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 series highlights the competitive technologies of interest not only in the marketplace but also in the courtroom—to provide insight into the strategies of major and emerging players and offer tips about the IP vital to protect.
Written by a U.S.-based IP attorney, this series covers the primary areas of IP, including trademarks, copyrights, and trade secrets.
June’s photonics-related IP activities include 26 cases concerning various technologies, including lighting and light sources; displays; cameras, imaging systems, and image processing; sensors; fiber communications; medical and dental applications; solar energy; and virtual reality/augmented reality.
Lighting and light sources
LightSure LLC sued Sengled Optoelectronics Co. Ltd., Copeland Comfort Control LP f/k/a Emerson Electric Co., and Eaton Corp. in separate lawsuits for infringement of U.S. Patent No. 8,716,942. The patent discusses a system for controlling the intensity of light produced by a lighting system—for example, a set of street lights—that increases the lighting intensity of a first lighting assembly based on the level of activity close to that lighting assembly.
Robe Lighting filed a petition for an Inter Partes Review (IPR) of U.S. Patent No. 11,988,373, owned by Guangzhou Haoyang Electronic Co. Ltd. The patent describes a sealed light fixture that can test the integrity of its own seal, even after leaving the manufacturing facility. The Patent Trial and Appeal Board (PTAB) is expected to announce whether it is instituting the IPR by the middle of December.
On June 23rd, the PTAB instituted an IPR on U.S. Patent No. 8,604,678, owned by Feit Electric Co. Inc. Savant Technologies LLC d/b/a GE Lighting, Elong International USA Inc., and Xiamen Longstar Lighting Co. Ltd. had previously petitioned for the IPR after being sued for patent infringement by Feit. The patent describes a wavelength conversion component for an LED light bulb that includes a wavelength conversion layer having particles of a photoluminescent material and a light diffusing layer comprising light scattering particles. The PTAB should issue a final written decision in the IPR around the middle of December. The Director of the USPTO denied institution of a second IPR on the same patent.
On June 27th, Coast Cutlery Co. filed a declaratory judgement action in the District of Oregon, asking the Court to declare that it does not infringe U.S. Patent Nos. 11,852,311 and 12,203,618, owned by Infinity X1 LLC. The patents describe a wearable LED-based headlamp that has a broad field of illumination. Infinity previously sued Coast Cutlery for infringement of the patents in the Central District of California.
On June 30th, Jiaxing Super Lighting Electric Appliance Co. Ltd. and Obert Inc. sued All Star Lighting Supplies Inc. d/b/a Luxrite Xiamen Pvtech Corp. in the District of New Jersey for infringement of 10 patents relating to LED tube lamps. The patents are U.S. Patent Nos. 9,841,174; 9,945,520; 9,970,602; 10,378,700; 10,560,989; 11,112,068; 11,499,682; 11,519,567; 11,906,115; and 12,085,263.
LightSure LLC sued Acuity Brands Inc. in the Northern District of Texas for infringement of U.S. Patent No. 8,716,942. The patent describes the management of light system energy use.
Displays
On June 5th, Samsung Display Co. Ltd. sued eTech Parts Plus LLC; TCL China Star Optoelectronics Technology Co. Ltd.; Ultimate Eshop LLC d/b/a Parts4Repair; and Wuhan China Star Optoelectronics Semiconductor Display Technology Co. Ltd. in the Northern District of Texas for infringement of U.S. Patent Nos. 7,414,599; 9,330,593; and 11,594,578. The patents relate to driving circuits and pixel arrangements in OLED displays.
On June 13th, Vkansee (Beijing) Technology Co. Ltd. and Vkansee Technology Inc. sued OnePlus Technology (Shenzen) Co. Ltd. in the Eastern District of Texas for infringement of U.S. Patent No. 10,482,309. The patent describes a method of operating a display that incorporates a fingerprint sensor.
LG Display Co. Ltd. sued Tianma Microelectronics Co. Ltd Tianma Microelectronics (HONG KONG) Ltd., and Wuhan Tianma Microelectronics Co. Ltd. in the Eastern District of Texas for infringement of seven patents relating to touch displays, flexible displays, OLED displays, and liquid crystal displays. The patents are U.S. Patent Nos. 8,416,166; 8,736,801; 10,175,803; 10,444,924; 10,499,493; 10,869,388; and 11,251,394.
On June 20th, Hisense USA Corp. filed a declaratory judgement action in the District of Massachusetts, asking the court to find that it does not infringe U.S. Patent No. 9,185,373, owned by Baker Laser Technology LLC. The patent describes a projection system that uses semiconductor lasers.
Cameras, imaging systems, and image processing
VDPP LLC continued to assert its image-processing patent portfolio, suing Garmin USA Inc. and Juniper Systems Inc. in separate lawsuits for infringement of U.S. Patent Nos. 9,426,452 and 10,021,380. VDPP also sued I-Pro Americas Inc. for infringement of the ‘380 patent and Revo America Corp. for infringement of the ‘380 patent and U.S. Patent No. 9,716,874. VDPP also sued Volvo Group North America LLC for infringement of the ‘874 patent and U.S. Patent No. 9,699,444. The patents describe a system in which 2D motion pictures can be viewed in part as 3D motion pictures. The ‘452 patent has now been asserted against 21 different parties, the ‘380 patent against 58 parties, the ‘444 patent against 36 parties, and the ‘874 patent against 27 parties.
