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.
August’s photonics-related IP activities include 34 cases concerning various technologies, including cameras and imaging systems, displays, lighting and light sources, optical communications, medical and dental applications, biological and life sciences, augmented reality/virtual reality, sensors, and solar cells. Here are the summaries.
Cameras, imaging systems, and image processing
AI-Core Technologies sued Omron Corporation on August 1st in the Eastern District of Texas for infringement of six patents relating to image sensing, image scanning, and an image processing driver and to other computing functions. The asserted patents are U.S. Patent Nos. 7,215,834; 7,365,298; 7,623,036; 7,746,516; 8,610,742; and 9,338,217.
On August 1st, Mobileye Global, Inc. filed petitions with the Patent Trial and Appeal Board (PTAB) to institute Inter Partes Reviews (IPRs) to review U.S. Patent Nos. 9,335,255 and 9,671,328, owned by Mandli Communications, Inc. The patents cover the detection and assessment of reflective road markers, such as road signs, along a roadway. Facet Technology Corp., Mandli’s licensee, sued Mobileye for infringement of the patents in January this year.
VDPP, LLC continued to assert its image-processing patent portfolio in August, suing Delta Electronics (USA) Inc. d/b/a Vivitek, Planar Systems, Inc., MediaTek USA Inc./STMicroelectronics, Inc., Casio America, Inc., EnGenius Technologies, Inc., Roku, Inc., Honey Optics LLC, and Amazon.com, Inc. in separate lawsuits for infringement of U.S. Patent No. 10,021,380, which covers generating modified video images. VDPP also sued Giga-Byte Technology Co., Ltd. and FCA US LLC in separate lawsuits for infringement of its U.S. Patent No. 9,716,874, which is in the same family as the ‘380 patent. VDPP has now asserted the ‘380 patent against 49 parties and the ‘784 patent against 8 parties.
Longhorn Automotive Group LLC sued Mitsubishi Motors Corporation and Mazda Motor Corporation in the Eastern District of Texas on August 20th for infringement of four 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 useful for creating a light pattern used in computer vision systems.
Displays
On August 8th, Light Guide Innovations LLC sued TCL Communication Ltd. and various TCL entities, along with TCT Mobile International Limited, in a patent infringement lawsuit in the Eastern District of Texas. There are 14 patents in the suit, covering light sources and various backlight illumination methods for displays. The patents are U.S. Patent Nos. 7,922,380; 7,936,415; 8,045,091; 8,052,307; 8,213,093; 8,237,352; 8,395,183; 8,506,122; 8,562,200; 8,616,729; 8,723,411; 8,823,048; 9,534,744; and 9,638,378.
Samsung Display Co., Ltd. filed a petition for an IPR with the PTAB to invalidate U.S. Patent No. 6,949,389, owned by Pictiva Displays International Limited. The patent is related to a method of encapsulating organic light-emitting diodes (OLEDs). Pictiva sued Samsung for infringement of the ‘389 patent last month. The PTAB will decide whether to institute the IPR by mid-February next year.
On August 28th, following up on the five IPR petitions filed in July, BOE Technology Group Co., Ltd. filed an additional petition with the PTAB, this time for an IPR on U.S. Patent No. 8,158,477, owned by Optronic Sciences LLC. The patent relates to LEDs and to improvements to the performance of electroluminescent displays. Optronic Sciences sued BOE Technology Group for infringement of the ‘477 patent in November 2023. The PTAB will decide whether to institute the IPR by late February 2025.
Lighting and light sources
On August 23rd, Golight Inc. sued Abrams Manufacturing Co., Inc. for infringement of U.S. Patent No. 10,215,392. The ‘392 patent is directed to an LED lamp assembly that includes a heatsink and lenses to emulate the operation of a halogen spotlight.
On August 26th, Ledvance LLC and Savant Technologies d/b/a GE Lighting filed a petition to open an IPR against U.S. Patent No. 8,604,678, owned by Feit Electric Company. Feit sued both companies for infringement of the ‘678 patent earlier this year. The patent covers an LED source with a wavelength-converting phosphor layer in contact with a diffusing layer, which results in the phosphor appearing white when the LED is off. It is expected that the PTAB will decide whether to institute the IPR before the end of February next year.
On August 30th, Sensor Electronic Technology, Inc. sued Laser Components USA, Inc. in the District of New Hampshire for infringement of four patents relating to semiconductor devices and fabrication that are particularly suited to nitride-based semiconductor devices. The patents are U.S. Patent Nos. 9,966,496; 10,854,785; 11,508,871; and 11,611,011.
Optical communications
On August 7th, SPADA Innovations, Inc. sued AT&T Inc. in the Central District of California for infringement of U.S. Patent Nos. 11,070,898 and 11,589,142. The patents cover secure optical data networks.
