Fives Investments v. Nanoleaf Canada: Smart Lighting Patent Dismissed With Prejudice
Fives Investments, LLC asserted US9148938B2 — a patent covering smart multi-dimensional light cell arrangements — against Nanoleaf Canada Limited in the Southern District of California. The parties jointly stipulated to dismiss all claims with prejudice after 213 days, each bearing their own costs and attorneys’ fees.
Smart Lighting Patent Dispute Ends in Bilateral Walk-Away
On 6 November 2023, Fives Investments, LLC filed an infringement action against Nanoleaf Canada Limited in the U.S. District Court for the Southern District of California, asserting US9148938B2, a patent directed to smart multi-dimensional light cell arrangements. Nanoleaf Canada, a well-known maker of modular LED lighting panels, was identified as the accused infringer, with Does 1–10 named as additional defendants. Nanoleaf filed counterclaims, making both parties simultaneously plaintiff and defendant.
The case closed on 6 June 2024 via a joint stipulation for dismissal with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii). Crucially, the order specifies that each party shall bear their own costs and attorneys’ fees — a mutual cost-neutral exit. Dismissal with prejudice means Fives Investments is permanently barred from reasserting the same claims against Nanoleaf Canada on these patents, and Nanoleaf’s counterclaims are equally extinguished.
The 213-day resolution suggests the parties reached an accommodation — most likely a confidential settlement or cross-license — before any substantive merits ruling. The mutual cost-bearing provision is consistent with a negotiated resolution rather than a capitulation by either side. What remains unknown from the public record is whether any licensing terms, royalties, or design-around commitments were exchanged as part of the underlying agreement that prompted the stipulation.
Filing to Dismissed with Prejudice in 213 days
213 days from filing to dismissal — shorter than the median patent case lifespan in S.D. Cal.
Dismissed with prejudice: what the joint stipulation means for both parties
Rule 41(a)(1)(A)(ii): voluntary dismissal by joint stipulation
Under Fed. R. Civ. P. 41(a)(1)(A)(ii), parties may dismiss an action without a court order by filing a signed stipulation. Choosing ‘with prejudice’ goes beyond the rule’s default — it permanently forecloses Fives Investments from re-litigating the same patent claims against Nanoleaf Canada. This mutual election strongly suggests an underlying agreement was reached between the parties.
Permanent bar on re-filingFives Investments permanently relinquishes these claims
By agreeing to dismissal with prejudice, Fives Investments surrenders any future right to assert US9148938B2 against Nanoleaf Canada on the accused products. This is a significant concession for a patent holder. However, the cost-neutral structure and the voluntary nature of the stipulation suggest Fives may have received consideration — potentially a license or lump-sum payment — outside the court record.
Claims extinguished with prejudiceNanoleaf’s counterclaims also dismissed — bilateral clean exit
Nanoleaf Canada’s counterclaims are equally dismissed with prejudice under the same stipulation. Nanoleaf avoids any adverse merits ruling and exits without a cost liability. The absence of fee-shifting is particularly notable — an ‘exceptional case’ finding under 35 U.S.C. § 285 was never pursued or awarded, leaving Nanoleaf’s litigation conduct record clean.
No fee-shifting; counterclaims goneConfidential resolution likely; patent remains enforceable against others
The with-prejudice dismissal binds only this plaintiff-defendant pair. US9148938B2 remains an active, enforceable patent that Fives Investments could assert against other smart lighting manufacturers. Competitors in the modular LED and connected lighting space should note that this outcome does not invalidate or limit the patent’s claims — it merely ends this specific dispute.
Patent still live vs. third partiesFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Fives Investments, LLC | Company | Smart lighting IP holding entity — holder of US9148938B2 covering multi-dimensional light cell arraysSearch in Eureka ↗ |
| Defendant | Nanoleaf Canada Limited | Individual | Nanoleaf Canada Limited — modular LED lighting panel manufacturer and smart home lighting brandSearch in Eureka ↗ |
| Co-Defendant | Does 1-10 | Individual | Search in Eureka ↗ |
| Plaintiff counsel | Ben T. Lila | Attorney | Counsel for Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | David R. Flyer | Attorney | Counsel for Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Gordon E. Gray | Attorney | Counsel for Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Joseph A Mandour , III | Attorney | Counsel for Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Raquel Flyer | Attorney | Counsel for Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Flyer & Flyer, A Professional Law Corporation | Law Firm | Representing Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Gray Law Firm | Law Firm | Representing Fives Investments, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Mandour & Associates, APC | Law Firm | Representing Fives Investments, LLCSearch in Eureka ↗ |
| Defendant counsel | Katherine G. Connolly | Attorney | Counsel for Nanoleaf Canada LimitedSearch in Eureka ↗ |
| Defendant counsel | Robert Greeson | Attorney | Counsel for Nanoleaf Canada LimitedSearch in Eureka ↗ |
| Defendant counsel | Vlada A. Wendel | Attorney | Counsel for Nanoleaf Canada LimitedSearch in Eureka ↗ |
| Defendant law firm | Norton Rose Fulbright LLP | Law Firm | Representing Nanoleaf Canada LimitedSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | California Southern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulated dismissal language — ‘dismiss all claims in the above-captioned action with prejudice’ with each party bearing its own costs — is precise and bilateral. The with-prejudice designation is a deliberate mutual choice, not a court-imposed sanction, and signals that both Fives Investments and Nanoleaf Canada elected finality. No merits adjudication occurred, meaning claim validity and infringement were never litigated to judgment. The absence of fee-shifting under 35 U.S.C. § 285 is consistent with neither party seeking an ‘exceptional case’ finding.
