With the first quarter of 2018 just concluded, it is a good time to recap the past year in LED lighting from the patent law perspective and to look forward to what might be in store for the remainder of 2018. This article presents a brief overview of patent publications in the LED space, followed by an analysis of patent litigation involving LED technology in the district courts, the U.S. International Trade Commission (“ITC”), and the Patent Trial and Appeal Board (“PTAB”). It will conclude with a brief discussion of trends.
There is no doubt that LED lighting has become today’s dominant lighting technology and that LED technology continues to comprise the subject matter of numerous patent publications. While difficult to track precisely, the graph below shows the number of patent publications from 2013-2017 containing the phrase “light emitting diode” in the claims based on searches conducted in the Google patents database. The graph shows that LED patent publications have leveled over the last five years.
However, as the technology has become more ubiquitous, it is generating patent publications in fields beyond conventional lighting. Not surprisingly, the composition of companies filing for inventions relating to LEDs also appears to be changing. While principal industry players such as Cree, Nichia, Philips, Osram, and Samsung still dominate, other companies are beginning to appear more frequently on patent publications in this space.
One of the trends that we are watching in the lighting space is connected or synced lighting. Searches within patent publications from 2015 to 2017 containing the phrase “light emitting diode” and either of the phrases “connected lighting” or “smart home” yielded a total of over 2000 publications. This is up significantly from 2013, where the same search yielded only 50 publications.
In the ITC, 2017 witnessed the resolution of one Section 337 investigation involving LED lighting technology and the commencement of another. In the recently instituted investigation—LED Lighting Devices, LED Power Supplies, and Components Thereof, Inv. No. 337-TA-1081—Philips Lighting Holding B.V. Eindoven and Philips Lighting North America filed a complaint against numerous lighting distributors over alleged infringement of five patents, four of which are generally directed to power supplies and power control, and one that concerns downlighting. The hearing in this investigation is scheduled for August 2018 and the target date for final completion is March 2019.
The investigation that resolved in 2017—Light-Emitting Diode Products and Components Thereof, Inv. No. 337-TA-947—stemmed from a complaint brought by Cree, with Feit Electric, Unity Opto Technology, and Unity Microelectronics as named respondents. There were originally eight patents asserted in this investigation. The patents were generally directed to light extraction and diffusion techniques, encapsulant structure, and device efficiency. The complaint also alleged violations of section 337 based on allegedly false and misleadingly advertising of Energy Star ratings in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and/or the federal common law of unfair competition. The Administrative Law Judge found a violation of Section 337 with respect to five of the patents in suit and on the false advertising claim, but the case settled while Commission review was pending and before any final determination by the Commission was reached. The first quarter of 2018 has started with a bang, with two new investigations relating to LEDs: Light Engines and Components Thereof, Inv. No. 337-TA-1102 and LED Lighting Devices and Components Thereof, Inv. No. 337-TA-1107.
In the PTAB, the major lighting companies were parties in at least eighteen (18) inter partes review proceedings (IPRs) whose institution decisions occurred in 2017. Based on Lex Machina searches, Cree, Nichia, and various Philips entities were all involved in multiple IPRs in 2017. On the surface at least, the statistics for these cases are patent-holder friendly, with the PTAB granting institution of only three IPRs while denying institution in fifteen (15). Nichia has already been named as the patent owner in one of the first lighting-related IPR petitions filed in 2018, involving a Nichia patent on LED chip structure that it asserted in litigation in the Western District of North Carolina against Lowe’s and others.
In the district courts, twenty-one patent (21) cases were filed in 2017 in which at least one of the principal lighting industry companies was a party. Ten (10) of those cases have already been terminated. In addition to Cree, Nichia, and Philips, Everlight Electronics was also a party in multiple cases. Sixteen (16) of the cases were filed in just three districts: the Northern and Central Districts of California and the Eastern District of Texas. Although it is still too soon to tell for certain if the Supreme Court’s patent venue decision in TC Heartland, LLC v. Kraft Foods Grp. Brands, LLC, 137 S.Ct. 1517 (2017) has shifted lighting technology case filings away from the Eastern District of Texas, there is no reason to think that lighting cases will be immune to the overall change in the patent litigation landscape effected by the TC Heartland decision. All of the companies noted above (or their U.S. subsidiaries) are incorporated in Delaware, except Cree, which is incorporated in North Carolina. Therefore, a shift of some cases to Delaware is possible, as is Massachusetts, where several of these companies have their U.S. headquarters.
The Consumer Electronics Show (CES) conference that took place in early January 2018 highlighted the trend toward a more connected environment. The CES conference is synonymous with trending consumer technologies, and the 2018 CES conference showcased 250 exhibitors in the Smart Home division alone. Notably, reports from the CES conference show an uptick not only in the expected technologies such as robotics and home automation, but also in connected and, more specifically, synced lighting.
For example, Nanoleaf, a Canadian lighting company, began producing 3-D printed energy efficient light bulbs in 2014. In 2016, Nanoleaf upped their offerings to include an all-new smart lighting kit called Nanoleaf Aurora. The lighting kit allows consumers to design their own wall lighting experience by connecting up to 30 triangular LED panels. The lights are controlled and synced with a hub allowing consumers to design their own custom lighting show. At the 2018 CES conference, Nanoleaf introduced their wall covering light panels. These new square light panels still allow the consumer to connect the LED panels in any configuration but instead of only 30 panels, the new offering will support up to 1,000 panels. Additionally, the new lighting panels will be touch sensitive, allowing the consumer to dim or change the color of the panel with just a touch of the hand. The light panels are configurable through the Nanoleaf as before but will also be available through Nanoleaf’s other new offering, the Nanoleaf Remote. In addition to being able to control other aspects of a consumer’s home such as wall lighting, speakers, and thermostats, the Nanoleaf Remote allows consumers to configure their wall light panels for various lighting scenes.
While longtime principal industry player Philips isn’t new to connected lighting, Philips introduced its new app Hue Sync, providing for an overall consumer experience with connected lighting. According to Philips, Hue Sync creates synchronized lighting schemes for games, movies, or music played on a computer, thus expanding a consumer’s immersion in what they are playing, watching or listening to a greater scale. Additionally, at CES, Philips announced a partnership with Razer and its Chroma lighting system. Razer’s Chroma lighting system, which includes computers, keyboards, mice, controllers, headphones, mousepads, LED lighting strips and other gaming equipment, gives consumers an interactive gaming experience. The partnership between Philips Lighting and Razer allows consumers with any Philips Hue color-capable light to sync with Razer Chroma devices, thus expanding the immersive gaming experience not only to the Razer Chroma devices but now to the entire room with Philips Hue lights.
In the Smart Home arena, Ring announced its acquisition of Mr. Beams. Ring, which is known for its connected home security products including connected doorbells, video cameras, and floodlight camera combinations adds to its portfolio off-grid modular lighting such as pathway lights, step lights, and spotlights that will connect with Ring’s existing product line. Ring notes that the new products will bolster its existing line and offer consumers better peace of mind by creating networks of lighting to improve safety around their home and in their neighborhood.
With the emphasis placed on smart homes and connected lighting, from startup companies and small businesses to major lighting industry players, the products showcased at CES this year are likely to be only the beginning.
It will be interesting to see how trends in connected lighting continue to develop, and whether and to what extent they manifest in issued patents and patent litigation over the coming years.