Lighting, light sources, cameras, and imaging technology lead this month’s Photonics IP Update
Photonics IP Update offers a monthly brief of intellectual property-related legal activities in the U.S. photonics community. Designed to inform scientists, engineers, entrepreneurs, and business leaders, the series highlights the competitive technologies of interest not only in the marketplace but also in the courtroom, providing insight into the strategies of major and emerging players in various technology arenas and offering tips about the IP considered vital to protect.
Written by a U.S.-based IP attorney, the series covers the primary areas of IP, including trademarks, copyrights, and trade secrets.
May’s photonics-related IP activities include 35 cases concerning various technologies, including lighting and light sources, cameras and imaging systems, optical communications, augmented and virtual reality (AR/VR), displays, bio and life sciences, and solar cells. Here are the summaries.
Lighting and light sources
On May 6th, Feit Electric Company sued Elong International USA, Inc. and Xiamen Longstar Lighting Co. Ltd. in the Northern District of Texas for infringement of U.S. Patent No. 8,604,678. The ‘678 patent claims cover a wavelength conversion component for a light-emitting device, such as an LED, that includes a wavelength conversion layer and a diffusing layer.
Samsung Display Co., Ltd. filed a petition with the Patent Trial and Appeal Board (PTAB) on May 7th to review the validity of U.S. Patent No. 8,314,547, owned by Pictiva Displays International. The ‘547 patent covers an organic light-emitting diode (OLED) integrated with a wavelength conversion layer and a filter layer. The PTAB will make a decision on instituting the Inter Partes Review (IPR) by early November 2024.
On May 9th, Tektite Industries, Inc. sued Sirius Signal, LLC for infringement of U.S. Patent No. 10,227,114 in the District of New Jersey. The ‘114 patent relates to a floatable visual distress signal that uses an LED and a lens/reflector system that distributes the light to form a 360° pattern around the device.
The PTAB refused to institute an IPR against U.S. Patent No. 10,299,336, owned by Signify Holdings BV. The ‘336 patent covers a luminaire that includes a remote switch to control the correlated color temperature output by the luminaire. Signify had sued retailer Menard Inc. for infringement of six patents, including the ‘336 patent. Menard then sued supplier Luminex International Company, Ltd. in a Third-Party Complaint to cover any damages for which Menard might be liable. Luminex subsequently filed the petition for IPR on the ‘336 patent. The PTAB denied the petition because more than one year had elapsed between Menard, whom they considered to be a party-in-interest to the IPR, being served with the original infringement complaint and the petition being filed.
On May 13th, FKA Distributing Co. LLC sued GuruNanda LLC in the Central District of California for infringement of U.S. Patent Nos. 7,303,300 and 7,652,436. The patents cover methods and systems for illuminating household products.
Seoul Semiconductor Co. Ltd. and Seoul Viosys Co. Ltd. sued Technical Consumer Products Inc. in the District of Delaware for infringement of 10 patents. The patents relate to LED illumination devices. They are U.S. Patent Nos. 7,982,207; 8,604,496; 8,659,050; 9,147,821; 9,799,800; 9,929,314; 10,134,967; 10,510,933; and 11,721,675.
Seoul Viosys Co. Ltd. also sued Feit Electric Company, Inc. on May 21st in the Central District of California for infringement of six LED device patents. The patents are U.S. Patent Nos. 7,982,207; 9,269,871; 9,837,387; 9,929,314; 10,163,975; and 11,879,602, and cover issues from LED packaging to an LED module for plant cultivation.
On May 15th, Wangs Alliance Corporation sued Minka Lighting LLC in the Eastern District of Virginia for infringement of four patents. They relate to LEDs and LED packages that are claimed to have increased reliability. The patents are U.S. Patent Nos. 8,791,494; 9,076,930; 9,837,581; and 10,833,226.
On May 20th, the PTAB instituted an IPR for U.S. Patent No. 8,884,546, owned by Semisilicon Technology Corp. The petition for the IPR was filed by Xu Peicheng (Hong Kong) Optoelectronic Technology Co. Limited, alleging that the claims of the ‘546 patent are obvious. The ‘546 patent describes a control circuit for driving an LED curtain lamp that uses a master control unit and slave control unit. A decision in this case is expected from the PTAB in May 2025.
On May 27th, Chengdu Ruihan Yongtai Co., Ltd. d/b/a/ Mooyran US and others filed a declaratory judgment action against Aaron Chien and others in the Central District of California. The complaint requested the court to find claims of U.S. Patent No. 9,719,654 invalid. The ‘654 patent describes a LED/laser projector for projecting a fixed image on, for example, a wall or ceiling.
On May 30th, SemiLED Innovations LLC sued Visual Comfort of America LLC in the Western District of Texas for infringement of four patents relating to LED packaging and LED automobile headlights. The patents are U.S. Patent Nos. 7,128,454; 8,309,971; 8,963,196; and 9,530,942.
