Light-Pod is a Philadelphia area company that designs solid state lighting fixtures for the military and commercial businesses.  A recent lawsuit involving the company is a cautionary tale about an LED patent and technology licensing deal gone bad.

In a complaint filed earlier this month in New Jersey, Light-Pod accuses Laser Energetics of breach of contract, fraud, and deceptive trade practices (among other things) for allegedly misrepresenting its financial and business status and failing to make payments under the licence agreement.

In March 2012 the two companies entered into an exclusive license agreement under which Light-Pod granted to Laser Energetics an exclusive license to its lighting fixture technology, patent rights, know-how, and other IP rights.  The technology involved relates to military qualified LED driver designs and new LED optical and fixture designs for Navy fixtures.

Light-Pod owns at least two U.S. patents and one pending patent application, U.S. Patent No. 7,637,628, U.S. Patent No. 7,993,032 and U.S. Application Publication No. 2011/0285041, each entitled “LED light pod with modular optics and heat dissipation structure.”

According to the complaint, Laser Energetics made a number of material misrepresentations to induce Light-Pod to enter into the licensing deal.  These included:

that Laser Energetics was well funded and had sufficient infrastructure and resources to properly develop, manufacture, market and sell the lighting fixtures;

that Laser Energetics had the financial means to make monthly payments to Light-Pod;

that Laser Energetics had an agreement with a company called CACI International to provide funding to help launch the lighting fixtures;

that Laser Energetics had an agreement with the Saudi Arabian government to purchase its technology;

that Laser Energetics had developed a legitimate business plan projecting light fixture sales of over $250 million over seven years; and

that Laser Energetics was hiring a particular individual as lead engineer in connection with production of the light fixtures.

The narrative in the complaint indicates that Laser Energetics initially approached Light-Pod about a potential licensing deal in January 2012, and the agreement was executed on March 9, 2012. 

One wonders if a longer negotiating timeline with more due diligence on the front end might have avoided the need for litigation on the back end.

LED lighting remains the hottest area of green patent litigation, with several complaints filed in the last several weeks.  Green patent complaints were recently filed in the areas of advanced batteries and solar powered lighting as well.

Advanced Batteries

Celgard, LLC v. SK Innovation Co., Ltd.

Celgard is a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries.  On April 26, 2013, Celgard filed a patent infringement complaint against SK Innovation (SK) in federal court in Charlotte, North Carolina.

The complaint alleges that SK is directly infringing and inducing infringement of U.S. Patent No. 6,432,586 (’586 Patent) by selling lithium ion battery separators to its customers knowing that the separators will be incorporated into finished lithium ion batteries.

The ’586 Patent is entitled “Separator for a high energy rechargeable lithium battery” and directed to a separator including a ceramic composite layer and a polyolefinic microporous layer.  The ceramic layer has a matrix material and is adapted to block dendrite growth and prevent electronic shorting.

Celgard asserted the ’586 Patent against Sumitomo in February.

Solar Powered Lighting

Richmond v. Lumisol Electrical Ltd. et al.

On March 27, 2013, Simon Nicholas Richmond filed suit against a number of defendants including Lumisol Electrical, Ningbo Hangshun Electrical, and Costco for alleged infringement of three U.S. patents relating to a solar power lighting assembly and one patent relating to a wind indicator illuminated by solar power. 

The asserted lighting assembly patents are part of the same family and include U.S. Patent Nos. 7,196,477, 7,429,827 and 8,362,700, each entitled “Solar powered light assembly to produce light of varying colors.”  The fourth patent is U.S. Patent No. 8,089,370, entitled “Illuminated wind indicator.”

The accused products include the Color-Changing Sun and Moon Solar Stake Path Light sold under the brand name Celestial Series Sun and Moon Light.

LEDs

Lighting Science Group Corporation v. Cree, Inc.

Florida LED lighting company Lighting Science Group (LSG) recently sued North Carolina-based Cree for infringement of U.S. Patent No. 8,201,968, entitled “Low profile light” (’968 Patent).

Filed April 10, 2013 in federal court in Orlando, the LSG complaint alleges that Cree infringes at least claims 1-6, 9, 14, 17-20 and 22 of the ’968 Patent by its manufacture and sale of the T67 LED Downlight product.

The ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.

Nicholas Holiday, Inc. v. 1 Energy Solutions, Inc.

On April 1, 2013, Nicholas Holiday brought a declaratory judgment action against 1 Energy Solutions (1 Energy) in U.S. District Court for the District of South Carolina. 

The patent at issue is 1 Energy’s U.S. Patent No. 7,045,965 (’965 Patent), granted in 2006, and issued as a reissue patent on January 1, 2013.  The ’965 Patent is entitled “LED light module and series connected light modules” and relates to a more reliable light module having LEDs connected in parallel for use in light strings such as Christmas lights.

According to the complaint, Nicolas Holiday has intervening rights because it began making and selling various light string sets in 2008, including the Energy Smart LED C-5 and the Energy Smart 50 LED Colorite Miniature Lights light string products. 

Nicholas Holiday is requesting a declaratory judgment that the reissue patent is invalid, its products do not infringe the reissue patent, and that it may continue to make, use and sell its LED light string products.

Relume Corporation Trust v. Swarco America, Inc. et al.

Relume filed a patent infringement complaint against Swarco and Philips Lumileds on March 27, 2013 in U.S. District Court for the District of Delaware.  The complaint asserts RE 42,161, entitled “Power supply for light emitting diode array” (’161 Reissue), which is a reissue of U.S. Patent No. 5,661,645.

The ’161 Reissue is directed to a power supply apparatus and system for providing power to LEDs, particularly LED array traffic signals.  The accused products are are Swarco’s FUTURLED ITE traffic signal modules.

