIVE
SUITE E
MT PLEASANT, SC 29464
843.789.0904
tomg@EmeryAllen.com
Date: March 7, 2018
California Energy Commission

Commissioner Andrew McAllister
1516 Ninth Street
Sacramento,CA 95814-5512
Docket No. 17-BTSD-02

Project Title: 2019 Title 24, Part 6, Building Energy Efficiency Standard Rulemaking
Re: EmeryAllen comments on Maxlite recommendations to CEC dated March 5, 2018.
On Monday March 5th, 2015, MaxLite submitted a summary of recommendations to the CEC in reference to
Title 24, Part 6 and more specifically JA8-2016 compliance.
Maxlite’s summary of recommendations:
As stated by MaxLite:
EmeryAllen Rebuttal:
EmeryAllen LLC
The above statement is false. Although it has been extremely challanging to meet these requirements,
EmeryAllen has developed a series of LED lamps that encompass multiple wattages, voltages and base
configurations (120v -G9, G8, E11, E12, BA15D and 12v - G4 and GY6.35). Our products have been
submitted to a third party NVLAP test lab. We have sucessfully passed the performance section of the test
requirement and are in the middle of life testing. Based on the LM80 data provided to us from the chip
manufacturer and our initial lumen depreciation results, we should have no problem in meeting the life testing
requirement.
EmeryAllen Supports
EmeryAllen does highly agree and supports MaxLite’s recommendation to have these lamps Safety Listed:
The safety of a lighting system is only as good as it’s weakest link. Every single component of a lighting system
is required to be either a recognized component or listed component, except the bulb. In order to ensure the
safety to electricians, repairpersons and homeowners all LED bulbs need to be Safety Listed.
EmeryAllen also supports the following MaxLite recommendations:
Thank you for allowing EmeryAllen to submit our comments.
Sincerely,
Tom Garber
President
EmeryAllen
3
EXHIBIT F
Non-Disclosure Agreement
(Executed October 14, 2016)
27
EXHIBIT G
Defendant’s Product Sheet
Data Sheet for MaxLite G9 JA8 Series Retrofit Lamp
28
PROJECT NAME:_____________________________ CATALOG NUMBER:__________________________
NOTES:______________________________________FIXTURE SCHEDULE:_________________________
Page: 1 of 3
LED G9 RETROFIT LAMPS

G9 JA8 SERIES
PRODUCT DESCRIPTION:
The G9 Retrofit Lamp is an energy-efficient alternative to Halogen
T4 G9 based lamps. The four-watt retrofit lamp captures the
traditional form factor of this popular light source, while the three
and five watt models offer powerful light distribution similar to
halogen lamps.
FEATURES:
JA8 LISTED
2016 / 2019
• Wattage: 4W
• Retrofits into G9 sockets
• Input Voltage: 120V
• Color Rendering Index (CRI): ≥90
• 25,000 hour life @ L70 standard
• Power Factor: ≥0.90
• Dimmable
• Suitable for use in enclosed luminaires
• Suitable for use in damp locations
• 3 year limited warranty
4W G9 • Max Tc: 85°C
• JA8-2016-E listed for use in California T24 construction
• Low flicker, <30% flicker rate
APPLICATION:
• Task lighting
• Display lighting
• Track fixtures
• Decorative mini pendants
MODEL SELECTION (Full list of order codes on pg. 2) Typical order example: 4G9D927/JA8
4 G9 D
WATTAGE FAMILY DIMMABILITY CRI & CCT
4= 4W G9= LED G9 D= Dimmable 927/JA8= 90 CRI, 2700K, JA8

930/JA8= 90 CRI, 3000K, JA8
MAX18197
Phone: 1-800-555-5629 | Fax: 973-244-7333 | Web: www.maxlite.com | E-mail: info@maxlite.com Revised: 02/04/20

G9 JA8 SERIES
Page: 2 of 3
SPECIFICATIONS: 4G9D927/JA8 4G9D930/JA8
ITEM SPECIFICATION DETAILS
Power Consumption 4W 4W
Lumens Delivered 350 400
Efficacy (lm/W) 88 100

