April’s photonics-related IP activities include 30 cases concerning various technologies, including cameras and imaging systems, lighting and light sources, bio & life sciences, sensing, optical communications, augmented and virtual reality (AR/VR), LiDAR, displays, solar cells, manufacturing, and semiconductor processing. Here are the summaries.
Cameras, imaging systems, and image processing
Patent Armory asserted its U.S. Patent No. 7,256,899 against Natus Medical Inc. on April 1 in the Western District of Wisconsin. The ‘899 patent covers a method of acquiring an approximation of the surface geometry of an object by projecting a pattern of structured light onto the object and forming an image of the intersection of the object and the structured light. Patent Armory has now asserted the patent against 10 different defendants.
On April 1, the PTAB refused to institute an IPR on U.S. Patent No. 8,095,237, which is owned by RoboticVISION Tech, Inc. The patent covers a method and apparatus for single image 3D-guided robotics. RoboticVISION had asserted the ‘237 patent against ABB Inc. in a patent infringement lawsuit filed in the District of Delaware in September 2022. ABB responded to the lawsuit with a petition for IPR, filed in September 2023, requesting the PTAB to review the validity of the claims. After considering submissions from both sides, the PTAB concluded there was not sufficient evidence to show that the claims were invalid.
On April 4, the CAFC upheld a lower court’s judgment that four medical imaging patents owned by AI Visualize Inc. are invalid. The patents cover a system for presenting 3D views assembled from 2D medical images obtained from, for example, CT or MRI scans. The claimed technical improvement was that the user’s computer, connected to the internet, did not have to store all the 2D images locally to produce a 3D image. AI Visualize asserted the patents in an infringement lawsuit against Nuance Communications Inc. shortly after Microsoft announced plans to buy Nuance for about $20 billion. The district court found that the claims of the patents were directed only to the abstract idea of converting information from one format to another, and that there was no technological advance in the computer systems in which the process was carried out and, as a result, the patents were invalid. The patents are U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397.
On April 9, the PTAB found that certain claims of U.S. Patent No. 10,225,479, owned by Corephotonics, Ltd., are invalid. The ‘479 patent relates to a dual aperture zoom digital camera. Corephotonics had originally sued Apple for infringement of the ‘479 patent, along with other digital camera patents, in 2019. Apple subsequently petitioned the PTAB for an IPR in 2020 to review the validity of certain claims of the ‘479. In 2021, the PTAB decided that the ‘479 patent was valid. Apple appealed that decision to the CAFC, who overturned the PTAB’s decision and remanded for retrial in 2023. In this most recent decision, the PTAB, using a claim construction ordered by the CAFC, found the claims of the ‘479 patent to be invalid.
On April 10, the PTAB found that some claims of U.S. Patent No. 8,144,184, owned by SB IP Holdings LLC, are invalid. The ‘184 patent covers an audio-visual communication system for use at a door that includes video and audio recordings of a person at the door that are accessible by a remote peripheral device. SB IP Holdings had sued Vivint Inc. in the Eastern District of Texas for infringement of the ‘184 patent and five others in 2021, and Vivint had asked the PTAB to review the validity of claims of the ‘184 patent along with claims of the other five patents in IPRs. The lawsuit is currently stayed, pending the outcome of the IPRs. So far, Vivint has successfully challenged the validity of claims in five of the patents. There is still one outstanding IPR still to be decided by the PTAB.
On April 25, Panasonic Entertainment & Communication Co. Ltd. sued Optimum Imaging Technologies LLC in the Northern District of California for infringement of four patents. The patents relate to electronically correcting a digital image, for example, to compensate for aberrations in the lens system used to produce the image. The patents are U.S. Patent Nos. 7,612,805; 8,451,339; 10,873,685; and 10,877,266.
