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.
October’s photonics-related IP activities include 34 cases concerning various technologies, including lighting and light sources; cameras, imaging systems, and image processing; displays; sensors; medical and dental applications; lenses; optical communications; biological and life sciences applications; manufacturing; virtual reality/augmented reality; and solar cells. Here are the summaries.
Lighting and light sources
On October 1st, AMP Plus, Inc. d/b/a Elco Lighting sued Nora Lighting in the Central District of California for infringement of U.S. Patent No. 11,092,326. The patent is directed to an LED-based light module that includes a conical reflector.
On October 4th, IN 2 Developments LLC sued Viribright Lighting Inc. in the Central District of California for infringement of U.S. Patent Nos. 9,702,510 and 9,995,436. The patents cover lightbulbs having a filament that contain LED chips.
On October 4th, Kohler Co. filed a petition for Inter Partes Review (IPR) against U.S. Patent No. 10,393,363, owned by Delta Faucet Company. The patent describes a shower head with LEDs coupled to produce light out of the shower head using a light pipe. It is expected that the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office will make a decision on whether to institute the IPR by early April 2025.
BX LED LLC filed two lawsuits in the Eastern District of Texas on October 7th accusing the defendants of infringing five patents relating to LED lighting, including the compensation of manufacturing variations in light output from individual segmented LEDs, a high-power AlInGaN LED, a color temperature tunable white light LED source, and improved color characteristics in wavelength conversion. The defendants in the first suit are Govee Moments Trading Ltd. and Shenzhen Inetellirocks Tech Co., Ltd. and are accused of infringing U.S. Patent Nos. 6,869,812; 8,203,260; 9,913,333; and 10,966,300. The second suit is against Sengled Optoelectronics Co., Ltd., who is accused of infringing the same four patents, in addition to U.S. Patent No. 8,998,433. On October 25th, BX LED sued ams OSRAM AG in the Eastern District of Texas for infringement of the ‘612 patent, along with U.S. Patent Nos. 7,883,226; 7,901,109; and 8,888,318.
On October 7th, the PTAB issued a final written decision in two IPRs, confirming that U.S. Patent Nos. 10,411,582 and 10,566,895, owned by Colt International Clothing, Inc. d/b/a Colt LED, are valid. The IPRs had been instituted following a petition by Quasar Science, LLC. Colt sued Quasar for patent infringement in 2022. The patents cover an LED-based replacement for a fluorescent tube that includes different sets of LEDs that emit light at respective different color temperatures.
The Court of Appeals for the Federal Circuit (CAFC), the appeals court with jurisdiction over patent cases, decided in favor of CAO Lighting, Inc. in its dispute with Feit Electric Company, Inc. over infringement of U.S. Patent No. 6,465,961. The patent relates to a semiconductor light source that includes epitaxial layers and reflective layers. At trial, the judge construed the term “first reflective layer” to be an epitaxial layer and also required the first reflective layer to be formed of different material from the substrate. The CAFC found these decisions to be in error, and remanded the case back to the lower court for retrial.
Cameras, imaging systems, and image processing
On October 7th, Pointwise Ventures LLC sued Lowe’s Companies, Inc., YOOX Net-a-Porter Group SpA, ASOS.com Limited, Wayfair Inc., Hennes & Mauritz AB, Penney OpCo LLC d/b/a JCPenney, Macy’s Inc., and Urban Outfitters, Inc. in the Eastern District of Texas 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. Then, an image of the object is taken by a digital camera and transmitted to a computer.
On October 8th, Japanese camera companies FUJIFILM Corporation, FUJIFILM North America Corporation, Nikon Corporation, OM Digital Solutions Corporation, Olympus Corporation, and Panasonic Entertainment & Communication Co. Ltd. filed a petition with the PTAB to open an IPR on U.S. Patent No. 10,877,266, owned by Optimum Imaging Technologies LLC. Optimum Imaging has sued all the petitioners in separate lawsuits for infringement of the patent. The patent is directed to a method of digitally processing an image in a digital camera that includes applying image correction using updatable image correction algorithms and then wirelessly transmitting the corrected image.
On October 15th, Arashi Vision Inc. d/b/a Insta360 filed a petition for an IPR with the PTAB against U.S. Patent No. 10,529,052, owned by GoPro, Inc. The patent describes a system that simulates image distortion of a virtual lens in a video. GoPro sued Arashi for infringement of the patent in March this year.
VDPP, LLC continued to assert its image-processing patent portfolio in October, suing Jaguar Land Rover North America, LLC in the District of New Jersey on October 24th for infringement of U.S. Patent No. 9,716,874. VDPP also sued Savant Systems, Inc. on October 25th in the Southern District of New York for infringement of U.S. Patent No. 10,021,380. The ‘874 patent has now been asserted against nine different entities, while the ‘380 patent has been asserted against 51 different parties.
On October 25th, Hand Held Products, Inc. sued Scandit AG in the Northern District of Illinois for infringement of five patents relating to barcode scanning and barcode image processing. The patents are U.S. Patent Nos. 7,416,125; 7,874,485; 8,615,487; 9,384,378; and 9,659,203. On the same day, in the Eastern District of Texas, Hand Held Products, along with Honeywell International Inc., sued Scandit for infringement of another five patents relating to barcode scanning equipment. The patents in the second lawsuit are U.S. Patent Nos. 9,304,376; 9,477,856; 10,360,426; 11,816,530; and 11,928,551.
