The regents of the University of California have expanded their groundbreaking patent-infringement lawsuit against major retailers and suppliers of innovative filament LED light bulbs, naming one retailer and four manufacturers as additional defendants in the action.
The regents allege that plaintiffs violated UC patents on long-lasting, energy-efficient bulbs that were developed by researchers at the Solid State Lighting and Electronics Center at UC Santa Barbara.
UC’s initial lawsuit, filed in 2019, targeted five major American retailers for allegedly selling the products without a license: Amazon.com, Bed Bath & Beyond, Ikea, Target Corp. and Walmart. It’s rare for a patent-enforcement action to focus on retailers instead of original manufacturers, the latter of which are often based offshore and therefore harder to sue in U.S. courts. Also unusual was the regents’ choice to seek an investigation by the U.S. International Trade Commission into the importation and sale of the products in question, action rarely taken by academic patent owners.
Now, seeking to expand the lawsuit, UC has filed a new complaint and request for a second investigation by ITC against General Electric, Savant Systems LLC, Feit Electric Co. Inc., Home Depot, Ikea and Satco Products Inc. That request was granted by ITC last week.
“Retailers remain liable for patent infringement,” says Seth Levy, partner with Nixon Peabody LLP, the law firm representing the UC Regents. “But manufacturers clearly have significant market share, so it makes sense to pursue them directly as well.”
The regents have further expanded their complaint to reflect the award of four new patents to UC since the initial investigation was filed.
The first ITC investigation ended approximately five months ago at the UC regents’ request, “primarily because it had run its course,” explains Levy. “We had established more than a dozen licenses with different parties, several of which were suppliers to some respondents in the action, and a lot of value had been extracted.”
Alongside the ITC proceeding, the regents have filed their lawsuits in the Central District of California, U.S. District Court, home to UC Santa Barbara.
Levy says plaintiffs are encouraged by the progress of the actions to date, both at the ITC and in district court. The latter cases were stayed while the ITC investigation went forward. “It makes more sense to let one case proceed and await the outcome,” says Levy. The regents’ legal strategy has been to continue holding the court cases in abeyance while ITC considers the matter — a move that’s calculated to hold down litigation costs.
By targeting major manufacturers of the lighting products, the regents hope to achieve licensing agreements with a commanding segment of the market, and in the process create a group of authorized suppliers on which retailers can legally rely.
“That was very much the message we were getting from retailers in the initial phase of the campaign,” says Levy. “They told us we should be talking to [their] suppliers, and that’s what we’re doing. In our view, this makes the most sense for all involved to continue working through this.”
UC continues to seek new license agreements as the lawsuit proceeds, including a settlement with Bed Bath & Beyond. “We remain encouraged that it’s going well,” Levy says. “The practical challenge is that there are just so many retailers and suppliers of these products, and the market continues to expand. We’re having these conversations as quickly as we can identify people, and as fast as they would like to work with us.”
The lawsuit signals a new aggressiveness by academic institutions to protect intellectual property developed under their auspices. Many are only now coming to understand the value of their patents in the open market.
UC is open to naming additional plaintiffs as the patent-infringement lawsuit proceeds, yet continues to hope for settlements with retailers, manufacturers and suppliers in order to avoid a costly and lengthy trial, which wouldn’t get underway for at least a year. The patents at issue have about eight more years to run, Levy notes.
“The regents and I remain very optimistic that a trial won’t be necessary, because we’ll be able to resolve these issues with each respondent,” he adds. “But if we need to go to trial, we’ll go to trial. We’re certainly prepared for that.”
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