Signify Holding BV (f/k/a Philips Lighting Holding BV) sued Keystone Technologies LLC in the Northern District of Georgia on May 31st for the infringement of eight patents relating to LED lighting systems. The patents cover configurable systems, recessed LED light fixtures, and a driver circuit for an LED system. The patents are: U.S. Patent Nos. 8,063,577; 8,070,328; 8,272,756; 9,351,357; 9,709,253; 9,820,350; 10,117,300; and 10,506,682.
Cameras, imaging systems, and image processing
On May 17th, C47 Technologies LLC sued Samsung Electronics America, Inc. and Samsung Electronics Co. Ltd. in the Eastern District of Texas for infringement of U.S. Patent No. 10,984,605. The ‘605 patent describes a camara system that merges data from two cameras to form a virtual image from a point that is different from the positions of the two cameras.
On May 16th, a judge in the Northern District of California found two patents asserted by Dental Monitoring SAS against Align Technology, Inc. are invalid in a summary judgement. The judge determined that the claims cover collecting, analyzing, and displaying data, which are abstract processes not eligible for patent coverage. The patents, U.S. Patent Nos. 10,755,409 and 11,049,248, are directed to the acquisition of images of a patient’s dental arch to analyze the progress of an aligner using AI.
On May 20th, Sony Corporation filed separate petitions for IPRs on three digital camera patents owned by Optimum Imaging Technologies LLC. The patents describe methods of digitally applying filtering, such as color or soft focus, to the image, and correcting for lens aberrations. The patents are U.S. Patent Nos. 7,612,805; 8,451,339; and 10,873,685. Optimum Imaging Technologies sued Sony for infringement of the patents in October 2023.
On May 21th, Patent Armory sued Align Technology, Inc. in the District of Delaware for infringement of U.S. Patent No. 7,256,899. 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 13 different defendants.
On May 29th, Google LLC and various Samsung entities submitted a petition to the PTAB to institute an IPR against U.S. Patent No. 8,982,109, owned by EyesMatch Ltd. The ‘109 patent describes a system that includes a monitor, a camera, and a processor for displaying an image that mimics an image that would be formed by a mirror. The PTAB will make an IPR institution decision by the end of November 2024.
On May 29th, IKEA Supply AG submitted a petition to the PTAB to institute an IPR against U.S. Patent No. 9,640,733, owned by Everlight Electronics Co. Ltd. The ‘733 patent claims an improved technique for mounting an LED die to a carrier. IKEA followed up on May 31st with another IPR petition for U.S. Patent No. 9,905,742, a divisional of the ‘733 patent that covers an LED housing, and a third IPR petition for U.S. Patent No. 7,554,126, which covers a method of mounting an LED. The PTAB will make IPR institution decisions by the end of November 2024.
In separate lawsuits, Pointwise Ventures LC sued Amazon.com, Inc. and Google LLC on May 30th for infringing its U.S. Patent No. 8,471,812. The ‘812 patent covers a device that allows the user to point to a real-world object or an object on a television or movie screen and then an image of the object is taken by a digital camera and transmitted to a computer. Pointwise Adventures has now sued nine different parties for infringement of the ‘812 patent.
On May 31st, FUJIFILM North America Corporation sued Optimum Imaging Technologies LLC in the Northern District of California for infringement of four patents relating to digital imaging systems. The patents cover the correction of aberrations, selective image filtration, and wireless image transfer. The patents are U.S. Patent Nos. 7,612,805; 8,451,339; 10,873,685; and 10,877,266.
Longhorn Automotive Group LLC sued Nissan Motor Co., Ltd. in the Eastern District of Texas on May 31st for infringement of five patents relating to internal combustion engines and analysis of engines. Two of the five patents relate to photonics: U.S. Patent No. 8,265,353 discloses a method of reconstructing an image of a moving object and U.S. Patent No. 8,810,803 discloses a lens system for creating a light pattern useful to computer vision systems.
Optical communications
Innovations in Memory LLC sued Cisco Systems, Inc. on May 14th in the Eastern District of Texas for infringement of U.S. Patent Nos. 7,672,226; 8,160,070; and 8,285,961. The patents relate to verifying the existence of a redundant fiber channel path, a fiber channel proxy and dynamic virtualization for disk access. On May 31st, Innovations in Memory sued Dell Inc. and Dell Technologies Inc. in the Western District of Texas for infringement of the same patents, along with three other patents relating to data storage.
On May 21st, the Court of Appeals for the Federal Circuit (CAFC), the court with jurisdiction to hear appeals from patent lawsuits, overturned a lower court’s summary judgment that Core Optical Technologies LLC lacked standing to sue Nokia Corp. and others for infringement of U.S. Patent No. 6,782,211. The ‘211 patent describes a cross-polarization interference canceler that can increase the bandwidth efficiency of an optical communication link transmitting two optical signals with generally orthogonal polarization states. The defendants’ lack of standing argument was based on language in the inventor’s employment agreement in place at the time the interference canceler was invented. The CAFC vacated the lower court’s judgment, stating that the ambiguities in the employment agreement were sufficient to make a summary judgement finding improper.