Displays
On October 10th, SVV Technology Innovations Inc. filed three lawsuits in the Western District of Texas against Acer Inc. Each lawsuit involves five different patents relating to display backlights using planar waveguides that may be used in the illumination of edge-lit displays. The patents in the first lawsuit are U.S. Patent Nos. 8,740,397; 9,678,321; 10,613,306; 10,868,205; and 11,616,157. The patents in the second lawsuit are U.S. Patent Nos. 9,880,342; 10,269,999; 10,439,089; 10,797,191; and 11,276,795. The patents in the third lawsuit are U.S. Patent Nos. 8,290,318; 10,439,088; 10,627,562; 10,838,135; and RE49,630.
Samsung Display Co., Ltd. and two other Samsung entities were partially successful in their IPR on U.S. Patent No. 7,259,521, owned by Polaris PowerLED Technologies, LLC. On October 11th, the PTAB found that all but one of the challenged claims is invalid. The ‘521 patent describes video driver architecture for an active matrix organic LED display system. Polaris PowerLED sued Samsung for infringement of the patent in December 2022.
Sensors
There appears to be a settlement between VIAVI Solutions Inc. and Platinum Optics Technology Inc. in their dispute over VIAVI’s U.S. Patent No. 11,131,794. The patent covers a near-infrared passband filter alleged to be particularly useful for gesture detection. Platinum Optics filed for an IPR on the patent at the PTAB in September 2022. Following the PTAB’s finding in April of this year that all claims of the patent are invalid, VIAVI filed a notice of appeal at the Court of Appeals for the Federal Circuit. On October 17th, the Federal Circuit announced that the parties had agreed to dismiss the appeal, suggesting that the parties had settled the dispute.
W&Wsens Devices Inc. sued Samsung Electronics Co., Ltd. and three other Samsung entities in the Eastern District of Texas on October 21st for infringement of five patents on photodetectors. The patents describe microstructure enhanced photodiodes and avalanche photodiodes that are monolithically integrated with associated circuitry such as transimpedance amplifiers. It is alleged that the microstructured semiconductors result in improved quantum efficiency and reduced avalanche voltages. The patents are U.S. Patent Nos. 9,525,084; 10,446,700; 10,468,543; 11,621,360; and 12,087,871.
Medical/dental
On October 15th, HB Direct and Huiyung Health filed a declaratory judgement action against Ongshu Tang and [email protected]. The action concerns U.S. Patent No. 12,025,904, which describes a camera assembly for an ear pick used to provide an image of the ear canal when removing wax.
On October 29th, the PTAB denied the institution of an IPR for U.S. Patent No. 10,695,151, owned by 3Shape A/S. The patent relates to methods for detecting the shade of a tooth based on an image of the tooth. The IPR had been petitioned for by Dental Imaging Technologies Corporation d/b/a DEXIS.
Lenses
On October 28th, the PTAB announced its decision to deny institution of an IPR on U.S. Patent No. 9,997,660, owned by Largan Precision Co., Ltd. Motorola Mobility LLC had petitioned for the IPR on the ‘660 patent, which is directed to imaging lens modules for cameras in handheld devices, including a light-blocking sheet for blocking stray light within the lens module.
Optical communications
On October 31st, Sterlite Technologies Inc. petitioned the PTAB to institute an IPR on U.S. Patent No. 11,287,591, owned by AFL Telecommunications LLC. The ‘591 patent discloses an optical fiber cable that contains optical fiber ribbons within a sheath, where the sheath has raised portions and recesses on its outer surface. AFL Telecommunications sued Sterlite for infringement of the ‘591 patent in October 2023.
Bio & life sciences
Masimo Corporation scored a victory in an IPR on October 1st in its continuing dispute with Apple Inc. over Apple Watches. The PTAB issued a final written decision that all claims of Apple’s U.S. Patent No. 10,942,491 are invalid. The ‘491 patent covers a watch having an optical sensor for measuring heart rate, while at the same time permitting wireless charging and/or the measurement of electrocardiogram signals.
Manufacturing
On October 4th, the PTAB instituted an IPR against 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. The petition for IPR was filed by The Boeing Company who had been sued for infringement by Laser Spallation Technologies, LLC, exclusive licensee of the ‘684 patent. It is expected that the PTAB will issue a final written decision around the beginning of October 2025.
Virtual reality/augmented reality
On October 24th, the PTAB issued an IPR written opinion that claims 12 and 16-18 of U.S. Patent No. 9,811,184, owned by DDC Technology, LLC, are invalid. The IPR was instituted following a petition by Google LLC, who had been sued by DDC Technology for infringement of the ‘184 patent.
Solar cells
Runergy Alabama Inc. and Runergy USA Inc. filed petitions at the PTAB for IPRs of U.S. Patent Nos. 9,722,104 and 10,230,009, owned by Trina Solar Co., Ltd. The patents cover semiconductor solar cells that include a tunnel layer and a polysilicon layer, which allegedly makes them more efficient. Trina Solar sued Runergy Alabama Inc. and Runergy USA Inc. for infringement of the ‘009 patent in May this year. The PTAB is expected to decide whether to institute the IPR by early April 2025. Trina Solar also sued Canadian Solar (USA) Inc., Canadian Solar US Module Manufacturing Corporation, and Recurrent Energy Development Holdings, LLC in the District of Delaware on October 8th, and initiated an ITC action on October 23rd, based on alleged infringement of the two patents.
Horticulture
On October 30th, Carbon Autonomous Robotic Systems Inc. sued Laudando & Associates LLC in the Northern District of California for infringement of U.S. Patent Nos. 12,108,752 and 12,127,547. The patents describe the eradication of weeds using an autonomous laser system. Carbon Autonomous sued Laudando for infringement of the same patents in the Eastern District of California on October 31st.
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.