US9148938B2 — Smart Multi-Dimensional Light Cell Arrangement
US9148938B2 (application number US14/287091) claims inventions directed to smart multi-dimensional light cell arrangements — a technology category that encompasses modular, addressable LED panels capable of networked configuration and intelligent control. The patent falls within the connected lighting and smart home technology domain, an area of rapid commercial development throughout the 2010s. The application date context places it squarely in the early growth phase of consumer smart lighting, before the market matured.
The strategic significance of US9148938B2 lies in its potential claim coverage over modular LED systems that allow users to configure and control light panels in multi-dimensional arrays — a core feature of products like Nanoleaf’s signature light panel lines. For competitors and OEMs operating in connected lighting, smart home illumination, or IoT-enabled LED products, this patent represents a meaningful FTO consideration. The case’s resolution without invalidation means the patent’s claims remain unchallenged on the merits.
Should your team run an FTO against US9148938B2?
Any company developing or commercialising modular LED panels, smart light tile systems, addressable lighting arrays, or connected home lighting products should evaluate exposure to US9148938B2. The patent survived this litigation without a validity or non-infringement ruling — meaning its claims are untested in court. R&D teams designing multi-dimensional light cell configurations or mesh-networked lighting controllers should treat this as a live risk in their FTO landscape.
PatSnap Eureka’s FTO Search Agent can map the full claim scope of US9148938B2 against your product specifications, identify any continuation applications filed from US14/287091, and surface prior art that could support an invalidity argument if licensing or IPR proceedings become necessary. Eureka’s patent family analysis also helps pinpoint whether related applications extend this patent’s reach into adjacent smart lighting technologies.
Run a freedom-to-operate analysis on US9148938B2 to assess your product’s exposure
Run FTO in Eureka →Similar Smart Lighting & Connected LED Patent Cases in U.S. District Courts
Explore comparable patent infringement cases involving smart lighting, modular LED technology, and connected home devices litigated in U.S. district courts, including S.D. California.
What this case signals for the smart lighting IP landscape
A 213-day with-prejudice dismissal in a modular LED patent dispute carries specific strategic signals for IP teams across connected lighting.
With-prejudice exits do not kill the patent — monitor US9148938B2
The dismissal extinguishes claims only between Fives Investments and Nanoleaf Canada. US9148938B2 remains fully enforceable. Smart lighting manufacturers and connected home device makers should treat this patent as an active assertion risk and monitor its status and any continuation filings.
Mutual cost-bearing is a hallmark of confidential settlement
When both parties elect to bear their own fees in a with-prejudice dismissal, it typically signals a negotiated resolution — not a unilateral capitulation. IP counsel should consider whether undisclosed licensing terms or design-around commitments may affect competitive dynamics in the modular LED lighting market.
Fives v Nanoleaf — key questions answered
The case was dismissed with prejudice by joint stipulation under Fed. R. Civ. P. 41(a)(1)(A)(ii) on 6 June 2024, approximately 213 days after filing. Each party agreed to bear its own costs and attorneys’ fees. No merits ruling on patent validity or infringement was issued.
Fives Investments asserted US9148938B2, filed under application number US14/287091, which covers smart multi-dimensional light cell arrangements. The accused products relate to Nanoleaf Canada’s connected LED lighting products in that technology category.
No. Dismissal with prejudice means only that Fives Investments cannot re-assert these specific claims against Nanoleaf Canada. The patent itself remains valid and enforceable against third parties. No court ruled on the merits of infringement or validity in this case.
When both parties in a with-prejudice dismissal agree to bear their own costs and fees, it typically suggests a negotiated settlement rather than a unilateral capitulation. The terms of any underlying agreement — such as a license, royalty, or design-around commitment — are not disclosed in the public court record.
The case was filed in the U.S. District Court for the Southern District of California. This district has become an active forum for consumer electronics and connected device IP disputes. The 213-day resolution before any substantive ruling suggests early settlement pressure may be a characteristic of this venue for smart lighting patent cases.
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