On August 9th, Charter Communications, Inc. filed petitions for IPRs challenging the validity of two patents owned by Iarnach Technologies Ltd. The patents, U.S. Patent No. 8,942,378 and 9,287,982, respectively, cover the encryption of a multicast service in a passive optical network and DOCSIS provisioning of EPON in an optical network. Iarnach sued Charter for infringement of the patents in April of this year. It is expected that the PTAB will make a decision on instituting the IPRs by early February 2025.
On August 30th, CommScope Technologies, LLC filed a petition for IPR against U.S. Patent No. 11,740,423, owned by Belden Canada ULC. The ‘423 patent relates to a tray system providing modular cassette configurations in a fiber-optic management system. Belden sued CommScope for infringement of the ‘423 patent in 2023. The PTAB should decide whether to institute the IPR by the end of February next year.
Medical/dental
On August 13th, CICAS IP LLC sued Med-Surgical Services, Inc. and Meta Dynamic, Inc. in the Eastern District of Texas for infringement U.S. Patent Nos. 6,511,418 and 6,850,794. The patents cover approaches to calibrating and targeting an endoscope.
3Shape A/S and 3Shape, Inc. filed petitions with the PTAB to institute IPRs on three patents owned by Medit Corp.: U.S. Patent Nos. 7,912,257; 9,245,374; and 9,262,864 cover the acquisition of 3D dental images from 2D data and synchronous viewing of video and 3D data. Medit sued 3Shape for infringement of the patents in September 2023.
On August 19th, the PTAB denied the petitions filed by 3Shape A/S to invalidate U.S. Patent Nos. 10,076,391 and 11,234,798, which relate to methods and systems for using intra-oral imaging to model a patient’s mouth. Carestream Dental LLC and Dental Imaging Technologies Corp previously sued 3Shape for infringement of the two patents.
Bio & life sciences
On August 21st, Biofrontera AG and three other Biofrontera entities filed a petition for IPR against U.S. Patent No. 11,697,028, owned by Sun Pharmaceutical Industries, Inc. The ‘028 patent describes an adjustable illuminator for photodynamic therapy based on the use of LED-powered lighting panels. Sun sued Biofrontera for infringement of the patent in June. The PTAB is expected to decide whether to institute the IPR by the second half of February 2025.
On August 23rd, the PTAB agreed to the petition submitted by Bruker Spatial Biology, Inc. and Bruker Nano, Inc., and instituted an IPR to review the validity of U.S. Patent No. 11,542,554, owned by the President and Fellows of Harvard College. The patent, exclusively licensed to 10x Genomics, Inc., covers a system for imaging a three-dimensional matrix of nucleic acids within a cell. 10x and Harvard originally sued NanoString Technologies for infringement of the ‘554 patent in 2022, and Bruker Spatial Biology and Bruker Nano have since been added as defendants. The PTAB is expected to produce a final written decision on the IPR by the end of August 2025.
Augmented reality/virtual reality (AR/VR)
On August 21st, GeoSymm Ventures LLC sued Media Horizons LLC in the Southern District of New York for infringement of U.S. Patent No. 11,080,885. The patent relates to the formation of an AR image using a digitally encoded marker in a physical environment. GeoSymm has now asserted the patent against seven different parties.
On August 28th, Electronic Scripting Products, Inc. sued Century Label and CMC Group, Inc. in the Northern District of Ohio for infringement of U.S. Patent Nos. 7,826,641 and 10,191,559. The patents relate to determining the pose of an object in a three-dimensional environment in order to interact with a digital environment.
Sensors
On August 16th, the Court of Appeals for the Federal Circuit (CAFC), the appeals court with jurisdiction over patent cases, dismissed an appeal by Platinum Optics Technology Inc. of an IPR’s final written decision. Platinum Optics had succeeded in instituting an IPR against U.S. Patent No. 9,354,369, owned by Viavi Solutions Inc., which covers a filter that includes hydrogenated silicon, high refractive-index layers having low loss, that are particularly suited for use in sensor systems. The PTAB ultimately determined that Platinum Optics had not provided enough evidence to show that the claims of the ‘369 patent were invalid, which decision Platinum Optics appealed to the CAFC. Since Viavi was not asserting the ‘369 patent against Platinum Optics, the CAFC determined that there was insufficient case or controversy for Platinum Optics to have standing to appeal the PTAB decision.
Solar cells
On August 8th, Hanwha Solutions Corporation filed petitions for IPRs at the PTAB, challenging the validity of three patents owned by Maxeon Solar Pte. Ltd. The patents, U.S. Patent Nos. 8,222,516; 8,878,053; and 11,251,315, cover a front contact solar cell with formed emitter, and solar cells with improved lifetime, passivation, and efficiency. Maxeon sued Hanwha for infringement of the patents in April 2024. It is expected that the PTAB will decide whether to institute the IPRs by the early part of February 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.