Lighting, light sources, cameras, and imaging technology feature heavily in this month’s Photonics IP Update

April 3, 2024
This roundup summarizes 52 photonics-related patent litigation and Patent Office procedures for March.

March’s photonics-related IP activities include 52 cases concerning various technologies, including optical communications, bio & life sciences, sensing, augmented and virtual reality (AR/VR), LiDAR, displays, and laser manufacturing. Here are the summaries.

Lighting and light sources

Feit Electric Company, Inc., sued Savant Technologies LLC d/b/a/ GE Lighting on March 13 in Federal Court in the Northern District of Ohio for infringement of its U.S. Patent No. 8,604,678. The patent covers a phosphor/diffuser combination for wavelength conversion in LED filament lightbulbs. Feit sued Ledvance LLC for the infringement of the same patent last month.

On March 14, Nichia Corporation petitioned for Inter Partes Review (IPR) on U.S. Patent No. 8,567,988 with the Patent Trial and Appeals Board (PTAB). An IPR is an administrative proceeding within the Patent Office to review the validity of patent claims. The ‘988 patent, owned by BX LED LLC, covers efficient LED arrays formed by mounting LED chips on a reflective metal surface. On March 22, Nichia filed a second IPR petition at the PTAB requesting the invalidation of BX LED’s U.S. Patent No. 7,973,465. The ‘465 patent covers a light-emitting device having a phosphor on a cured silicone film. BX LED previously asserted these patents against several parties, including Home Depot, Lowe’s, and Walmart, but not against Nichia. Although most IPR petitions are filed by defendants in a pending patent infringement litigation, non-litigants can file IPR petitions. For example, a non-litigant may wish to invalidate a patent they consider an obstruction to entering a market or a patent asserted against a valuable customer.'

On March 14, a judge in the Northern District of Illinois found by Summary Judgment that certain products sold by Cooper Lighting LLC and others infringed patents owned by Kenall Manufacturing Company. The patents relate to modular lighting fixtures that are extendable. The patents, all in the same family, are U.S. Patent Nos. 6,984,055; 7,494,241; 8,550,656; 9,476,550; RE45,563; and RE45,591. The lawsuit will continue to determine validity and damages.

Lexington Luminance LLC sued TCL Electronics Holdings Ltd. and TCL Industries Holdings Co. Ltd. in Federal Court in the Western District of Texas for infringement of U.S. Patent No. 6,936,851 on March 19. The ‘851 patent covers semiconductor light-emitting devices, such as LEDs, that have reduced lattice defects in the active region because of surface structure on the substrate and a first layer between the substrate and active layer. TCL is the 34th party accused of infringing the ‘851 patent.

On March 20, the PTAB agreed to institute an IPR to review the validity of U.S. Patent No. 8,941,331, owned by Brightplus Ventures LLC. The ‘331 patent claims a lighting system that includes at least two strings of solid-state lighting devices, such as LEDs, with respective current supply circuits that are controlled by pulse width modulation. Hisense USA Corporation first filed a declaratory judgment action against Brightplus in July 2022, asking the Court to declare that its products do not infringe several patents owned by Brightplus, including the ‘331 patent. Brightplus countersued in September 2022, accusing Hisense of infringing the patents. In September 2023, Hisense petitioned the PTAB to institute IPR proceedings against five of those patents, including the ‘331 patent. The PTAB has now instituted IPRs against three of the patents, with no decisions yet on the remaining two.

On March 25, Kohler Co. petitioned the PTAB to open an IPR to review the validity of U.S. Patent No. 10,393,363, owned by Delta Faucet Company. The ‘363 patent covers a showerhead with an integrated light source. Delta has not asserted the ‘363 patent against Kohler, which suggests Kohler is looking to invalidate the patent before marketing a product like that described in the patent.

Cameras and image processing

VDPP continued to assert its image-processing patent portfolio in various U.S. District Courts. The parties sued in March include Honeywell, Razer USA Ltd. d/b/a Razer, Inc., HP (formerly Hewlett Packard), Boxlight Corp., Christie Digital Systems USA, Inc., NEC Corporation of America, Canon USA Inc., JVCKenwood USA Corporation, Best Buy Co. Inc., BenQ America Corp., Mazda Motor of America, Inc., Motorola Mobility LLC, Mercedes-Benz USA LLC, ViewSonic Corporation, Vivitek Corporation, Xiaomi USA LLC, and Sim2 USA, Inc. Each defendant was accused of infringing at least one of four U.S. Patents, namely 9,426,452; 9,948,922; 10,021,380; and 10,951,881. VDPP has now asserted the ‘452 patent against 17 parties, the ‘922 patent against 31 parties, the ‘380 patent against 22 parties, and the ‘881 patent against eight parties.

