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.
December’s photonics-related IP activities include 33 cases concerning various technologies, including lighting and light sources; cameras, imaging systems, and image processing; optical communications; displays; automotive applications; solar cells; medical and dental applications; sensors; augmented reality/virtual reality; manufacturing; and eyewear. Here are the summaries.
Lighting and light sources
On December 3rd, LED Apogee LLC sued Texas Instruments Incorporated, Kinetic Technologies, and Onsemi in separate lawsuits for infringement of U.S. Patent No. 6,982,527. The patent describes a method for driving an LED using a current mirror as a reference voltage.
On December 4th, the Court of Appeals for the Federal Circuit (CAFC), the appeals court with jurisdiction for patent cases, issued an opinion relating to an Inter Partes Review (IPR) on U.S. Patent No. 10,644,213, owned by the University of California. The patent relates to an LED light bulb formed of multiple nitride layers on sapphire, with a particular configuration of the anode and cathode. In the IPR, brought by Satco Products, Inc., the Patent Trial and Appeal Board (PTAB) found that the challenged claims of the patent were invalid. The CAFC partially overturned the PTAB’s ruling, stating that the PTAB had mistakenly relied on features in one of the prior art patent’s drawings to determine whether the claimed anode and cathode were present in the prior art. The case has been remanded to the PTAB for a new decision based on the CAFC’s interpretation of the prior art.
On December 9th, two petitions for IPRs were filed at the PTAB against U.S. Patent No. 8,604,678, owned by Feit Electric Company, Inc. The patent concerns an LED light source having a light diffusion layer and a wavelength conversion layer that transmits light having a wavelength greater than 440 nm. The first IPR, addressing a first subset of claims, was filed by Elong International USA, Inc. and Xiamen Longstar Lighting Co., Ltd. The other IPR was filed by the same entities in addition to Savant Technologies LLC d/b/a GE Lighting, and addressed four claims not covered in the first IPR. Feit sued Elong and Savant for infringement of the ‘678 patent in separate lawsuits in May 2024. The PTAB will decide whether to institute the IPRs by mid-June 2025.
On December 10th, the PTAB agreed to institute IPRs on two patents owned by Everlight Electronics Co., Ltd. The IPRs had been sought by IKEA Supply AG, after Everlight sued IKEA for infringement of the patents in 2023. The patents describe a carrier leadframe for receiving an LED chip and a device made from the leadframe. The patents are U.S. Patent Nos. 9,640,733 and 9,905,742. The PTAB refused to institute an IPR for Everlight’s U.S. Patent No. 7,554,126.
On December 11th, BridgeComm LLC sued International Development Corporation in the Eastern District of Texas for infringement of U.S. Patent Nos. 8,203,275 and 8,390,206. The patents describe an LED lighting system that is controlled to produce light displays of different colors.
On December 16th, Supronics LLC sued Home Depot USA, Inc. in the Western District of Texas for infringement of three patents relating to LEDs having electrode extensions that mitigate the reduction in light-emitting area due to the formation of electrode extensions, and driver circuits for LEDs. The patents are U.S. Patent Nos. 7,081,722; 7,439,944; and 8,525,212.
On December 18th, CreeLED, Inc. sued ADJ Products LLC in the Central District of California for infringement of 10 patents relating to LED lighting, particularly surface mounting of LED substrates. The patents are U.S. Patent Nos. 7,718,991; 8,049,230; 8,487,337; 8,748,915; 8,901,583; 9,054,257; 9,240,395; 9,634,209; D684545; and D704358.
Cameras, imaging systems, and image processing
On December 5th, DigiMedia Tech LLC sued Nissan Motor Co., Ltd. in the Eastern District of Texas for infringement of U.S. Patent Nos. 6,567,086 and 6,741,250. The patents relate to an immersive video system using multiple video streams, and to a method for generating multiple viewpoints of a scene using motionless cameras to present a view path. DigiMedia also sued General Motors LLC on the same two patents, along with U.S Patent No. 6,684,220, which describes automatic information exchange.
On December 12th, the PTAB instituted an IPR on U.S. Patent No. 7,612,805, owned by Optimum Imaging Technologies LLC. The IPR was instituted at the request of Sony Corporation, who was sued by Optimum Imaging for infringement of the patent in October 2023. The patent relates to digitally compensating for optical aberrations by filtering the digital image produced by a camera system. The PTAB should issue a final opinion on the validity of the patent by mid-December 2025.
