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.
September’s photonics-related IP activities include 21 cases concerning various technologies, including cameras and imaging systems, lighting and light sources, solar cells, biological and life sciences, displays, lenses, and optical data storage. Here are the summaries.
Cameras, imaging systems, and image processing
NEC Corporation filed two separate lawsuits on September 3rd alleging infringement of patents relating to video image processing useful in video surveillance. In the first suit, against Anker Innovations Ltd. and Anker Innovations Technology Co. Ltd., NEC alleged infringement of its U.S. Patent Nos. 9,953,240; 10,037,467; 10,970,995; 10,999,635; 11,210,526; and 11,537,814. In the second suit, against YI Technologies, Inc., NEC alleged infringement of U.S. Patent Nos. 10,223,619; 10,706,336; 10,769,468; 10,970,995; 11,373,061; and 11,537,814.
VDPP, LLC continued to assert its image-processing patent portfolio in August, suing AXIS Communications Inc. for infringement of U.S. Patent No. 10,021,380, which covers generating modified video images. VDPP has now asserted the ‘380 patent against 50 parties.
On September 12th, SiOnyx, LLC sued Apple Inc. in the Massachusetts District Court for infringement of U.S. Patent Nos. 9,064,764; 10,224,359; and 11,721,714. The patents relate to detector arrays in which light is trapped within pixels to increase signal and reduce S/N.
On September 15th, Yoldas Askan sued FARO Technologies, Inc. for infringement of U.S. Patent Nos. 9,300,841 and 10,032,255 in the Middle District of Florida. The patents describe methods of generating a smooth surface contour from a point cloud data set of an image.
On September 23rd, Dolby Laboratories Licensing Corp. sued Florida-based cell phone manufacturer BLU Products, Inc. in the Southern District of Florida for infringement of U.S. Patent Nos. 10,297,008 and 11,887,560. The patents address methods of improving compressed video image information and perceptual nonlinearity-based image data exchange across different display capabilities.
On September 24th, Samsung Electronics Co., Ltd. filed two petitions with the PTAB to institute IPRs against U.S. Patent No. 11,069,737, owned by SiOnyx, LLC. The patent describes a semiconductor array detector with a textured surface to enhance quantum efficiency, and a method of making it. SiOnyx sued Samsung for infringement of the patent in April this year. The PTAB should decide whether to institute the IPRs by the end of March 2025.
Lighting and light sources
On September 5th, IN 2 Developments LLC sued Globe Electric in the Central District of California for infringement of two LED light bulb patents, U.S. Nos. 9,702,510 and 9,995,436.
ElectraLED, Inc. sued Traxon Technologies Limited on September 10th in the Eastern District of Texas for infringement of U.S. Patent No. 7,651,245. The patent covers an LED light fixture in which the LED co-mounted with its power supply.
On September 16th, Aperture Imaging Industries Co., Ltd. filed petitions for IPRs against three patents owned by Rotolight Limited. U.S. Patent Nos. 10,197,257; 10,203,101; and 10,845,044 describe a system for customizable control of an LED-based lighting system that can be used as a “flicker box” in television or film production. Rotolight sued Aperture Imaging for infringement of the patents in the Eastern District of Texas in June 2023.
SemiLED Innovations LLC sued Craftmade International, Inc. on September 17th in the Northern District of Texas for infringement of four patents relating to LED technology and its application to automobile headlights. The patents are U.S. Patent Nos. 7,128,454; 8,309,971; 8,963,196; and 9,530,942.
Menard, Inc. filed a petition at the PTAB on September 23rd for an IPR of U.S. Patent No. 10,299,336, owned by Signify Holdings BV f/k/a/ Philips Lighting Holding BV. The patent relates to a lighting fixture whose color temperature is selectively adjusted to discrete values by a remote switch. The PTAB is expected to decide whether to institute the IPR before the end of March 2025.
Shangyou Jiayi Lighting Product Co., a Chinese manufacturer of decorative lighting, sued various partnerships and unincorporated associations in Federal Court in the Northern District of Illinois on September 24th for infringement of U.S. Patent No. 10,082,258. The patent covers a string of LED lights, such as might be used for seasonal decoration, that may be used indoors, outdoors, and even under water.
Solar cells
On September 10th, Trina Solar Co. Ltd. sued Jiangsu Runergy New Energy Technology Co., Ltd. in the Central District of California for infringement of U.S. Patent Nos. 9,722,104 and 10,230,009. The patents relate to solar cells having increased efficiency, and methods of making them.
On September 30th, the PTAB announced its decision not to institute a Post Grant Review (PGR) against U.S. Patent No. 11,689,153, owned by Shoals Technology Group, LLC. The ‘153 patent is directed to lead assemblies for connecting solar panel arrays to an inverter. The GPR had been requested by Voltage, LLC, but the Board decided that Voltage had failed to provide enough evidence in its petition that the patent was invalid.
On September 30th, Trina Solar Co., Ltd. and two other Trina entities filed a complaint with the International Trade Commission (ITC), asserting that Adani Green Energy Ltd., Adani Solar USA Inc., Jiangsu Runergy New Energy Technology Co., Ltd., Runergy Alabama Inc., and Runergy USA Inc. are importing goods into the U.S. that infringe U.S. Patent Nos. 9,722,104 and 10,230,009. The patents cover semiconductor solar cells that include a tunnel layer or a polysilicon layer.
Bio & life sciences
On September 19th, the PTAB denied the petition for an IPR on U.S. Patent No. 11,253,719, filed by Mito Red Light, Inc. The patent, owned by Joovv, Inc., covers a method for applying photobiomodulation therapy to a patient. Joovv sued Mito Red Light for infringement of the patent in June 2023. In its denial, the PTAB stated that the prior art cited in the petition failed to disclose the elements of the challenged claims and, consequently, there was no reasonable likelihood of prevailing in its obviousness challenge.
Masimo Corporation scored a partial victory on September 24th in its ongoing fight with Apple Inc. over wearable electronic devices containing biosensors. The PTAB issued a written decision in an IPR for Apple’s U.S. Patent No. 10,627,783, finding that 13 of the patent’s 20 claims, including all three independent claims, are invalid. The remaining seven claims were found not to be invalid.
Displays
On September 12th, the PTAB instituted an IPR on U.S. Patent No. 9,330,593, owned by Samsung Display Co. Ltd. The ‘593 covers a stage circuit for driving a line of pixels in a display, and an OLED display using the stage circuits. The petition for the IPR was filed by Mianyang BOE Optoelectronics Technology Co. Ltd.; Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd.; Tianmamicroelectronics Co. Ltd.; and Visionox Technology, Inc. Samsung sued Mianyang BOE Optoelectronics Technology for infringement of the ‘593 patent in June 2023. The ‘593 patent is also one of a number of patents that are the subject of an ITC investigation brought by Samsung in December 2022.
Lenses
On September 13th, Holochip Corporation sued Honeywell International Inc. and Varjo Technologies Oy in separate lawsuits in the Eastern District of Texas for infringement of U.S. Patent Nos. 7,646,544; 8,064,142; and 8,605,361. The patents describe fluid-filled lenses with transparent elastic membranes that have an adjustable focal length when pressure is applied to the fluid.
Optical data storage
On September 12th, Ts-Optics Corporation sued Microsoft Corporation in the Central District of California for infringement of U.S. Patent Nos. 7,266,055 and 9,612,709. The ‘055 patent covers an optical disk drive including an optical pickup actuator employing a Lorenz force generated in a coil by electromagnetic induction. The ‘709 patent relates to a mobile terminal-based remote game control system.
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.