On March 11, the Court of Appeals for the Federal Circuit, the appeals court that hears patent cases, dismissed an appeal of an IPR between Apple Inc. and Corephotonics, Ltd. Apple had successfully petitioned for an IPR to reconsider the validity of some claims of Corephotonics’s U.S. Patent No. 10,015,408, but the PTAB had found the claims to be valid. The patent addresses the problem of users detecting a discontinuity in the image when a dual aperture camera, having Wide and Tele camera subunits, switches between images from the two subunits when operating in zoomed video mode. The dismissal requires both parties’ agreement, suggesting that some partial settlement has taken place. The ‘408 patent is one of several patents that Corephotonics accused Apple of infringing in its lawsuit filed in 2019, but which is stayed and awaiting the outcome of IPRs on all the patents.

On March 15, Pointwise Ventures LLC sued multiple defendants, including IKEA, Samsung, and Alibaba, in the Eastern District of Texas for infringing its 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 the same day, Pointwise also sued Microsoft in the Western District of Texas for infringement of the same patent.

Minotaur Systems LLC sued Samsara Networks Inc. in the District Court of Delaware on March 19 for infringing its U.S. Patent Nos. 7,386,376 and 8,417,402. The patents cover monitoring systems for a vehicle, including a system that records biometric and video data inside and outside the vehicle. On the same day, Minotaur also sued Motive Technologies Inc. for infringement of the ‘376 patent. Minotaur sued Trimble, Inc., Safe Fleet Holdings LLC, and AnyConnect Private Limited in separate lawsuits the next day for infringement of the ‘376 patent. Minotaur has now asserted the ‘376 patent against 12 different parties and the ‘402 patent against two.

On March 19, the PTAB found that some claims of U.S. Patent No. 8,154,581, owned by SB IP Holdings LLC, are invalid. The ‘581 patent covers an audio-visual communication system for use at a door that includes video and audio recordings of a person at the door that are accessible by a remote peripheral device. SB IP Holdings had sued Vivint Inc. in the Eastern District of Texas for infringement of the ‘581 patent and five others in 2021, and Vivint had asked the PTAB to review the validity of claims of the ‘581 patent along with three other patents in IPRs. The lawsuit is currently stayed, pending the outcome of the four IPRs.

Patent Armory asserted its U.S. Patent No. 7,256,899 against multiple defendants in March: 3D Systems Corp., WillowWood Global LLC, 3Disc Holding Inc., and Creaform USA, Inc. The ‘899 patent covers a method of acquiring an approximation of the surface geometry of an object by projecting a pattern of structured light onto the object and forming an image of the intersection of the object and the structured light. Patent Armory has now asserted the patent against nine different defendants.

On March 29, GoPro, Inc. sued Arashi Vision Inc. and Arashi Vision (US) LLC (d/b/a Insta 360) in the Central District of California for infringement of six patents relating to GoPro’s mobile camera technology. The patents are U.S. Patent Nos. 10,015,413; 10,529,052; 10,574,894; 10,958,840; 11,336,832; and D789,435. On the same day, GoPro filed an action at the International Trade Commission (ITC) against the same defendants, based on the same patents, to prohibit the importation of Arashi’s products into the U.S.

Optical communications

Clearfield Inc. sued NSI Industries Inc. and NSI-LYNN Electronics, LLC, in Federal Court in the Western District of North Carolina for infringement of three patents on optical-fiber connectors. The patents, U.S. Patent Nos. 9,297,976; 9,678,285; and 10,007,068, describe a specific fiber-optic connector configured to have a footprint small enough to pass through a conduit.

On March 20, US Connec Ltd sued multiple defendants in the Eastern District of Texas for infringing six fiber-optic connector patents. The defendants include Changzhou Co-Net Electronic Technology Co., Ltd., Ezconn Corporation, Flexoptic GmbH, Rayoptic Communication Co., Ltd., Shenzhen IH Optics Co., Ltd, and others. The patents cover a reverse polarity MPO connector, an alignment adapter, a mini duplex connector with a push-pull polarity mechanism, and a flexible push-pull boot and crimp body. The patents are 10,495,823; 11,385,415; 11,733,466; 11,808,994; 11,880,075; and 11,906,794. On March 22, US Connec filed for an ITC action on the same patents against 19 defendants, including those listed above.

AT&T petitioned the PTAB to open an IPR on U.S. Patent 8,238,754 on March 22. The ‘754 patent is owned by two individuals, A. I. Soto and W. G. Soto, and covers pluggable modules for passive optical communications networks. The PTAB will decide whether to institute the IPR by September 22, 2024. NextGen Innovations LLC, the exclusive licensee of the patent, sued AT&T for infringement of the ‘754 patent in June 2023. NextGen has now sued 17 different parties for infringing the ‘754 patent.

