by Tom Butters February 18, 2022 Edisonreport.com
David Radulescu, Ph.D., Founder and Partner of Radulescu LLP, an elite patent litigation boutique firm based in New York City, delivered a comprehensive webinar on the state of the playing field for solid-state lighting and patent litigation on February 16, 2022. The field of play more closely resembles liquefaction than the frozen tundra of Lambeau Field.
David Radulescu has for many years spoken on patent issues facing the LED lighting industry during 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. Because of the postponement of LightFair 2020 and other industry conferences due to COVID-19, Dr. Radulescu and his firm have moved the annual talk online.
The webinar was neatly packaged into 5 segments:
Recent Trends in U.S. Patent Litigation in the LED Industry
The LED Patent Litigation Landscape
Update on the Signify EnabLED Licensing Program
Status of other LED Licensing programs
Dr. Radulescu first reviewed trends in LED patents and patent litigation in the United States.
After hitting another 10-year high in 2020, U.S. patent grants declined by 7.5% in 2021. 2021 saw a decrease in grants from U.S. and Japanese inventors, and an increase in grants to Chinese inventors. LED patent grants are down for the second year in a row from an all-time high in 2019 for the first time since 1983. Patent issuance in the U.S. was slightly down in 2021. This is contributed to by the fact that the top three countries who have ownership of U.S. Patents dropped, as with most of the Top 10, with the only country seeing an increase in 2021 from 2020 being China, who is presently 4th and close to overtaking South Korea for 3rd but far back from #1 U.S.A. and # 2 Japan.
Most of the LED patent assignees in 2021 rest in the display/mobile device realm including top-of-the-heap Samsung with 350 patents. While most of the patents were assigned to firms more closely aligned to displays, tablets, and smartphones, there were a number of lighting companies granted patents in 2021 including, LumiLeds, Seoul Semi, Signify, Osram, Cree, Ideal, Hubbell, LEDVANCE and Ecosense. Of those companies, LumiLeds had the greatest increase from 2020 at 144% with Seoul Semi and Cree at second and third place (+73 and +26%), respectively. Osram, Signify and LEDVANCE had percentage drops from 42-33%.
Overall, U.S. patent litigation activity was down slightly from 2020, with 3716 cases filed in 2021 compared to 3739 cases in 2020. 2021 saw the continued shift of cases to the Western District of Texas, with the District of Delaware at number two, and the Eastern District of Texas in third for most popular district court forums. At the PTAB, IPR institution rates climbed slightly to 59% in 2021.
An IPR (inter partes review) is a procedure for challenging the validity of a U.S. patent before the United States Patent and Trademark Office. They have a standard life cycle, which Dr. Radulescu reviewed. 12% of the IPRs are settled out of court within 6 months. By 6 months, 41% are denied and 59% are instituted and move on to trial. Most are resolved by 18 months, with 20% being settled between the parties.
Dr. Radulescu then provided a jaw-dropping deep dive into patent lawsuits currently still active and those settled in one way or another over the last 5 years. Of the 67 LED patent infringement suits initiated in 2018 only 5 are still active. In 2019 the numbers are 76/6, in 2020 92/23 and from 2021 81/50. Notable suits in 2021 include suits brought by Philips/Signify, CAO Lighting, and Kortek Industries, and a number of suits brought by companies looking to license their portfolios, and non-practicing entities.
Over the past five years, Signify/Philips’ EnabLED Campaign has continued with the company bringing five suits in 2019 and three in 2021. Signify continued to litigate against one of the ITC respondents it took to trial in 2018, Satco, in a suit in the Eastern District of New York, asserting seven patents (4 old, 3 new). However, that action (and a countersuit brought by Satco) recently concluded. Dr. Radulescu also analyzed the patents that Signify is asserting in its more recent suits and reviewed the recent statistics on the EnabLED licensing program.