VDPP, LLC continued to assert its image-processing patent portfolio in December, suing GE HealthCare Technologies Inc. in the Western District of Texas on December 30th for infringement of U.S. Patent Nos. 9,699,444 and 9,716,874. The patents describe a system in which 2D motion pictures can be viewed in part as 3D motion pictures. VDPP also sued Konica Minolta Business Solutions USA, Inc. in a separate lawsuit for infringement of the ‘874 patent. The ‘444 patent has now been asserted against 25 different parties, while the ‘874 patent has been asserted against 12 different parties.
On December 30th, Tesla, Inc. filed a petition for an IPR on U.S. Patent No. 7,916,180, owned by Intellectual Ventures II LLC. The patent, which covers digital cameras having simultaneous multiple fields of view, was previously asserted against Tesla in a patent infringement suit by Intellectual Ventures. The PTAB is expected to decide whether to institute the IPR by the beginning of July 2025.
On December 30th, the PTAB instituted an IPR for U.S. Patent No. 8,482,638, owned by 138 East LCD Advancements Limited. The patent describes a digital camera that generates a composite image from a main image and a sub-image. The IPR was instituted at the request of Google LLC, who was sued for infringement of the patent in June 2023. The PTAB should issue a written opinion on the IPR by the end of December this year.
On December 31st, LG Electronics USA, Inc. and LG Electronics, Inc. filed a petition for IPR on U.S. Patent No. 8,339,493, owned by Maxell, Ltd. f/k/a Hitachi Maxell, Ltd. The patent describes operating a digital camera in different modes, depending on whether it is obtaining a static image or a video image. Maxell previously sued LG for infringement of the patent. The PTAB will decide whether to institute the IPR by the end of June 2025.
Optical communications
On December 2nd, Cisco Systems Inc. petitioned for an IPR on U.S. Patent No. 8,441,721, owned by Nokia of America Corporation f/k/a/ Alcatel-Lucent USA Inc. The patent describes a method of controlling a Raman pump amplifier to correct the levels of different optical channels in a fiber. The PTAB should decide whether to institute the IPR by the beginning of June 2025.
Applied Optoelectronics, Inc. sued Accelight Technologies, Inc. in the Northern District of California on December 13th for infringement of six patents relating to optical transceiver technology. The patents are U.S. Patent No. 9,448,367; 9,523,826; 10,042,116; 10,313,024; 10,379,301; and 10,788,690.
On December 13th, the PTAB instituted an IPR for U.S. Patent No. 9,806,892, owned by Iarnach Technologies Limited. The patent covers power management for optical network units in passive optical networks. The IPR was instituted at the request of Nokia of North America Corp. and AT&T Services, Inc. after Ianarch sued AT&T in May 2023 for infringement of the patent. The PTAB is expected to issue a final written opinion by mid-December 2025.
On December 14th, Optimum Communication Services, Inc. and Mark Sandstrom filed a complaint with the ITC, alleging infringement of two patents by products being imported to the U.S. by Changsha Silun Network Technology Co. Ltd.; Guangzhou Qiton Electronics Technology Co., Ltd.; Hunan Maiqiang Network Technology Company Limited; and Hunan Zikun Information Technology Co. Ltd. The patents, U.S. Patent Nos. 10,567,474 and 10,848,546, are alleged to cover passive optical network equipment supporting the NETCONF protocol.
Displays
On December 13th, the PTAB issued a final written opinion in an IPR for U.S. Patent No. 7,414,599, owned by Samsung Display Co., Ltd., finding all challenged claims to be valid. The patent discloses an OLED pixel circuit. The IPR was instituted at the request of Mianyang BOE Optoelectronics Technology Co., Ltd.; Tianma Microelectronics Co., Ltd.; Visionox Technology, Inc.; and Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. Samsung sued BOE Technology Co., Ltd. and Mianyang BOE Optoelectronics for infringement of the patent in June 2023.
BOE Technology Group Co., Ltd. received mixed results from the PTAB for the IPRs they requested on three patents owned by 138 East LCD Advancements Limited. The PTAB agreed to institute an IPR on U.S. Patent No. 9,184,157, but declined IPRs on U.S. Patent Nos. 7,502,079 and 9,557,606. The patents relate to driving circuits for active LCD displays. The PTAB will issue a final written decision on the ‘157 patent by mid-December 2025. BOE Technology was sued for infringement of the patents by 138 East LCD’s licensee, Longitude Licensing Limited in 2023.
