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.
November’s photonics-related IP activities include 31 cases concerning various technologies, including imaging systems and image processing; displays; lighting and light sources; sensors; medical and dental applications; optical communications; biological and life sciences applications; virtual reality/augmented reality; solar cells; wearable products; and self-driving cars. Here are the summaries.
Cameras, imaging systems, and image processing
VDPP, LLC continued to assert its image-processing patent portfolio in October, suing Ford Motor Company in the Eastern District of Michigan on November 1st for infringement of U.S. Patent Nos. 9,716,874 and 10,021,380. The patents describe a system in which 2D motion pictures can be viewed in part as 3D motion pictures. VDPP also sued TP-Link Systems Inc. and Kyocera International, Inc. f/k/a Kyocera Communications Inc. in separate lawsuits for infringement of the ‘380 patent. Additionally, VDPP sued Subaru of America, Inc. and Continental Automotive systems, Inc. in separate lawsuits for infringement of the ‘874 patent as well as U.S. Patent No. 9,699,444. The ‘874 patent has now been asserted against 12 different parties, while the ‘380 patent has been asserted against 54 different parties and the ‘444 patent against 28 parties.
On November 7th, the Patent Trial and Appeal Board (PTAB) at the Patent Office instituted Inter Partes Reviews (IPRs) against U.S. Patent Nos. 10,176,848 and 11,223,757, owned by Maxell Ltd. f/k/a Hitachi Maxell, Ltd. The IPRs were brought by Samsung Electronics Co., Ltd. The patents cover various arrangements of video recording devices, such as the inclusion of face recognition properties and cameras on opposing sides of the devices.
On November 15th, Longhorn Automotive Group LLC sued Volkswagen AG in the Eastern District of Texas for infringement of patents relating to car and engine technology. 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.
On November 18th, the PTAB instituted two IPRs against respective patents owned by Optimum Imaging Technologies LLC. The patents relate to digital imaging systems for correcting video image aberrations. Optimum sued Sony Corporation for infringement of the patents in 2023, which prompted Sony to petition for the IPRs. The patents are U.S. Patent Nos. 8,451,339 and 10,873,685.
Displays
On November 13th, Baker Laser Technology, LLC sued Seiko Epson Corporation in the Eastern District of Texas for infringement of U.S. Patent No. 9,185,373. The patent describes a device that includes at least two semiconductor lasers for projecting a video image onto a surface.
On November 19th, Optoma Technology, Inc. filed a declaratory judgement action against Maxell, Ltd. f/k/a/ Hitachi Maxell, Ltd. in the Northern District of California for three patents that relate to projection display devices. The patents are U.S. Patent Nos. 7,159,988; 9,565,388; and 9,900,569.
On November 19th, the PTAB announced it would not institute an IPR against U.S. Patent No. 8,314,547, owned by Pictiva Displays International Limited. The patent relates to the use of a wavelength conversion layer in an OLED display. Samsung Display Co., Ltd. had petitioned for the IPR after Pictiva sued it for infringement.
The PTAB gave mixed news to Giesecck+Devrient GmbH f/k/a Gieseke & Devrient GmbH in its attempt to initiate IPRs against patents owned by Lumenco, LLC. The PTAB agreed to institute IPRs against U.S. Patent Nos. 10,189,294; 10,901,191; and 11,448,863, but refused to institute an IPR against U.S. Patent No. 10,317,691. The patents relate to arrays of individually oriented micromirrors for use in imaging security devices. Lumenco sued Giesecck+Devrient for infringement of the patents in 2023.
Lighting and light sources
Elmose Semiconductor SE was denied institution of an IPR by the PTAB on November 5th for U.S. Patent No. 11,653,432. The patent, owned by Texas Instruments Incorporated, covers an LED drive circuit with slew-rate control.
On November 14th, Allanson Lighting Technologies, Inc. sued Chikee Electrical Motor & Appliance Industrial Co., Ltd. in the Western District of New York for infringement of five patents relating to LED lighting and lighting fixtures. The patents are U.S. Patent Nos. 10,801,680; 11,384,909; 11,644,162; D850695; and D921268.
BridgeComm LLC sued Shenzhen Ustellar Technology Ltd. (Novostella); Honeywell International Inc.; Samsung Electronics America, Inc f/k/a Samsung Telecommunications America LLC; and Govee Moments Trading Ltd. in separate lawsuits in the Eastern District of Texas for infringement of U.S. Patent Nos. 8,203,275 and 8,390,206. The patents relate to a variable-effect lighting system having lamps that emit light at different colors, and controlling each lamp so as to control the color of light emitted by the system.
Sensors
On November 7th, NetzVision LLC and Shimon Maimon sued the United States of America in the Court of Federal Claims for infringement of five patents relating to mid-infrared semiconductor photodetectors having reduced dark current. The patents are 7,687,871; 11,264,528; 11,462,657; 11,817,522; and RE48,642.
Samsung Electronics Co., Ltd. filed petitions for IPRs on U.S. Patent Nos. 9,064,764; 9,905,599; 10,224,359; 10,347,682; and 11,721,714. The patents are owned by SiOnyx, LLC. SiOnyx sued Samsung for infringement of the patents in June this year. The patents relate to semiconductor imaging detectors, covering shallow trench textured regions and pixel isolation elements.