Dr. Radulescu reviewed other notable licensing program campaigns, including Lynk Labs, CAO Lighting, UC Santa Barbara, and Lighting Science Group. After bringing suit against Samsung and Home Depot in the Western District of Texas, Lynk Labs is now litigating in two different forums, as the cases were transferred out of Texas. Together, Home Depot and Samsung filed 23 IPRs, the first two of which were just instituted. In the last year, CAO Lighting expanded its campaign, filing new suits against Topaz, Signify, and Cree, and is currently litigating in Delaware, California, and North Carolina. Dr. Radulescu also reviewed UC Santa Barbara’s and LSG’s recent ITC investigations, which concluded in a finding of no violation by the ALJ. By coincidence, the full ITC issued its opinion on the UC Santa Barbara investigation the day of the webinar, adopting the ALJ’s initial determination of no violation. Dr. Radulescu further provided a review of current non-practicing entity campaigns brought by Bench Walk, Heavy Duty Lighting, LedComm, and LED Wafer Solutions.
Basically, every leader in the LED marketplace is involved in a patent infringement case presently or over the past 5 years. If your head is spinning, let me assure you, you are not alone.
Finally, Dr. Radulescu discussed two case studies of recent cases litigated by Radulescu LLP. In the first, Vaxcel v. HeathCo, Dr. Radulescu discussed how the Radulescu team convinced the court to require claim narrowing after the plaintiff expanded the case to 11 patents and over 160 claims, and how the team had effectively reduced the scope of the case through targeted claim construction disputes (including invalidating 6 of 11 patents in the process, i.e. over 60% of the asserted claims). In the second, Dr. Radulescu discussed how the firm helped its client WAC Lighting enforce its patents in the ITC against three competitors, resulting in all three companies agreeing to stop selling/importing the accused products. This investigation was the only successful ITC enforcement of LED patents directed to residential lights/fixtures in the last 5 years.
There are so many moving pieces and players, it is impossible to keep score without the help of programs like Dr. Radulescu’s webinar.
For more information on the presentation feel free to contact Radulescu LLP.
Lighting Industry Update: Super Lighting’s TLED Patent Licensing Program in Jeopardy; Radulescu LLP: The Patents Were Obtained Through Misconduct and Fraud
by Randy Reid, May 19, 2021, Edisonreport.com
Radulescu LLP (“Radulescu”) announces an update on the patent litigation between Jiaxing Super Lighting Electric Appliance Co., Ltd. (“Super Lighting”), on the one hand, and CH Lighting Technology Co., Ltd. (“CH Lighting”) and Shaoxing Ruising Lighting Co. Ltd. (“Ruising”), on the other. Today, the US District Court for the Western District of Texas ruled in Radulescu’s favor agreeing to allow its clients CH Lighting and Ruising to add new defenses and counterclaims against Super Lighting alleging patent invalidity and unenforceability based on misconduct and fraud.
As background, for the past few years Super Lighting, one of the leaders in the TLED market, has boasted about the size of its patent portfolio and has been approaching lighting companies across the US requesting licensing fees for the sale of T8, T5 and other LED-based tube lamps (“TLEDs”). With no success in establishing a licensing program, Super Lighting turned to the US Courts and filed a pair of lawsuits.
The first suit was filed against MaxLite in May 2019 in Los Angeles and alleged infringement of six patents based on its sale of TLEDs manufactured by CH Lighting and distributed by Ruising. The second suit was filed directly against CH Lighting and Ruising in Jan 2020 in Texas and alleged infringement of eight more patents by the distribution and sale of CH Lighting’s TLED products. Radulescu was engaged to defend CH Lighting, Ruising, and MaxLite in these cases, as well as several other US-based lighting companies selling TLED products manufactured by CH Lighting in China.
Based on Radulescu’s extensive experience in the LED industry, it was able to uncover competitor TLEDs that it argued invalidated many of the claims in Super Lighting’s fourteen patents asserted across both cases. These TLEDs were sold by early TLED players such as Philips and Cree. This experience also led Radulescu to develop a unique defense. Because of subtle similarities between the patented designs and some of these prior art products (including down to component values for resistors), Radulescu suspected the prior art products were used by Super Lighting to improperly draft and file its patent applications with false inventor declarations. Although the key documents were buried among thousands of pages of other technical documents (all in Chinese), Radulescu was able to piece together evidence to argue that “Super Lighting had a practice of reverse engineering other companies’ LED tube products and presented those designs as its own inventions in patent applications.” In some cases, Radulescu argued that “no evidence exists to show that any named inventor had conception of the claimed inventions at issue prior to discovering the technology in competitor products.” This included Super Lighting’s CEO, who is named as an inventor on more than half of the asserted patents. Radulescu argued the illegal copying-and-patenting practice was so pervasive that it infected all eight patents asserted in the Texas case. Although the documentation is confidential pursuant to Court rules, there are enough details revealed in public filings to understand what Radulescu argued to the Court. Below are some of the more revealing allegations in the public filings, with the following probably summing it up best:
“Super Lighting’s “documents evidence an egregious copying-and-patenting effort that centered on analyzing other companies’ products and filing patent applications covering their technology…Claiming as their own the technologies of others is, of course, unlawful, and Super Lighting’s patents should be deemed unenforceable as a consequence.”