GENERAL
Dimmable Yes Yes
PERFORMANCE
CRI ≥90
Color Temperature (CCT) 2700K 3000K
Lumen Maintenance (L70) 25,000 Hours
Power Factor >0.9

ELECTRICAL
Input Voltage 120V
Base Type G9
PHYSICAL
Operating Temperature -4°F to 104°F
Certification cULus
CERTIFICATION Environment Dry & damp, Enclosed
Warranty 3 Year Limited
ORDERING:
ORDER CODE MODEL WATTS EQUIVALENCY LUMENS DIMMABILITY DIMENSIONS (MOL” x DIA”)
14101648 4G9D927/JA8 4 35W 350 Yes 2.20" x 0.71"

14101649 4G9D930/JA8 4 40W 400 Yes 2.20” x 0.71”
Tc Max = 85°C
MAX18197

G9 JA8 SERIES
Page: 3 of 3
DIMMER LIST:
MANUFACTURER MODEL COMPATIBILITY MANUFACTURER MODEL COMPATIBILITY
GENERAL PROTECHT LUXDM600-12 OK LUTRON S-603PGH-WH NOT COMPATIBLE
LEGRAND HCL453PTC NOT COMPATIBLE LUTRON S-600H-WH NOT COMPATIBLE
LEGRAND RHCL453PW OK LUTRON S-10PH NOT COMPATIBLE
LEVITON 6684 OK LUTRON D-600RH-DK NOT COMPATIBLE
LEVITON 6631-LA OK LUTRON TG-600PH-WH OK
LEVITON IPI06 OK LUTRON TG-600PH-IV OK
LEVITON S-600P-WH OK LUTRON CT-600PR-WH OK
LEVITON 6672 OK LUTRON MAW-600H-AL OK
LEVITON 603-6631-A NOT COMPATIBLE LUTRON SCL-153P-WH OK
LEVITON 6631-A OK LUTRON D-600R-WH OK
LEVITON IPL06 OK LUTRON DVCL-153PH OK
LEVITON IPI10-1LZ NOT COMPATIBLE LUTRON S-600-IV NOT COMPATIBLE
LEVITON 6674 OK LUTRON S-600-AL NOT COMPATIBLE
LEVITON 6681 OK LUTRON D-600R-IV NOT COMPATIBLE
LEVITON 6683-10Z OK LUTRON DV-603PH-WH OK
LEVITON IPI06-1LZ OK LUTRON DVCL-153P-WH OK
LEVITON 6631 600W OK LUTRON S-603PH-WH OK
LEVITON 6681 OK LUTRON DVWCL-153PH-WHC OK
LUTRON MACL-153MLH-WH OK LUTRON MACL-153M-WH OK
LUTRON TG-603PGH-WH NOT COMPATIBLE LUTRON AYCL-153P-WH OK
LUTRON DVCL-153P-WH OK LUTRON S-600P-WH OK
LUTRON MAELV-600-WH OK LUTRON MACL-153MR-WH OK
LUTRON CTCL-153PDH-WH OK LUTRON AY-600PH-WH NOT COMPATIBLE
LUTRON CTCL-153PDH-WH OK LUTRON AYCL-153PH OK
LUTRON MSCL-OP153MH-WH OK LUTRON DV-600P-WH OK
LUTRON DV-603P OK LUTRON MACL-153MH-WH OK
LUTRON S-60 NOT COMPATIBLE LUTRON DVCL-253PH OK
LUTRON CT-103P-WH OK LUTRON TGCL-153PH-WH OK
LUTRON CTCL-153P-W OK LUTRON TG-600PNLH-WH NOT COMPATIBLE
LUTRON TGCL-153PH-WH OK LUTRON LECL-153PH-WH NOT COMPATIBLE
LUTRON D-600PH-DK NOT COMPATIBLE LUTRON MACL-153MLRHW-WH OK
LUTRON TGCL-153PLH-WH OK LUTRON DVCL-153P-WH-3 OK
LUTRON DV-603PR OK LUTRON PD-6WCL-WH-P OK
LUTRON S-600PR-WH OK LUTRON MAW-600H-WH OK
LUTRON DVWCL-153PH-WH OK LUTRON DV-603PH-WH NOT COMPATIBLE
LUTRON DVW-600PH-WH OK
LUTRON DV-600PH-WH OK
MAX18197
EXHIBIT H
Claims Charts of the ‘412 Patent and the ‘663 Patent
29
Page 1
Patents: 10,605,412 and D0850,663
Product Analyzed: MaxLite G9 JA8 Series Retrofit Lamp, Model 4G9D927/JA8
Date Conducted: April 15, 2020
CLAIMS CHART
I. US Patent No. 10,605,412
Claim Elements (‘412 Patent) Where Present in MaxLite G9 JA8 Series