On April 29, the CAFC partially reversed a lower court decision in a patent infringement litigation between Fullview, Inc., and Polycom, Inc. Fullview originally sued Polycom for infringement of U.S. Patent No. 6,128,143, which covers a panoramic viewing system that includes a polyhedral reflecting element whose surfaces reflect light into different cameras. The lower court, by way of summary judgment, found that Polycom infringed the patent and that the patent was not obvious. The CAFC affirmed the finding of infringement, but found there were sufficient questions of fact to reverse the summary judgement finding of non-obviousness. The CAFC remanded the case back to the lower court for proceedings to determine validity of the ‘143 patent.
VDPP, LLC continued to assert its image-processing patent portfolio on April 30, this time suing Maxwell Corporation of America in Federal Court in New Jersey. The lawsuit accused Maxwell of infringing U.S. Patent Nos. 9,948,922 and 10,951,881. VDPP has now asserted the ‘922 patent against 32 parties and the ‘881 patent against nine.
Lighting and light sources
On April 5, the Court of Appeals for the Federal Circuit (CAFC), the court that hears appeals for patent cases, upheld the decision by the Patent Trials and Appeal Board (PTAB) that U.S. Patent No. 7,315,119 is invalid. The ‘119 patent, owned by DSS Inc., covers a white-emitting LED that has a phosphor layer formed over the semiconductor die by evaporation of a volatile solvent from a slurry containing the phosphor particles. DSS originally asserted the ‘119 patent against Seoul Semiconductor Co. Ltd. in a patent infringement lawsuit filed in September 2019. In response, Seoul Semiconductor petitioned the PTAB to review the claims of the ‘119 patent for validity. The PTAB found all challenged claims to be invalid in November 2021. DSS appealed the PTAB’s decision, but the CAFC affirmed that the claims are invalid.
On April 17, Omni Continuum LLC sued NKT Photonics A/S and NKT Photonics Inc. in the District of Massachusetts for infringement of U.S. Patent Nos. 7,433,116 and 7,519,253. The patents respectively cover an infrared light source that includes a Raman shifter and a broadband mid-infrared light source.
Qorvo, Inc. has submitted a petition to the PTAB to institute an IPR against U.S. Patent No. 7,250,360, owned by the Cornell Research Foundation, Inc. The patent describes a single-step process for nucleation and subsequent epitaxial growth on a lattice mismatched substrate that is useful for the growth of gallium nitride (GaN) semiconductor devices.
On April 29, SemiLED Innovations LLC sued LSI Industries Inc. for patent infringement in the Southern District of Ohio. The patents cover LEDs and modules for automobile headlights. The patents are U.S. Patent Nos. 7,128,454; 8,309,971; 8,963,196; and 9,530,942.
Bio & life sciences
The ITC determined that various products imported into the U.S. by Gator Bio Inc. did not a infringe U.S. Patent No. 7,445,887, owned by Sartorious Bioanalytical Instruments, Inc. The patent relates to methods and systems used for bio-layer interferometry, a technique that allows for real-time, label-free analysis for the determination of kinetics, affinity, and antibody/protein quantitation. Sartorious originally sued Gator in the Northern District of California for infringement of four patents, including the ‘887 patent, in March 2022, and then followed up with the ITC action in October 2022. The litigation was stayed pending the outcome of the ITC action. Sartorious is contesting the ITC’s determination.
On April 16, Erchonia Corporation LLC sued Skinny Me America LLC in the Middle District of Florida for infringement of U.S. Patent Nos. 7,947,067 and 9,149,650. The ‘067 patent covers a laser therapy device that sweeps a relatively large beam spot over a patient’s body for low-level laser therapy (LLLT). The ‘650 patent covers a method of slimming a patient via LLLT using light having a wavelength shorter than 570 nm. Erchonia also sued Ohona MedSpas, LLC in the District of Hawaii on the same patents.
On April 19, the PTAB decided to institute IPRs for U.S. Patent Nos. 11,049,248 and 11,109,945, owned by Dental Monitoring SAS. The patents cover a method of analyzing an image of an orthodontic aligner. Dental Monitoring had sued Align Technology, Inc. for infringement of the two patents, along with five additional patents, in November 2022. Align Technology responded by filing the IPR petitions In October 2023. We expect the PTAB’s final written decision within 12 months.