Here are the other allegations in the public filings that are important for US-based lighting companies to understand if they too are the subject of Super Lighting’s unreasonable patent licensing demands:
“Defendants’ proposed amendments will also have important, far-reaching effects beyond this litigation, because Super Lighting boasts about having one of the largest patent portfolios among Chinese LED manufacturers and has engaged in an enforcement campaign against multiple companies across the United States. Prior to this lawsuit, Plaintiffs filed another action…asserting patents related to the ones at issue here…Super Lighting has sent over 100 licensing letters to numerous lighting companies in the U.S. and has used the threat of patent infringement lawsuits in attempt to pressure those companies into buying Super Lighting’s products.”
“Adjudication of Super Lighting’s unclean hands and inequitable conduct is important to reinforce the duty of candor before the Patent Office and the good faith of litigants before this Court. These claims also serve to preserve the business interests of the numerous enforcement targets, many of which are domestic companies and family-owned businesses…It is important for companies accused of infringement to know if the patents offered for license are in fact someone else’s inventions or were obtained through fraud or misrepresentations to the Patent Office.”
“These specific allegations lay out when Super Lighting first reverse engineered which prior art product, how each product was copied into which Super Lighting patent application, who at which department owed and breached the duty of candor to the PTO, and why each product would have been material prior art for the asserted patents, and are therefore more than sufficient to meet Rule 9(b)’s heightened pleading standard for claims of inequitable conduct.”
* * *
The Texas Court granted Radulescu’s request today to allow the new defenses and counterclaims to be included in the lawsuit. Further details of the defenses implicated by Super Lighting’s alleged misconduct are expected to be revealed in the coming weeks when a public version of the 175+ page Amended Answer and Counterclaim is filed on the Court’s docket. Of course, these are all just allegations that need to be proven at trial (scheduled for the end of the year) and, to be clear, Super Lighting has not conceded any of the allegations.
Radulescu LLP to Host Webinar on Patent Issues in Germicidal UV LED Lighting
By Randy Reid, November 4, 2020, Edisonreport.com
Germicidal UV Lighting Patents: Are You Protected?
Germicidal UV lighting has become an area of great interest due to the coronavirus pandemic and will likely remain a sought-after technology for years to come. While there is a lot of information about product offerings, there is a lack of accessible information on the germicidal UV lighting patent landscape.
As readers of EdisonReport know, this past October, Radulescu LLP hosted a webinar on the continued importance of patents to the LED lighting industry. Given the recent heightened importance of disinfection technologies, Radulescu LLP will host a webinar on December 8, 2020, to discuss the germicidal UV lighting space with a particular focus on the patent landscape. Companies offering germicidal UV lighting are beginning to highlight their “patent protected” technologies, but it is often not clear what these patents are and what they are protecting. This webinar is intended to shine a light on this otherwise opaque aspect of the industry.
The webinar will cover the patent landscape and product offerings of companies such as GE Current, Acuity, Signify, Leviton, Honeywell, Applied UV, Axis Lighting, SteriLumen, Violet Defense, Puro Lighting, Dimer and Juganu.
The webinar will include the following topics:
1. Introduction to UV, UV-A vs. UV-C, and the Science (Does it Really Work?)
2. Commercial Germicidal UV Lighting Products
3. Germicidal UV Lighting Patent Landscape: Who, What, and How Many?
4. Relevant Patent Litigations and Prior Art
Excerpts of the slides can be viewed here.
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.