Trustees of Boston University v. Amazon.com.

On May 2, 2013, Boston University (BU) sued Amazon in U.S. District Court for the District of Massachusetts.  The complaint asserts U.S. Patent No. 5,686,738 (’738 Patent). 

The ’738 Patent is entitled “Highly insulated monocrystalline gallium nitride thin films” and directed to gallium nitride semiconductor devices and methods of preparing highly insulating GaN single crystal films in a molecular beam epitaxial growth chamber.

BU allegs that certain Kindle Paperwhite and Fire devices contain infringing LEDs.

Jam Strait, Inc. v. Osram Sylvania, Inc.

A Mississippi company called Jam Strait recently sued Osram Sylvania in U.S. District Court for the Eastern District of Louisiana for alleged infringement of a patent relating to LEDs used in motor vehicles.

Filed April 29, 2013, the complaint asserts that Sylvania’s 168/194/2825 LED light infringes U.S. Patent No. 6,786,625 (’625 Patent).

The ’625 Patent is entitled “LED light module for vehicles” and directed to an LED lamp module for use in vehicle tail lights.  According to the ’625 Patent, the module has integrated dual element control circuitry, voltage and current control circuitry, brightness enhancement circuitry, and LED circuitry built in to produce a bright, reliable, long life, energy efficient LED lamp that fits all vehicles.

A previous post reported on GE’s patent infringement suit against AgiLight asserting several patents relating to LED string light engine structures and assembly methods. 

In a recent decision the U.S. District Court for the Northern District of Ohio granted AgiLight’s motion for summary judgment on the remaining claims of two patents, U.S. Patent Nos. 7,633,055 (’055 Patent) and 7,832,896 (’896 Patent).

The ’055 and ’896 Patents are entitled “Sealed light emitting diode assemblies including annular gaskets and method of making same” and “LED light engine,” respectively.

A key claim term at issue with respect to the ’055 Patent was an “annular gasket,” which the court had previously interpreted to require an opening in its center that is capable of sealing off its center area. 

GE argued that the blue element in Figure 1 below meets the “annular gasket” element because it is brought into direct sealing contact with a hollow opening (or socket) in the tooling mold to seal off the center of the opening.

The court disagreed because the AgiLight device has multiple openings and GE’s argument would encompass any concave structure, citing precedents more likely to be found at a pâtisserie than a semiconductor fab:

This interpretation goes too far.  First, even accepting GE’s argument, AgiLight’s design has multiple openings in a single blue element to house LEDs, not “an opening.”  Second, under GE’s understanding, the term “opening” would be synonymous with the inside of any concave surface.  The Court declines to give “opening” such a strained meaning.  Simply put, a croissant is not a donut.

On the ’896 Patent, the claim term at issue was a “substantially ellipsoidal inner profile” to increase the spread of the LED’s light.  The court held this feature was lacking from the accused device because it has important portions that are conical, not ellipsoidal:

The Court finds the “substantially ellipsoidal inner profile” lacking from AgiLight’s designs.  In particular, to the sides of what is arguably an ellipsoidal portion of AgiLight’s lens appears a portion that is conical, and not ellipsoidal.  The Sasian Declaration, which is unrebutted, explains that “[i]t is through the use of all three portions [spherical, cylindrical, and conical] of the inner surface of the lens that the lens used in the AgiLight products widens the pattern of light rays emitted by the LED over which the lens is placed.”  Given the importance of the conical portions of AgiLight’s lens the Court finds that the entirety of the lens cannot be considered substantially ellipsoidal.

Accordingly, the court granted AgiLight’s motion for summary judgment that it does not infringe the ’055 and ’896 Patents.

There were significant developments recently in a couple of LED patent lawsuits.  First, in GE Lighting v. AgiLight, previously discussed here, the parties submitted a joint stipulation stating that two of the LED string light engine patents asserted by GE are not infringed.

The parties stipulated that the court’s construction of the claim term “IDC Connector” - a two-part housing, with one part including four electrical terminals, the housing being able to snap together to enclose three insulated conductors – means that U.S. Patent Nos. 7,160,140 and 7,520,771 do not read on AgiLight’s products.

The parties requested entry of partial summary judgment of non-infringement.  GE, of course, did not concede the propriety of the court’s claim construction, and entered into the stipulation to facilitate a prompt appeal of the claim construction decision.

A previous post discussed UK-based Litepanels‘ infringement action in the U.S. International Trade Commission (ITC) involving three patents relating to LED lighting systems for use in film and TV production.  The ITC complaint was filed in August 2011 against several U.S. and Chinese companies.

In September 2012 an administrative law judge (ALJ) at the ITC found a violation of at least one claim of each of U.S. Patent Nos. 6,948,823 (’823 Patent), 7,318,652 (’652 Patent) and 7,972,022 (’022 Patent).

Last month the ITC issued a Notice of Final Determination imposing a general exclusion order, a sweeping remedy that bars importation of any LED devices that infringe the ’652 and ’022 Patents, not just those imported by respondents Flolight and Cool Lights.  The ITC reversed the ALJ’s findings of infringement of the ’823 Patent. 

The ITC imposed the general exclusion order as well as a 43% bond on any infringing products imported pending Presidential review of its decision:

The Commission has further determined that the appropriate remedy is a general exclusion order prohibiting from entry LED photographic lighting devices and components thereof that infringe claims 1, 57, 58, and 60 of the ’022 patent and claims 1-2, 5, 16, 18-19, 25, and 27 of the ’652 patent….Finally, the Commission has determined that a bond in the amount of 43 percent of the entered value is required to permit temporary importation during the period of Presidental review of LED photographic lighting devices and components thereof that are subject to the order.