On April 30, Biofrontera AG and other Biofrontera entities petitioned the PTAB to institute an IPR to review the validity of U.S. Patent No. 11,697,028, owned by DUSA Pharmaceuticals, Inc. The ‘028 patent covers an adjustable illuminator for photodynamic therapy and diagnosis. It is expected that the PTAB will decide whether to institute the IPR by the end of October this year.
Sensing
On April 11, the PTAB found that claims of U.S. Patent No. 11,131,794, owned by Viavi Solutions Inc., f/k/a/ JDS Uniphase Corporation, are invalid. The ‘794 patent covers a near-infrared passband filter, including hydrogenated silicon layers, described as being useful for gesture recognition systems. Viavi had sued Platinum Optics Tehcnology Inc. in August 2021 for infringement of four patents, including the ‘794 patent. In response, Platinum Optics petitioned for IPRs on the patents. This was the only IPR of the four IPRs filed to succeed in finding that patent claims were invalid.
On April 29, Iron Bird LLC sued Yuneec International Co. Ltd. for infringement of U.S. Patent No. 7,400,950 in the Eastern District of Texas. The ‘950 patent covers an optical sensing system that is used to stabilize machine-controllable vehicles, such as a remotely controlled drone.
As part of the ongoing dispute between Masimo Corporation and Apple Inc. over wearable biological sensors, Masimo petitioned the PTAB to review the validity of two claims of Apple’s U.S. Patent No. 10,076,257 in an IPR in October 2023. The ‘257 patent is directed to a heart rate monitor embedded within a device. On April 25, the PTAB denied institution of the IPR without addressing the merits of the arguments Masimo included in its petition. Instead, the PTAB used its discretion to deny the petition because it believed Masimo had improperly used arguments in an ongoing IPR, that addresses the remaining claims of the ‘257 patent, as a roadmap for producing the arguments in the new IPR.
On April 30, SiOnyx LLC sued Samsung Electronics Co. Ltd. and other Samsung entities in the Eastern District of Texas for infringement of six patents relating to the manufacture of pixelated sensors, as might be used in a cell-phone camera. More specifically, the patents cover the trapping of light within pixels to increase sensitivity and reduce crosstalk between adjacent pixels. The patents are U.S. Patent Nos. 9,064,764; 9,905,599; 10,224,359; 10,347,682; 11,069,737; and 11,721,714. On the same day, SiOnyx filed an ITC action against Samsung, based on five of the six patents.
Manufacturing
The Boeing Company petitioned the PTAB on April 1 to review the validity of U.S. Patent No. 7,487,684, owned by the University of California. The ‘684 patent covers a method and apparatus for generating stress waves for separating ultrathin films (less than about 0.5 μm) from a substrate for nanoelectronics device fabrication. Laser Spallation Technologies, LLC, exclusive licensee of the ‘684 patent, sued Boeing for infringement of the ‘684 patent in March 2023.
Lightguide, Inc. sued Arkite NV in the Northern District of New York on April 8 for infringement of U.S. Patent Nos. 7,515,981 and 9,658,614. The patents cover a system and method for providing optical guidance to an individual to take actions in a correct sequence; for example, an individual working on an assembly line.
On April 24, the PTAB agreed to institute an IPR of U.S. Patent No. 9,823,564, owned by Inpria Corporation. The patent covers inorganic layers and radiation-based patterning compositions used in semiconductor lithographic processing. Inpria originally sued Lam Research Corporation for infringement of the ‘564 patent, as well as several others, in October 2022. In response, Lam Research filed a petition for the IPR in October 2023. A final decision on the validity of the challenged claims is expected in April 2025.
Optical communications
CommScope Technologies, LLC sued Belden Inc. and two Belden entities, Opterna AM, Inc., and PPC Broadband, Inc., on April 1st in the District of Delaware for infringement of seven patents relating to optical fiber distribution and management. The patents are 7,200,317; 7,277,620; 7,515,805; 7,519,259; 10,078,192; RE44758; and RE48675. On April 8, CommScope sued the same defendants on another four patents that cover optical fiber cable spools. The patents in the second case are U.S. Patent Nos. 7,715,679; 10,606,017; 10,627,592; and 10,996,417.
