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 new 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.
July’s photonics-related IP activities include 37 cases concerning various technologies, including cameras and imaging systems, displays, lighting and light sources, optical communications, sensors, bio and life sciences, virtual reality/augmented reality, optical computing, and solar cells. Here are the summaries.
Cameras, imaging systems, and image processing
VDPP, LLC continued to assert its image-processing patent portfolio in July, suing CostarHD LLC, Belkin International, Inc., Pioneer Electronics (USA) Inc., TP-Link systems Inc. d/b/a TP-Link USA Corporation, Dell Technologies Inc., USA Vision Systems Inc. d/b/a/ GeoVision, Inc., Lenovo (United States) Inc., Qualcomm Technologies, Inc., and Resideo Technologies, Inc. in separate lawsuits for infringement of U.S. Patent No. 10,021,380. VDPP has now asserted the ‘380 patent against 41 parties. In a separate lawsuit in which VDPP accused Volkswagen Group of America, Inc. of infringing a patent in the same family as the ‘380 patent, the judge awarded attorney fees to VW to compensate for the “sloppy” and “offensive” case against VW, now dismissed. VDPP voluntarily dismissed a separate lawsuit against Ford Motor Co. in which it had accused Ford of infringing with its surround-view system.
On July 1st, Motorola Mobility LLC petitioned the Patent Trial and Appeal Board (PTAB) to institute an Inter Partes Proceeding (IPR) on U.S. Patent No. 9,366,845, owned by Largan Precision Co., Ltd. The ‘845 patent describes a compact seven-element lens system with reduced back focal length suitable for use in a portable electronic product such as a mobile phone with reduced aberration. It is expected that the PTAB will issue a decision on institution of the IPR by early January 2025.
Pointwise Ventures LLC sued Etsy, Inc. on July 5th for infringing 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 18 different parties for infringement of the ‘812 patent.
Apple Inc. prevailed in IPRs of U.S. Patent Nos. 6,844,990 and 10,795,120, with the PTAB deciding that all claims of the patents are invalid. Immervision, Inc. had previously sued Apple for infringement of the patents. The ‘990 patent covers obtaining panoramic images and displaying the panoramic images on a computer screen, while the ‘120 patent covers a miniature wide-angle lens.
On July 18th, Arashi Vision Inc. d/b/a Insta360 petitioned the PTAB to institute an IPR on U.S. Patent No. 10,574,894, owned by GoPro, Inc. The PTAB will decide whether to institute the IPR by mid-January 2025.
On July 19th, Nostromo LLC sued HTC Corporation in the Eastern District of Texas on five patents applicable to mobile phones, one of which is photonics-related. U.S. Patent No. 10,362,292 discloses a system and method for three-dimensional imaging that can be implemented in a chip mounted in a mobile phone.
Displays
July 3rd was a successful day for Samsung Electronics Co., Ltd., with the PTAB issuing final written decisions in four IPRs covering four different patents in favor of Samsung. The patents, owned by Manufacturing Resources International, Inc., cover aspects of cooled electronic displays. MRI had asserted the patents, U.S. Patent Nos. 8,854,595; 9,173,322; 10,506,740; and 11,013,142, against Samsung in both a lawsuit and ITC action filed in 2022.
Samsung Display Co., Ltd. filed petitions for IPRs with the PTAB to invalidate U.S. Patent Nos. 8,558,223, 9,257,492, and 11,828,425, owned by Pictiva Displays International Limited. The patents are related to organic light-emitting diodes (OLEDs), including organic compounds for use in the electron-conducting layer in an OLED device. Pictiva sued Samsung for infringement of the patents in October 2023. The PTAB will decide whether to institute the IPRs by the end of January next year. Meanwhile, Pictiva filed a second lawsuit against Samsung on July 12th, alleging infringement of six patents relating to OLEDs and displays using OLEDs. The patents in this second lawsuit are U.S. Patent Nos. 6,949,389; 8,314,547; 8,558,223; 8,723,164; 9,257,492; and 11,828,425.