On December 18th, Corning, Inc. initiated an action at the International Trade Commission (ITC) to prohibit the importation of glass substrates for liquid crystal displays, products containing the glass substrates, and methods of making them, based on the infringement of three patents, U.S. Patent Nos. 7,851,394; 8,627,684; and 9,512,025. The responding parties are Caihong Display Devices Co., Ltd. d/b/a/ Iroco Display Devices Co., Ltd.; Hisense USA Corporation; HKC Corporation Limited; HKC Overseas Limited; LG Electronics USA, Inc.; TCL China Star Optoelectronics Technology Co., Ltd.; TTE Technology, Inc. d/b/a TCL North America; Vizio, Inc.; and Xianyang Caihong Optoelectronics Technology Co., Ltd. On the following day, Corning sued Caihong Display, both HKC entities, TCL China Star, and Xianyang Caihong Optoelectronics in the Eastern District of Virginia for infringement of the same three patents.
Automotive applications
Mercedes-Benz USA, LLC scored a victory when the PTAB found the 74 claims challenged in two IPRs on U.S. Patent No. 9,955,551, owned by Yechezkal Evan Spero were invalid. The patent describes a system for automatically redirecting a light beam based on detection of objects in the light beam.
On December 12th, Peregrine Data LLC sued Solara Holdings, LLC, d/b/a Omnitracs in the Northern District of Texas for infringement of U.S. Patent No. 8,319,619. The patent describes a system of cameras on a vehicle providing 360° coverage.
Solar cells
Shanghai Jinko Green Energy, Enterprise Management Co., Ltd., and Zhejiang Jinko Solar Co., Ltd. sued multiple defendants, including Abalance Corporation, FUJI Solar Co., Ltd., Toyo Co., Ltd., three Vietnam Sunergy entities, VSUN Solar USA Inc., and WWB Corporation in the Northern District of California for infringement of U.S. Patent Nos. 11,581,454 and 11,824,136. The patents relate to a solar cell, a method of making the solar cell, and a photovoltaic module.
On December 10th, CyboEnergy, Inc. sued Duracell Power Center, LLC in the Northern District of California for infringement of two patents relating to power inverters used to connect solar cells to the power grid. The patents are U.S. Patent Nos. 9,331,488 and 9,331,489.
Medical/dental applications
On December 27th, Biofrontera Inc. and three other Biofrontera entities filed a petition with the PTAB to institute an IPR on U.S. Patent No. 11,446,512, owned by Sun Pharmaceutical Industries, Inc. The patent describes an adjustable illuminator for photodynamic therapy. Sun sued Biofrontera for infringement of the patent in June 2024. The PTAB should decide whether to institute the IPR by the end of June this year.
Sensors
On December 20th, Omni MedSci, Inc. sued Fossil Group, Inc.; Fossil Partners, LP; Fossil Stores I, Inc.; OnePlus Technology (Shenzen) Co., Ltd.; Oura Health OY; Samsung Electronics America, Inc. f/k/a Samsung Telecommunications America LLC; and Samsung Electronics Co., Ltd. in the Eastern District of Texas for infringing five patents. The patents, which describe wearable devices that measure various physiological parameters and communicate physiological data to smartphones and tablets, are U.S. Patent Nos. 9,055,868; 9,651,533; 10,517,484; 10,874,304; and 11,160,455.
Augmented reality/virtual reality (AR/VR)
On December 3rd, the PTAB announced its decision to institute an IPR on U.S. Patent No. 8,982,109, owned by EyesMatch Ltd. The IPR was requested by Google LLC, Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. The Samsung entities were sued by EyesMatch for infringement of the patent in August 2023. The PTAB should issue a decision on the IPR by early December 2025. On December 20th, Microsoft Corporation filed petitions for IPRs against the ‘109 patent and U.S. Patent No. 8,982,110, also owned by EyesMatch. The patents relate to AR display systems.
Manufacturing
On December 4th, Intrepid Automation, Inc. sued 3D Systems Corp. and 3D Systems, Inc. in the Southern District of California for infringement of U.S. Patent Nos. 11,014,301 and 11,338,511. The patents describe a multiple image projection system for additive manufacturing.
Eyewear
On December 31st, the PTAB instituted an IPR for U.S. Patent No. 10,598,960, owned by e-Vision Optics, LLC. The patent describes electronically enhanced eyewear that includes modules for different applications, such as wireless connectivity and responding to spoken inquiries. The IPR is the result of a petition by Luxottica of America Inc., who was sued by e-Vision Optics for infringement of the patent in October 2023. The PTAB is expected to produce a final written decision by the end of December this year.
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.