On May 30th, AT&T Services Inc. and Nokia of America Corporation (f/k/a Alcatel-Lucent USA Inc.) together filed petitions with the PTAB for IPRs of U.S. Patent Nos. 8,934,359 and 9,806,892, owned by Ianarch Technologies Limited. The ‘359 patent relates to a method for managing uplink burst overhead parameters in a passive optical network system, and an optical network unit (ONU) system that implements such a method. The ‘892 patent relates to power management of an ONU. Ianarch had previously sued AT&T for infringement of the two patents, and Nokia had joined the suit as an intervenor-defendant. The PTAB is expected to make a decision on instituting the IPRs by the end of November 2024.
Augmented reality/virtual reality (AR/VR)
On May 8th, GeoSymm Ventures LLC sued Trimble, Inc., Varjo Technologies Oy, and Zappar Ltd. in three separate lawsuits for infringement of U.S. Patent No. 11,080,885. The ‘885 patent covers the generation of an AR image using digitally encoded markers.
On May 10th, Google LLC and two Samsung entities petitioned the PTAB for an IPR to review the validity of U.S. Patent No. 8,982,110 owned by EyesMatch Ltd. The ‘110 patent describes a computerized method for image transformation, AR, and telepresence. EyesMatch originally sued Samsung for infringement of three patents, including the ‘110 patent, in August 2023.
The Famous Group Technologies, Inc. sued Cue Audio, Inc. in the Northern District of Texas on May 16th for infringement of U.S. Patent Nos. 10,482,660 and 11,736,545. The ‘660 patent relates to a system that integrates content in real time into a dynamic 3D scene.
Displays
In an Initial Determination, the International Trade Commission (ITC) found that Manufacturing Resources International, Inc. infringes one LCD display patent asserted by Samsung Electronics Co., Ltd. and three other Samsung entities. Samsung had originally alleged that Manufacturing Resources also infringed two other LCD display patents, but the ITC found that the asserted claims in these patents were not infringed and were invalid. The infringed patent is U.S. Patent No. RE45,117, and the other patents are U.S. Patent Nos. 8,223,311 and 8,842,253. The patents relate to environmentally protected LCD displays that include cooling mechanisms.
Giesecke+Devrient Currency Technology GmbH, Giesecke+Devrient GmbH, and Papierfabrik Louisenthal GmbH filed petitions for IPRs on U.S. Patent Nos. 10,317,691, 10,901,191, and 11,448,863 owned by Lumenco, LLC. The patents cover a visual display assembly that includes an array of micromirrors, useful as an authentication of anticounterfeiting elements. Lumenco sued the three petitioners in March 2023 for infringement of four patents, including the three mentioned here.
On May 7th, Semiconductor Energy Laboratory Co., Ltd. filed a lawsuit against Nothing Technology Limited, Visionix America, Inc., and Visionix Technology, Inc. in the Northern District of California for infringement of three patents relating to thin film transistors and their use in active electroluminescent displays. The patents are U.S. Patent Nos. 8,487,841; 9,236,404; and 11,430,896.
Bio and life sciences
On May 7th, the CAFC dismissed an appeal brought by S. Edwards Neister regarding the PTAB’s decision finding claims of his U.S. Patent No. 8,975,605 invalid. Neister and his company High Energy Ozone LLC originally brought suit in 2022 against Far UV Technologies, Inc., Eden Park Illumination, Inc., and Larson Electronics LLC for infringement of three patents, including the ‘605 patent, which relate to sterilizing and disinfecting surfaces using UV light. The defendants responded by initiating IPRs against each of the three patents. After the PTAB had found that the challenged claims of the ‘605 patent were invalid, Neister filed a Notice of Appeal to the CAFC, but failed to follow up with an appeal brief. The CAFC dismissed the appeal for failure to prosecute the appeal in accordance with the rules.
Solar cells
On May 8th, Voltage, LLC petitioned the PTAB to open an IPR to review the validity of U.S. Patent No. 10,553,739, owned by Shoals Technologies Group, LLC. The ‘739 patent relates to a photovoltaic in-line connector for use in a wiring harness for a photovoltaic installation. The PTAB will decide whether to institute the IPR by early November 2024.
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.
Iain McIntyre
Iain A. McIntyre, J.D., Ph.D., is a partner at the Minneapolis law firm Carlson Caspers. He gained his doctorate in laser physics from The University of St. Andrews in Scotland. After working as a professional physicist in lasers and electro-optics for 10 years, he switched careers and has worked in patent law for over 25 years. He is experienced in patent prosecution, litigation, counseling, FTO, and due diligence analyses.