1. A miniature light emitting diode
(LED) light bulb comprising:
Miniature LED
light bulb
a base portion including one or more

electrical contacts arranged to mate with
an electrical receptacle to receive
electric current;
Base portion w/
electrical contacts
an envelope portion comprising a

substantially cylindrical body portion
coupled to the base portion,
Substantially
cylindrical body
portion
Coupled to base
portion
Page 2
Patents: 10,605,412 and D0850,663
a substantially cylindrical ceramic heat
sink coupled to an inner circumference
of the body portion, The ceramic heat sink was
damaged upon removing the
envelope from the base but was
observed as being substantially
cylindrical upon examination of
the pieces of the heat sink.
and a substantially cylindrical light

diffusing portion coupled to an upper
circumference of the body portion, the
light diffusing portion and the body
portion defining an interior portion of Substantially light
the envelope portion, diffusing portion
defining an interior
portion of the
envelope portion
the envelope portion being less than 50

mm in length and less than 20 mm in
diameter
The envelope portion was

observed as being less
than 50 mm in length
The envelope portion was

observed as being less
than 20 mm in diameter
Page 3
Patents: 10,605,412 and D0850,663
an LED light assembly being housed in
the interior portion of the envelope
portion,
LED light assembly housed
in interior of envelope
the LED light assembly comprising a

flexible printed circuit board,
The LED light assembly

was observed as
comprising a flexible
printed circuit board
a plurality of LEDs being disposed on a

surface of the flexible printed circuit
board, the plurality of LEDs being
electrically and thermally connected to
comprise an LED array, The LED light assembly
was observed as
comprising an array
and an electronics assembly being

disposed on a surface of the flexible The electronics assembly was
printed circuit board and comprising an observed as being disposed on a
LED driver and an integrated circuit surface of the flexible printed
being operably engaged with the one or circuit board and comprising an
more electrical contacts and the LED driver and an integrated
plurality of LEDs to provide power to circuit being operably engaged
the LED array, with the one or more electrical
contacts to provide power to the
LED array.
Page 4
Patents: 10,605,412 and D0850,663
the LED array and the electronics
assembly being operably configured to
comprise a luminous efficiency of at
least 90 lumens per watt,
The MaxLite G9 JA8 Series

discloses a luminous efficiency of
at least 90 lumens per watt
the flexible printed circuit board being

folded at one or more plane axis to
define a circumference when housed in
the interior portion of the envelope
portion.
The flexible printed circuit

board was observed as
being folded at one or
more plane axis to define a
circumference
20. The miniature LED light bulb of

claim 1 wherein the LED array and the
electronics assembly are operably
configured to comprise a luminous
efficiency of at least 45 lumens per watt.
The MaxLite G9 JA8 Series

discloses a luminous efficiency of
at least 45 lumens per watt
Page 5
Patents: 10,605,412 and D0850,663
Claims Chart: US Patent No. D850,663
Design Claim (‘663 Patent) Substantial Similarity in MaxLite G9 JA8 Series

Page 6
Patents: 10,605,412 and D0850,663
Page 7
Patents: 10,605,412 and D0850,663
EXHIBIT I
Defendant’s Public Statements Regarding Infringing Product
30

EmeryAllen v. MaxLite - Complaint

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EmeryAllen v. MaxLite - Complaint

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2:20-cv-04332-RMG Date Filed 12/14/20 Entry Number 1 Page 1 of 21

UNITED STATES DISTRICT COURT

EMERYALLEN, LLC, C/A No. 2:20-cv-4332-RMG

Plaintiff, EmeryAllen, LLC (“EmeryAllen”) files this complaint against Defendant,

MaxLite Inc. (“Defendant”), and in support thereof asserts the following:

NATURE OF THE ACTION

Practices Act, and unjust enrichment.