Bio & life sciences

On March 5, Mito Red Light Inc. filed a petition for an IPR of U.S. Patent No. 11,253,719 at the PTAB. Mito Red Light seeks to invalidate nine of the ‘719 patent’s claims, directed to methods of providing photobiomodulation therapy for treating skin issues such as wrinkles, scars, and persistent wounds. The ‘719 patent is owned by JOOVV, Inc., who sued Mito Red Light for infringing the ‘719 patent in June 2023.

The Court of Appeals for the Federal Circuit dismissed an appeal by S. E. Neister following a finding by the PTAB that claims in his U.S. Patent No. 9,700,642 were invalid. The ‘642 patent covers methods of destroying a microorganism’s DNA or RNA using ultraviolet (UV) light. Eden Park Illumination, Inc., and three other companies had petitioned the PTAB to find the claims of the ‘642 patent invalid in an IPR after they had been sued for patent infringement by Neister and his exclusive licensee, High Energy Ozone LLC. Following the PTAB’s decision of invalidity, Neister filed a notice of appeal with the CAFC, but it failed to submit the documentation subsequently required by the Court. The Court dismissed the case for failure to prosecute the appeal in accordance with the rules.

Sensing

In the continuing dispute between Apple Inc. and Masimo over Apple Watches’ infringement of Masimo’s pulse oximetry patents, the Customs and Border Patrol (CBP) released a redacted ruling in which it found that Apple’s redesigned Apple Watches do not infringe Masimo’s patents. The ruling allows Apple to continue importing the redesigned watches into the U.S. The redesigned watches still include pulse oximeter hardware and code, but the functionality has been disabled. Masimo had shown that the pulse oximeter functionality still could be accessed with an iPhone X (discontinued in 2018) that had been “jailbroken” (modified to run non-vendor approved software) to run software that lets a user pair an outdated iPhone to a normally incompatible Apple Watch. The CBP concluded that jailbreaking and running the third-party software were such significant modifications that the redesigned watches could not be said to infringe the patents.

Meanwhile, on March 15, the Court of Appeals for the Federal Circuit denied Apple’s motion for a rehearing and rehearing en banc that would have allowed Apple to reargue the CAFC’s decision to lift the stay on the ITC’s ban on the importation of Apple Watches having the pulse oximeter function.

Augmented reality/virtual reality (AR/VR)

On March 6, the PTAB decided in an IPR that Novorad Corporation’s U.S. Patent No. 11,004,271 was valid. The ‘271 patent covers a method for augmenting actual views of a patient with 3D data. The ’271 patent was originally asserted by Novorad against Medivis Inc. in a patent lawsuit filed in October 2021. In October 2022, Medivis petitioned for an IPR in an attempt to prove the ‘271 patent was invalid. After hearing from both sides, the PTAB cited insufficient evidence in finding that the claims challenged by Medivis were invalid.

LiDAR

On March 19, the PTAB agreed to institute IPRs on two patents owned by Ouster Inc., U.S. Patent Nos. 11,175,405 and 11,287,515. The patents relate to rotating LiDAR units. However, on March 28, the PTAB refused to institute an IPR on Ouster’s U.S. Patent No. 11,422,236, which covers an optical system for collecting distance information within a field. Ouster, Inc., had sued Hesai Technology Co., Ltd., for infringing the patents in the District Court of Delaware in April 2023, and Hesai then petitioned the PTAB to review the validity of the patents in IPRs.

Displays

On March 22, the PTAB instituted an IPR to review the validity of U.S. Patent No. 8,588,033, owned by Slyde Analytics LLC. The patent covers the electronic display of a watch that shows a simulation of a mechanical watch movement having a gear train and hands indicating the current time. Slyde sued Samsung Electronics Co., Ltd., for infringement of the ‘033 patent in February 2023, and, in response, Samsung petitioned for the IPR in October 2023. With the IPR now underway, Samsung will likely ask the Court to stay the litigation pending the outcome of the IPR. A final decision on the validity of the claims of the ‘033 patent is due from the PTAB in the spring of next year.

Laser manufacturing

On March 27, the Court of Appeals for the Federal Circuit (CAFC) reversed a ruling by the PTAB that claims of U.S. Patent No. 10,052,734 are invalid. The ‘734 patent covers an improvement in aligning a projected laser template onto a work surface for directing a manufacturing process. Virtek Vision International, the owner of the ‘734 patent, first filed suit against Assembly Guidance Systems, Inc., for patent infringement in the District Court in Massachusetts in May 2020. Five months later, Assembly Guidance Systems petitioned the PTAB to institute an IPR to review the validity of the ‘734 patent. In May 2022, the PTAB decided that certain claims of the ‘734 patent were invalid, while the remaining claims were valid. Virtek Vision appealed the finding that the claims were invalid to the CAFC, and Assembly Guidance Systems cross-appealed the finding that the remaining claims were valid. In a win for Virtek Vision, the CAFC reversed the PTAB’s finding that the claims were invalid and affirmed the PTAB’s finding that the remaining claims were valid.

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.

About the Author

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.

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