Samsung Display Co., Ltd., along with two other Samsung entities, was sued by Sinotechnix LLC in the Eastern District of Texas for infringement of six patents. The patents relate to LED-backlit displays, and cover methods of redistributing light, side illumination, backlighting using white light-emitting LEDs, and slim LED packages. The patents are U.S. Patent Nos. 7,618,162; 7,748,873; 7,901,113; 7,951,626; 8,132,952; and 9,412,913.
BOE Technology Group Co., Ltd. filed petitions with the PTAB for IPRs on U.S. Patent Nos. 7,168,842; 7,226,801; 7,586,121; 9,263,509; and 9,406,733, owned by Optronic Sciences LLC. The patents relate to LEDs and to improvements to the performance of electroluminescent displays. Optronic Sciences previously sued BOE Technology Group in November 2023 for infringement of the patents. The PTAB will decide whether to institute the IPRs by early January 2025. Optronic Sciences LLC filed a second lawsuit against BOE Technology Group Co., Ltd. on July 23rd for the infringement of four additional display-related patents. The patents cover OLEDs and OLED displays, LCD display panels, and LCD drive circuits. The patents are U.S. Patent Nos. 7,688,934; 8,208,084; 8,502,757; and 8,604,471.
On July 9th, Maxell, Ltd., f/k/a Hitachi Maxell, Ltd., sued Coretronic Corporation and Optoma Corporation in the Eastern District of Texas for infringement of seven patents relating to projector displays and light sources for use with projector displays. The patents are U.S. Patent Nos. 7,159,988; 7,850,313; 8,593,580; 9,322,530; 9,547,226; 9,565,388; and 9,900,569.
Lighting and light sources
On July 10th, ElectraLED, Inc. sued Chauvet and Sons, LLC and Astera LED Technology GmbH in separate lawsuits in the Eastern District of Texas for infringement of U.S. Patent No. 7,651,245. The ‘245 patent covers a light fixture that includes a number of LED modules and a power module.
The PTAB issued final written opinions in IPRs on U.S. Patent Nos. 9,955,551 and 10,894,503, owned by Y. E. Spero. The patents cover an LED-based headlamp that includes LEDs pointing in a number of directions. The pattern of light distribution from the headlamp can be adjusted based on a number of factors, including detected oncoming vehicles. The IPRs were the result of petitions filed by Volkswagen Group of America, Inc. and Porsche Cars North America, Inc. Across the two IPRs, the Board found that, of the 124 claims challenged, 104 were invalid. While neither Volkswagen nor Porsche have been sued for patent infringement, Spero’s exclusive licensee, Torchlight Technologies LLC, has sued Daimler and General Motors for infringement of the ‘551 and ‘503 patents.
On July 15th, the PTAB issued a final written decision invalidating all challenged claims of U.S. Patent No. 10,197,224, owned by Colt International Clothing, Inc. d/b/a Colt LED. Colt had filed suit for infringement of the ‘224 patent against Quasar Science, LLC in 2022, which caused Quasar to petition for this IPR. The ‘224 patent covers a multicolored tube light using arrays of LEDs.
On July 29th, Infinity X1, LLC sued Alliance Sports Group LP in the Central District of California for infringement of U.S. Patent No. 11,149,924. The ‘924 patent covers a portable lighting apparatus based on an LED assembly having a lens with portions having two different focal lengths.
On July 31st, the PTAB issued a final written decision in a Post Grant Review (PGR) that claims in U.S. Patent No. 11,297,705, owned by Lynk Labs, Inc., are invalid. The ‘705 patent covers an LED lighting system that permits a user to switch between different colors. Home Depot USA Inc. had originally petitioned for review of this patent, to follow three other successful IPRs of other Lynk Labs patents that were decided in 2023.
Optical communications
On July 9th, the PTAB instituted IPRs on six fiber-optic connector patents owned by Senko Advanced Components, Inc. Senko originally sued US Conec Ltd. for infringement of 16 fiber-optic connector patents in January 2023, and US Conec responded with petitions for IPRs on seven of the asserted patents in January 2024. The PTAB is scheduled to issue final written decisions on the IPRs by the beginning of July 2025. The IPRs were instituted on U.S. Patent Nos. 10,191,230; 11,181,701; 11,307,369, 11,333,836; 11,340,413; and 11,415,760.