The PTAB issued an adverse judgement in an IPR against claims in U.S. Patent No. 7,454,056, owned by 138 East LCD Advancements Ltd. The patent discloses a method of preferentially correcting the color of the subject of a digital image over color of the background of the image. The IPR had been sought by Google LLC after being sued for infringement by 138 East LCD Advancements’ licensee, Longitude Licensing Ltd. The patent owner had disclaimed the claims in a filing to the U.S. Patent Office and subsequently requested that the PTAB give the adverse judgement. This procedure can happen when the patent owner finds that defense of the patent becomes untenable.
The Court of Appeals for the Federal Circuit (CAFC), the appeals court with jurisdiction over patent matters, upheld a decision that U.S. Patent No. 8,194,924, owned by Gesture Technology Partners LLC, is valid. The patent discusses a camera-based method for inputting information to a computer by sensing hand movements. Gesture Tech had sued Apple Inc. for infringement of the patent and Apple responded by petitioning for an IPR. At the conclusion of the IPR, the PTAB concluded that there was insufficient evidence to declare the patent invalid. Apple appealed, but the CAFC affirmed the PTAB’s decision.
Sensors
The PTAB denied institution of two IPRs filed by Samsung Electronics Co. Ltd. on U.S. Patent No. 10,347,682, owned by SiOnyx LLC. The patent describes an array imager device having textured regions with shallow trenches on the photosensitive semiconductor layer. The IPRs had been filed by Samsung in response to being sued for infringement of the ‘682 patent by SiOnyx. The decision to deny institution of the IPRs was based primarily on the fact that the invalidity defenses in the lawsuit included product prior art, rather than printed prior art. Since the PTAB can only consider printed prior art in an IPR, institution of the IPRs would not have resolved all the invalidity defenses in the lawsuit, and so the PTAB used its discretion not to institute the IPRs.
Samsung Austin Semiconductor LLC, Samsung Electronics America Inc., Samsung Electronics Co. Ltd., and Samsung Semiconductor Inc. filed petitions for IPRs on U.S. Patent Nos. 11,621,360 and 12,087,871, owned by W&Wsens Devices Inc. The patents describe silicon photodiodes that have microstructure-enhanced absorption for use in fiber optical communications systems. The petitions were filed in response to W&Wsens suing Samsung for infringement in October last year. The PTAB should determine whether to institute the IPRs by mid- to late-December.
On June 26th, the PTAB issued a final written decision finding that the challenged claims of U.S. Patent No. 10,984,911 are invalid. The ‘911 patent, owned by Willow Laboratories Inc. and licensed to Masimo Corp., was challenged by Apple Inc. as part of its fight with Masimo over pulse oximeter technology integrated into a smart watch. The patent describes a physiological monitoring device incorporating at least three LEDs emitting light at different wavelengths, and a photodetector contained within a blocking box structure to detect light from the LEDs that has been attenuated by the user’s tissue.
Fiber communications
On June 10th, Belden Inc., Opterna AM Inc., and PPC Broadband Inc. filed a petition for an IPR on U.S. Patent No. 10,996,417, owned by CommScope Technologies LLC. The patent describes a fiber-optic enclosure with an internal cable spool and movable cover. The petition was filed in response to CommScope suing Belden for infringement of the patent in 2024. The PTAB is expected to announce whether it is instituting the IPR by around mid-December.
On June 12th, OptiNet LLC sued Cellco Partnership d/b/a Verizon Wireless, Verizon Business Global LLC, Verizon Business Network Services LLC f/k/a Verizon Business Network Services Inc., Verizon Communication Inc., Verizon Data Services LLC, Verizon Online LLC, and Verizon Services Corp. in the Eastern District of Texas for infringement of five patents. U.S. Patent Nos. 8,689,085; 8,781,323; 9,136,968; 9,197,351; and 9,825,710 cover various aspects of a passive optical communications network including data transmission, time and wavelength multiplexing, and transmitter power control.
The PTAB denied the petitions submitted by Cambridge Industries USA Inc. for IPRs on U.S. Patent Nos. 9,523,826 and 10,042,116, owned by Applied Optoelectronics Inc. The patents describe a pluggable optical transceiver module and techniques for direct optical coupling of photodetectors to optical demultiplexer outputs. Cambridge Industries filed the petitions after being sued for infringement of the patents by Applied Optoelectronics.
Medical and dental applications
On June 6th, Virulite LLC sued Walgreen Co. d/b/a Walgreens in the Western District of Texas for infringement of U.S. Patent No. 9,314,302. The patent describes a method of cosmetically treating an area of mammalian skin based on illuminating the skin with light at around 1072 nm.
On June 20th, Densys Ltd. sued Align Technology Inc. and Medit Corp. in the District of Delaware for infringement of U.S. Patent Nos. 6,402,707 and 8,665,257. The patents relate to a system and method for intraorally acquiring 3D measurements and images of teeth.
Solar energy
On June 4th, BBS Automation Stuttgart GmbH sued Ningxia XN Automation Equipment Co. Ltd. and SEG Solar Inc. in the Southern District of Texas for infringement of U.S. Patent Nos. 8,247,681 and 8,253,009. The patents disclose an apparatus for manufacturing solar cell strings from individual solar cells.
Virtual reality/augmented reality (VR/AR)
On June 11th, the PTAB instituted an IPR on U.S. Patent No. 8,982,109, owned by EyesMatch Ltd. The patent describes a system having a camera and monitor that can generate mirror-mimicking images and resize the image based on the object’s distance to the camera. The IPR was sought by Microsoft Corp. The PTAB also joined Microsoft’s IPR with a currently pending IPR on the ‘109 patent, in which Samsung Electronics Co. Ltd., Samsung Electronics America Inc., and Google LLC are the petitioners. The PTAB is expected to issue a final written decision in both the IPRs by the middle of December. Microsoft successfully joined another IPR against EyesMatch in May, as reported in last month’s Photonics IP Update.
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.