Radulescu’s Webinar Last Week Focused on Patent Issues Facing the Lighting Industry
by Randy Reid October 5, 2020. For the past four years running, David Radulescu, Ph.D., has spoken on patent issues facing the LED lighting industry during the week of LightFair. These privately-hosted meetings have been well attended by LED lighting companies interested in learning more about the increasing threat of patent litigation to their businesses. Last Thursday, your humble editor sat in his most recent webinar. Dr. Radulescu discussed developments in IP litigation over the past year.
U.S. patent grants hit a 10-year high in 2019, with LED patent grants in 2020 projected to be near the level of 2019. In terms of LED patent assignees in 2019, Signify, Seoul Semiconductor, Ideal Industries Lighting, and Lumileds ranked at the top. Overall, U.S. patent litigation activity is up this year, with a projected 3,800 cases compared to 3,347 in 2019. 2019 to 2020 saw a shift in the top venue for patent disputes from the District of Delaware to the Western District of Texas. At the PTAB, IPR institution rates continue to drop to a projected all-time low of 55% in 2020.
Dr. Radulescu spoke about the LED patent litigation landscape: Who Is Suing and Who Is Being Sued. 2020 is projected to see 68 infringement suits, compared to 76 in 2019. Notable suits in 2019 and 2020 include an ITC investigation brought by Lighting Science Group against lighting and LED chip manufacturers, two ITC investigations brought by UC Santa Barbara, suits brought by Philips/Signify, and a number of suits brought by companies looking to license their portfolios, and non-practicing entities.
Over the past three years, Signify/Philips’ EnabLED Campaign has continued with the company bringing four suits in 2019, two of which are still active. These come on the heels of Signify’s 2017 ITC investigation, which originally asserted five patents against seven respondents. A hearing was held in August 2018 on three patents against three respondents (the rest of the respondents had either settled or defaulted), with the administrative law judge finding a violation with respect to one patent in a December 2018 ruling. However, the full ITC reversed that finding last July, holding that Signify failed to prove that the accused products were representative and failed to prove infringement. Signify appealed to the Federal Circuit but then dismissed that appeal in October 2019. Notably, Signify continues to litigate against one of the respondents it took to trial, Satco, in a suit in the Eastern District of New York, asserting seven patents (4 old, 3 new).
Dr. Radulescu reviewed other notable licensing program campaigns, including Lighting Science Group (LSG), CAO Lighting, Lynk Labs, TOGGLED/iLumisys, and UC Santa Barbara. LSG’s ITC investigation was split into three investigations, two of which were withdrawn by LSG one of which went to trial in March 2020. The administrative law judge found no violation of the two remaining asserted patents covering LED chips, and the full ITC affirmed that decision on October 1. CAO Lighting filed a recent spate of suits against GE, OSRAM/LEDVANCE, and Feit directed to LED bulbs that is currently pending in Delaware and California. Another notable case was successive ITC investigations brought by UC Santa Barbara who asserted patents directed to filament LED bulbs against several retailers. After withdrawing the first investigation, UC Santa Barbara recently filed a second investigation in August 2020 against IKEA, GE Lighting, Feit, Satco, and Home Depot, with 2 patents from the first investigation and 3 new patents. Dr. Radulescu then provided a review of current non-practicing entity campaigns brought by Bench Walk, Heavy Duty Lighting, LedComm, and Lexington Luminance.
Dr. Radulescu ended the webinar with a discussion of how Covid-19 has impacted patent litigation. Overall, the number of new cases filed has not been impacted and judges have been moving cases along through discovery. Access to physical court buildings has been limited, hearings and motion arguments are being held telephonically or over Zoom. Jury trials were initially delayed, but are now being held either live or remotely. And the need for in-person depositions is fundamentally changing given the ease and convenience of taking depositions over Zoom.
RadIP Breaks Intel’s Winning Streak Before PTAB in Securing Denial of IPR Institution on Behalf of the Institute of Microelectronics, Chinese Academy of Sciences (IMECAS)
April 2, 2019. RadIP is thrilled to announce that it has broken Intel’s winning streak of 37 straight IPR institution victories before the PTAB (USPTO) this year. We are even more thrilled for our client, Institute of Microelectronics, Chinese Academy of Sciences (IMECAS), who has made substantial investment into patenting important integrated circuit advancements. A copy of the PTAB’s decision can be found here.
Sometimes engaging specialists from boutique law firms that can exploit holes in an IPR petition carries the day against Big Law. This is not the first time we defeated Big Law in convincing the PTAB to deny institution of a client’s IPR. If a major IPR has been filed against your patent, and you are evaluating who is in the best position to help defeat a worthy adversary, feel free to reach out to us.
RadIP Secures Federal Circuit Appellate Win Against Philips Lighting on Behalf of WAC Lighting
April 20, 2018. RadIP secured an appellate win at the Federal Circuit affirming the Patent Trial and Appeal Board’s prior determination that all petitioned claims of Philips’ U.S. Patent No. 6,013,988 were invalid. In its Opinion, the Federal Circuit rejected Philips’ arguments that a skilled artisan would not have been motivated to combine the prior art or have had a reasonable expectation of success in doing so.
The Federal Circuit rejected Philips’ argument that the PTAB relied on a “broad notion of ‘design choice’” but instead “insisted on reviewing the context-specific evidence for the soundness of that rationale in the particular circumstances of this review.” Opinion at 8. The Federal Circuit affirmed the PTAB’s determination that changing the order of the components “was an obvious matter of design choice because the two designs were known in the art, recognized as solutions to the particular problem, and functionally equivalent.” Id. at 9. The Federal Circuit further rejected Philips’ argument that an identification of a specific “affirmative reason” to make this obvious design choice, finding that Philips was “demanding too much,” as the findings were enough for a skilled artisan to choose either of two possible arrangements of familiar circuit elements. Id. at 10-11.
EdisonReport reported on RadIP’s win here.
RadIP Victory Strengthens Privacy Protections for Litigation Funding Arrangements
February 1, 2018. RadIP obtained a significant victory on behalf of its client Lambeth Magnetic Structures (“LMS”) in the Western District of Pennsylvania, and for the protection of litigation funding information, following Judge Cathy Bissoon’s denial of Defendants Seagate and Western Digital’s motion to compel LMS’s pre-suit communications with litigation funding organizations. In her decision—which is notably heavily redacted to reflect the protections the firm secured for its client—Judge Bissoon found all of the information sought by Seagate and Western Digital protected by the work-product privilege in anticipation of litigation. Judge Bissoon rejected the Defendants’ arguments in finding that even if litigation funding arrangements were non-legal in nature, “the materials would nonetheless fall within work-product immunity because they were communications with Plaintiff’s agents and in anticipation of litigation.”
As noted by Reuters, defendants often push for disclosure of litigation funding details, but RadIP’s victory puts an arrow in the quiver for plaintiffs fighting to protect these details as privileged.