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, and provides insight into the strategies of major and emerging players and offer tips about the IP vital to protect.
December’s photonics-related IP activities include 31 cases concerning various technologies, including lighting and light sources; displays; cameras, imaging systems, and image processing; wearable devices; optical communications; computer imaging; manufacturing; and x-ray microscopy.
Lighting and light sources
Magic Christmas (HK) Co. Ltd. sued Let Lit and Holiday Deco in separate lawsuits in the Southern District of Florida for infringement of U.S. Patent Nos. 8,344,659 and 10,863,608. The patents disclose systems for driving and digitally controlling light-emitting diodes (LEDs).
On December 8th, Luminatronics LLC sued Littelfuse Inc. and Semiconductor Components Industries LLC d/b/a onsemi in the District of Delaware for the infringement of U.S. Patent No. 9,807,836. The patent describes an LED apparatus that includes a bridge rectifier and control circuitry to control two groups of LEDs.
Xiamen Pvtech Corporation Ltd. sued Jiaxing Super Lighting Electric Appliance Co. Ltd. in the Eastern District of Texas for the infringement of 10 patents covering LED lamps, LED tube lamps, various safety features for the lamps, and color temperature control. The patents are U.S. Patent Nos. 10,161,571; 10,349,474; 10,645,784; 10,749,303; 10,895,352; 11,083,065; 11,122,671; 11,209,150; 11,408,601; and 11,536,419.
The Patent Trial and Appeal Board (PTAB) issued a mixed decision in a Post Grant Review (PGR) on U.S. Patent No. 10,222,037, owned by Willis Electric Co. Ltd. (Taiwan). The PGR had been sought by Everstar Merchandise Co. Ltd. The patent describes decorative lighting that includes reinforced wiring. In a final written decision, issued on remand from the Court of Appeals for the Federal Circuit (CAFC), the PTAB found that six of the challenged claims were valid and 25 were invalid.
On December 19th, CHM Industries Inc. d/b/a Caroline High Mast sued Current Lighting Solutions LLC, d/b/a GE Current in the District of Delaware for infringement of four patents relating to high-mast LED lighting technology, including cooling fins, separate power and LED housings, and rotatable components. The patents are U.S. Patent Nos. 9,677,754; 9,903,581; 10,571,112; and 11,473,767.
On December 29th, Semisilicon Technology Corp. sued InMusic LLC in the District of Delaware for infringement of U.S. Patent No. 8,124,988. The patent describes LED lamp package structures and assemblies.
SemiLED Innovations LLC sued Wayfair LLC in the Western District of Texas for infringement of three patents relating to slim LED packages. The patents are U.S. Patent Nos. 8,309,971; 8,963,196; and 9,530,942.
Displays
On December 1st, the PTAB issued a final written decision in an Inter Partes Review (IPR) on U. S. Patent No. 9,184,157, owned by 138 East LCD Advancements Ltd.; the patent describes a display device. The IPR was brought by BOE Technology Group Co. Ltd. The PTAB found claims 1, 3-7, 9-13, and 15-18 to be invalid, but claims 2, 8, and 14 to be valid.
Shanghai Tianma Microelectronics Co. Ltd. and Tianma Microelectronics Co. Ltd. sued LG Display America Inc. and LG Display Co. Ltd. in the Western District of Texas for the infringement of U.S. Patent Nos. 8,785,925; 10,234,971; 10,770,525; and 12,293,691. The patents discuss thin film transistors, touch-panel displays, and organic light-emitting diode (OLED) display panels.
The PTAB denied BOE Technology Group Co. Ltd.’s petition for an IPR on U.S. Patent No. 7,636,146, owned by 138 East LCD Advancements Ltd. The patent describes a circuit for controlling an electro-optic display.
On December 31st, NeoLayer LLC sued Samsung Electronics America Inc., Samsung Electronics Co. Ltd., and ASUSTek Computer Inc. in the Eastern District of Texas for infringement of six patents that describe various aspects of OLED displays, including the manufacture of thin film transistors, array substrates, and pixel structures. The patents are U.S. Patent Nos. 7,649,583; 8,093,592; 8,330,358; 8,674,365; 8,698,712; and 11,088,129.