On July 26th, CommScope Technologies, LLC filed petitions for IPRs on three patents owned by Belden Canada ULC. U.S. Patent Nos. 10,795,107; 11,435,542; and 11,656,422 cover modular fiber-optic cassettes and methods of using them. The PTAB should decide whether to institute the IPRs by the end of January 2025. Belden asserted the three patents against CommScope in a patent infringement lawsuit filed July 27, 2023.
Nokia of America Corporation failed in its attempt to institute IPRs on three different patents owned by individuals Alexander Soto and Walter Soto. NextGen Innovations LLC, the exclusive licensee of the patents, sued Nokia for patent infringement in August 2023, and Nokia responded by filing IPR petitions on U.S. Patent Nos. 9,887,795; 10,263,723; and 10,771,181. The patents relate to m-ary (as opposed to binary) modulation in optical fiber communications networks. Explaining its decisions not to institute IPRs, the PTAB stated that the prior art cited by Nokia had already been considered by the Patent Office and that Nokia had failed to show that there had been any error in the Patent Office’s previous analysis of that art. NextGen has sued 18 different parties for infringing the three patents.
Sensors
On July 3rd, Reolink Digital Technology Co., Ltd. filed for IPRs at the PTAB to review the validity of U.S. Patent Nos. 8,004,602 and 8,314,481, owned by KT Imaging USA, LLC. The patents relate to image sensor structures and packaging. KT Imaging sued Reolink for infringement of the patents in August 2022. KT Imaging has asserted the ‘602 patent against 30 different parties, and the ‘481 patent against 29 parties. The PTAB will decide whether to institute IPRs by early January 2025.
On July 19th, Longhorn Automotive Group LLC sued Hyundai Motor Company and Kia Corporation in the Eastern District of Texas for infringement of six patents applying to automotive technology, three of which are photonics-related. U.S. Patent No. 8,265,353 discloses a method of reconstructing an image of a moving object acquired using at least two different imagery modes. U.S. Patent No. 8,810,803 discloses a lens system used for creating lighting patterns useful to computer vision systems that allegedly allow for accurate tracking and determination of an object’s position. U.S. Patent No. RE44331 discloses an LED-based collision prevention detector.
Bio and life sciences
In the continuing dispute between Apple Inc. and Masimo Corporation over the use of optical-based physiological monitoring, the PTAB instituted IPRs against two patents owned by Masimo, U.S. Patent Nos. 10,687,743 and 10,722,159. The PTAB will issue a final written decision on the IPRs by mid-July 2025.
The International Trade Commission confirmed the Administrative Law Judge’s decision we reported in April, that various products imported into the U.S. by Gator Bio Inc. did not 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.
Virtual reality (VR)/augmented reality (AR)/digital eyewear
GeoSymm Ventures LLC sued Magic Leap, Inc. and Kinetic Vision Media Corp. in separate lawsuits for infringement of U.S. Patent No. 11,080,885. The ‘885 patent relates to AR, particularly the use of a digitally encoded marker in the physical environment. The ‘885 patent has now been asserted against six different parties.
On July 23rd, the PTAB issued decisions in IPRs finding that certain claims in two patents owned by Percept Technologies Inc. are invalid. U.S. Patent Nos. 8,696,113 and 9,010,929 cover eyewear that includes circuitry to provide advanced functionality. Percept had asserted the patents against Magic Leap, Inc. in January 2022 and these decisions arose from petitions filed by Percept in January 2023.
Optical computing
On July 10th, Kay C. Robinson Jr. sued the Global Semiconductor Alliance pro se in the Eastern District of Michigan for infringement of U.S. Patent No. 11,108,397. The patent relates to logic circuits controlled by light.
Solar cells
On July 19th, Canadian Solar Inc. petitioned the PTAB to institute an IPR on U.S. Patent No. 11,251,315, owned by Maxeon Solar Pte. Ltd. The ‘315 patent relates to solar cells with improved lifetime, passivation, and/or efficiency. The PTAB should decide whether to institute the IPR by mid-January 2025.
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.