Optical communications
On November 19th, Applied Optoelectronics, Inc. sued Eoptolink Technology USA, Inc. in the Northern District of California for infringement of six patents relating to optical transceivers for optical communications. The patents are U.S. Patent Nos. 9,448,367; 9,509,433; 10,230,470; 10,578,818; 10,714,890; and 11,177,887.
On November 25th, the PTAB denied institution of an IPR against U.S. Patent No. 8,934,359, owned by Iarnach Technologies Ltd. The petition for IPR had been filed by Nokia Corporation of America f/k/a Alcatel-Lucent USA Inc. The patent describes a passive optical network system for managing uplink burst overhead parameters.
Biological & life sciences applications
On November 6th, the PTAB issued decisions in two IPRs on U.S. Patent No. 10,687,745, owned by Masimo Corporation. The IPRs were instituted at the request of Apple Inc. as part of the ongoing dispute between the two companies over the inclusion of physiological monitoring capabilities on smart watches. Masimo’s patent covers a physiological monitor that uses a plurality of LEDs, a material to change the shape of the light beam emitted by the LEDs, and a light block to prevent light from the LEDs from reaching the detector photodiodes. In the first IPR, the PTAB found that all the challenged claims, claims 1, 9, 15, 18, 20, and 27, were invalid. In the second IPR, the PTAB found that, of the remaining claims, only claims 13 and 25 were valid, the rest being invalid.
In related news, a Delaware jury found that Masimo infringed two of Apple’s smart watch design patents but did not infringe a third, and that Masimo did not infringe any of the three smart watch utility patents asserted against Masimo by Apple. Masimo was found liable for an amount of $250. The infringed patents are D735131 and D947842. The patents not infringed are 10,627,783; 10,987,054; 11,474,483; and D883279.
Virtual reality (VR)/augmented reality (AR)
The PTAB handed Google LLC a partial victory in its dispute with DDC Technology, LLC over VR viewers and input mechanisms. DDC Technology sued Google for infringement of five VR patents in March 2023 and Google filed for IPRs on the patents shortly thereafter. The PTAB issued final written decisions for two of the patents on November 4th, finding that 6 of the 21 challenged claims in U.S. Patent No. 10,528,199 are invalid, and that all but two of the 30 challenged claims in U.S. Patent No. 11,093,001 are invalid. In a further decision issued on November 8th, the PTAB found that the challenged claims of U.S. Patent No. 9,811,184, claims 12 and 16-18, are invalid. In a decision issued on November 14th, the PTAB confirmed the validity of the claims in U.S. Patent No. 9,420,075.
On November 26th, the PTAB instituted an IPR for U.S. Patent No. 8,982,110, owned by EyesMatch Ltd. The patent covers a method of transforming an image of a user in an AR system. Samsung Electronics Co. Ltd. petitioned for the IPR, after being sued for infringement by EyesMatch in August.
Solar cells
On November 18th, the PTAB stated it would not institute an IPR on U.S. Patent No. 10,992,254, owned by Shoals Technologies Group, LLC. The patent relates to a lead assembly for connecting solar panel arrays to an inverter. The petition for the IPR had been filed by Voltage, LLC, who had been sued for infringement by Shoals. The PTAB also refused to institute an IPR against U.S. Patent No. 10,553,739, which relates to a photovoltaic in-line fuse connector assembly.
On November 22nd, Adani Solar USA Inc. and Mundra Solar PV Ltd. filed for an IPR for U.S. Patent No. 9,722,104, owned by Trina Solar Co., Ltd. The patent covers a semiconductor solar cell that includes various structures on a substrate, including a tunnel layer, passivation layers, and an isolation portion.
Medical/dental applications
On November 12th, the PTAB refused to institute an IPR against U.S. Patent No. 11,697,028, owned by DUSA Pharmaceuticals Inc, n/k/a Sun Pharmaceutical Industries, Inc. The patent covers an adjustable illuminator for photodynamic therapy and diagnosis. The PTAB stated that Biofrontera AG and three other Biofrontera entities had failed to show a reasonable likelihood that the challenged claims were obvious. The ‘028 patent is the subject of patent infringement actions taken by Sun against Biofrontera in federal court and at the ITC.
Wearable products
On November 12th, IngenioSpec, LLC sued Meta Platforms Technologies, LLC, f/k/a Facebook Technologies, LLC, and Meta Platforms, Inc. f/k/a Facebook, Inc. in the Northern District of California for infringement of U.S. Patent Nos. 10,310,296 and 12,078,870. The patents cover eyewear that include printed circuits and rechargeable batteries.
Self-driving vehicles
On November 7th, Mobileye Vision Technologies Ltd. and Mobileye, Inc. sued Facet Technology Corp. in the District of Minnesota for infringement of U.S. Patent Nos. 9,335,255 and 9,671,328. The patents cover technology for identifying and categorizing road signs that is applicable to autonomous vehicles.
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.