On April 5, Iarnach Technologies Ltd. sued Charter Communications, Inc., Spectrum Gulf Coast LLC, and various affiliates, in the Eastern District of Texas for infringement of U.S. Patent Nos. 8,942,378 and 9,674,035. The patents cover the encryption of a multicast service in a passive optical network and seamless configuration update for an optical network unit.
Augmented reality/virtual reality (AR/VR)
The CAFC affirmed a decision from the PTAB on April 3, finding that a patent owned by D3D Technologies is invalid. Microsoft had petitioned the PTAB to institute the IPR for U.S. Patent No. 9,980,691, which covers a method of VR viewing three-dimensional views of an object. Microsoft sought the IPR after D3D Technologies had sued it for infringement of the ‘691 patent, along with four other patents, over Microsoft’s HoloLens AR headsets. The CAFC had previously affirmed the PTAB’s findings that another two of D3D Technologies’ patents are invalid.
On April 12, the PTAB decided in an IPR that Novorad Corporation’s U.S. Patent No. 10,945,807 was invalid except for one claim. The ‘807 patent covers a method for augmenting actual views of a patient with 3D data. The ’807 patent, along with another patent, was originally asserted by Novorad against Medivis Inc. in a patent lawsuit filed in October 2021. In October 2022, Medivis petitioned for the IPR in an attempt to prove the ‘807 patent was invalid. After hearing from both sides, the PTAB decided that all but one of the challenged claims in the ‘807 patent were invalid. The PTAB found that the other patent was valid in a decision back in March.
Displays
On April 22, Garmin, Ltd. and Zepp Health Corporation independently filed petitions at the PTAB for IPRs to review the validity of U.S. Patent No. 8,588,033, owned by Slyde Analytics LLC. The patent covers the electronic display of a watch that shows a simulation of a mechanical watch movement having a gear train and hands indicating the current time. Slyde previously sued Garmin and Zepp Health in independent lawsuits over infringement of the ‘033 patent, and both defendants responded with the IPR petitions. We can expect institution decisions from the PTAB sometime in October. The PTAB has already instituted an IPR against the ‘033 patent based on a petition filed by Samsung.
On April 25, the PTAB agreed to institute IPRs against U.S. Patent Nos. 7,872,705 and 8,330,710, owned by Brightplus Ventures LLC. Hisense-USA Corporation originally filed a lawsuit in the District of Georgia requesting the court to declare that its products do not infringe nine of Brightplus’s patents. Brightplus filed a counterclaim of infringement of the nine patents by Hisense. In response to the counterclaim, Hisense filed petitions for IPRs to review the validity of seven of the patents, all of which have now resulted in the PTAB instituting IPRs. It is expected that the PTAB will issue written decisions on the validity of the patents by the end of April 2025.
LiDAR
In the dispute between Ouster Inc. and Hesai Technology Co. Ltd. we first reported last month, the PTAB instituted IPRs against two more of Ouster’s patents, U.S. Patent Nos. 11,178,381 and 11,190,750. The patents cover an optical system for collecting distance information within a field of view and an optical imaging system with a plurality of sense channels. Ouster, Inc., had sued Hesai Technology Co., Ltd., for infringing five of its patents in the District Court of Delaware in April 2023. In response, Hesai petitioned the PTAB to review the validity of each of the patents in IPRs. The PTAB has decided to go forward with IPRs on four of the patents. Final decisions on all of the IPRs are expected by April 1, 2025.
Solar cells
On April 19, Maxeon Solar Pte. Ltd. sued REC Solar Holdings AS and Hanwha Energy Corporation separately in the Eastern District of Texas for infringement of three patents. The patents describe improvements in solar cell technology, including front-contact solar cells and increased efficiency. The patents are U.S. Patent Nos. 8,222,516; 8,878,053; and 11,251,315.
This article is the author’s opinion, not that of Laser Focus World or Carlson Caspers. The information presented here should not be relied upon as legal advice.