Cameras, imaging systems, and image processing
VDPP LLC continued to assert its image-processing patent portfolio, suing Burger King Company LLC, Inter IKEA Systems BV, Costco Wholesale Corp., McDonald’s Corp., Walgreens Co. d/b/a Walgreens, Popeyes Louisiana Kitchen Inc., and Southwest Airlines Co. in separate lawsuits for infringement of U.S. Patent Nos. 7,030,902 and 9,948,922. The patents describe image processing and video frame manipulation to convert 2D images into 3D motion pictures. The ‘902 patent has been asserted against 20 parties and the ‘922 patent against 50 parties.
On December 9th, Contour IP Holding LLC sued Arashi Vision Inc. d/b/a Insta360 in the Eastern District of Texas for infringement of U.S. Patent Nos. 8,890,954 and 12,206,983. The patents describe a portable digital video camera configured for remote image acquisition control and viewing.
In a final written decision, the PTAB determined that all the claims of U.S. Patent No. 10,574,894, owned by GoPro Inc., were valid. The patent discusses systems and methods for stabilizing videos. The IPR had been brought by Arashi Vision Inc. US d/b/a Insta360.
In final written decisions, the PTAB determined that the challenged claims in U.S. Patent Nos. 7,486,807 and 8,482,638, owned by 138 East LCD Advancements Ltd., were invalid. The IPR had been sought by Google LLC. The patents describe an image retrieval device and a digital camera that generates a composite image from a main image and a sub-image.
Wearable devices
On December 1st, Samsung Electronics America Inc. and Samsung Electronics Co. Ltd. sued Oura Health OY in the Eastern District of Texas for infringement of six patents relating to wearable devices that include biosensors for obtaining biometric information. The patents are U.S. Patent Nos. 7,662,065; 9,008,973; 12,260,672; 12,279,849; 12,324,655; and 12,383,152.
The PTAB denied PGRs on U.S. Patent Nos. 12,193,790 and 12,268,475, owned by Omni MedSci Inc. The patents describe wearable devices for differential measurement of pulse rate and blood flow using optical sensing. The petitions had been filed by Samsung Electronics Co. Ltd., Samsung Electronics America Inc., Fossil Group Inc., Fossil Stores I Inc., Fossil Partners L.P., Oura Health OY, and OnePlus Technology (Shenzen) Co. Ltd.
The PTAB determined that the claims in U.S. Patent No. 10,139,859, owned by Ouraring Inc. and challenged in an IPR by Samsung Electronics America Inc., were valid. The claims relate to a wearable computing device that includes physiological sensors.
Optical communications
On December 1st, Eoptolink Technology USA Inc. filed a petition for IPR on U.S. Patent No. 11,177,887, owned by Applied Optoelectronics Inc. The patent discusses a stepped-profile substrate for mounting transmitter optical subassembly modules to reduce electrical interconnect lengths. The PTAB should decide by the beginning of June whether to institute the IPR.
On December 10th, the PTAB issued a final written decision in an IPR on U.S. Patent No. 9,806,892, owned by Ianarch Technologies Ltd. The patent discusses optical network unit power management in passive optical networks. The IPR had been sought by AT&T Services Inc. The PTAB concluded that seven of the challenged claims were invalid, while the remaining four challenged claims were valid.
Computer imaging
Avidbots Corp. and Avidbots USA Corp. filed a petition for an IPR on U.S. Patent No. 10,728,436, owned by Brain Corp. The patent describes a system for detecting the presence of an object in an image and navigating an apparatus, such as a robot, based on that detection. The PTAB should decide whether to institute the IPR by early June.
Manufacturing
The PTAB granted the petition filed by 3D Systems Corp. and 3D Systems Inc. to institute IPRs on U.S. Patent Nos. 11,014,301 and 11,338,511, owned by Intrepid Automation Inc. The patent describes an additive manufacturing system that uses multiple image projectors.
X-ray microscopy
The PTAB issued a final written decision in an IPR on U.S. Patent No. 7,400,704, owned by Carl Zeiss X-Ray Microscopy Inc. The patent discusses high-resolution, direct-projection x-ray microtomography using a synchrotron or lab-based x-ray source. The IPR was sought by Sigray Inc. The PTAB found the challenged claims to be invalid.
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 earned his doctorate in laser physics from The University of St. Andrews in Scotland. After working in lasers and electro-optics for 10 years, he switched careers and has worked in patent law for more than 25 years. He is experienced in patent prosecution, litigation, counseling, FTO, and due diligence analyses.