Dr., E, Mt. Pleasant, SC 29464.

Avenue, West Caldwell, NJ 07006.

JURISDICTION AND VENUE

jurisdictional minimum of 28 U.S.C. § 1332(a) is met because the amount in controversy

under 28 U.S.C. §§ 1331, 1332, 1338, and 1367 et seq.

7. As discussed further herein, Defendant executed a Non-Disclosure Agreement (the

AGREEMENT IS MADE UNDER, AND WILL BE CONSTRUED ACCORDING

TO, THE LAWS OF THE STATE OF SOUTH CAROLINA.” Defendant executed

EmeryAllen's disclosure of certain otherwise confidential information, Defendant

knowingly profited from EmeryAllen’s confidential disclosure of its innovative technology

been made publicly known by EmeryAllen.

& 1400(b) et seq.

EMERYALLEN’S PATENTED TECHNOLOGY

10. EmeryAllen is a privately-owned company located in Charleston, South Carolina,

innovative products, culminating in EmeryAllen having the most well-rounded portfolio

of miniature LED lamps currently on the market.

comply with JA8-2016 specification. By successfully meeting the performance standards

imposed under JA8-2016, EmeryAllen’s state-of-the-art “120V EmeryAllen® G9 Retrofit

standard halogen lamps.

Patent”) (“Asserted Patents”).

EmeryAllen’s innovative LED miniature lamp technology, including the commercialized

embodiment sold by EmeryAllen as the “120V EmeryAllen® G9 Retrofit Lamp” which is

ornamental design of a miniature LED lamp.

United States patent laws.

circuit board and a plurality of electrically- and thermally-connected LEDs disposed on a

invention and design, are shown and labeled below:

FIG. 6 of ‘412 Patent FIG. 1 of ‘663 Patent

Body Portion Heat Sink Lens

FIG. 1 of ‘412 Patent

FIG. 2 of ‘412 Patent

19. EmeryAllen’s 120V EmeryAllen® G9 Retrofit Lamp is a commercial embodiment of the

innovative miniature lamps have a lighting output of corresponding conventional

satisfied the long-felt industry need for an energy-efficient alternative to conventional

incandescent G9 base lamps.

patents, including the Asserted Patents.

ACTS GIVING RISE TO THIS ACTION

24. Prior to learning of EmeryAllen’s breakthrough technology, Defendant did not

specification requirements. In fact, on March 5, 2018, Defendant submitted a summary of

recommendations to the California Energy Commission (CEC) in reference to recent

submission is attached as Exhibit D.

submitted the following “Rebuttal” to Defendant’s assertions above:

The above statement is false. Although it has been extremely

JA8 specifications. In fact, as acknowledged in its comments to the CEC, Defendant

achieve JA8 compliance with miniature LED lamps.

28. Defendant readily recognized the commercial significance of EmeryAllen’s reported

technological achievements, and promptly requested a meeting with EmeryAllen to

determine if EmeryAllen could supply its JA8-compliant miniature LED lamp to

Defendant under a private label supply arrangement.

29. Due to EmeryAllen’s desire to maintain confidentiality pertaining to its technological

between the Parties. A copy of the executed contract is attached as Exhibit F.

developing miniature LED technology that met specification requirements of JA8.

Model Nos. 4G9D927/JA8 and 4G9D930/JA8 (“Accused Products”).

similar, but nearly identical – if not identical – to EmeryAllen’s Patented Products.

G9 JA8 Series Retrofit Lamp EmeryAllen’s Patented

Series Retrofit Lamp, Model 4G9D927/JA8) and additional information provided in

electronics assembly comprising a luminous efficiency of at least 45 lumens per watt.

- SUBSTANTIALLY LIGHT DIFFUSING