In the month or so since the LDI exhibition in Las Vegas, a group called the LED Alliance has gained momentum in its efforts to undermine the intellectual property portfolio owned by Color Kinetics (see Related Articles, at right). More a disparate group of interested companies than a separate entity, the Alliance has issued a Call for Prior Art which has already gathered evidence of the use of LEDs in color-mixing applications dating back many years.
The simple explanation of the LED Alliance's position goes as follows: when Color Kinetics filed its key patents, particularly its first one (US patent number 6,016,038, filed in August 1997 and granted in January 1990), techniques such as color mixing with LEDs were well known, as was pulse-width modulation (PWM). The Alliance contends that many of the claims in Color Kinetics' patents lack the "novel and inventive step" essential to qualify for patent protection.
(Note that it is unfortunately beyond the scope of this article to assess the technology involved in the many patent claims involved in this dispute, or the merits of the "prior art" gathered by the LED Alliance).
Of course, Color Kinetics has strongly opposing views; its CEO, George Mueller, has used the "Post-It Note analogy" - paper and glue/gum were both well known when 3M Company combined them to make a patentable product. More views from Color Kinetics can be found in the article Color Kinetics confident of success in patent disputes.
The Alliance is trying to gather as much material as possible, specifically anything that could be considered prior art pre-dating August 1997 that relates to the use of PWM with LEDs; the use of LEDs in color-changing lighting fixtures; and the use of DMX or any other control system in conjunction with LED fixtures. The Alliance also wants prior art relating to white LEDs predating January 2002.
The prior art collection being assembled by the LED Alliance is likely to be used in two ways, firstly to support Super Vision International in its court cases against Color Kinetics (for background in this case, see Patent issues cause discontent among LED lighting manufacturers), and secondly to provide evidence to the US patent office.
Industry alliance
The companies taking the lead in this effort are Super Vision and Artistic Licence (UK) Ltd, while the LED Alliance website lists three other companies - Advanced Lighting, Element Labs and TPR Enterprises - as supporting members. According to Wayne Howell, managing director of Artistic Licence, there are in the order of 40 companies with an interest in the Alliance's activities.
What is the motivation of companies to become involved? One view is that this could be a good way to avoid paying license fees to Color Kinetics. "I'm not objecting to the concept of a company building a business model based on license fees from patents," says Howell. "But there's a fine line between making money from licensing innovative, cutting-edge, patented-protected technology, and attempting to make money by patenting fundamentally obvious technology which has been around for many years and in fact was so obvious that no-one else had thought of patenting it."
Among the feelings expressed by Alliance participants are that Color Kinetics has misused the patent system, that it has behaved unethically, and that it has demanded unreasonably high royalty payments.
Nils Thorjussen, CEO of Element Labs, thinks that Color Kinetics is playing a legal game, to the detriment of the industry. "Many of the patents do not pass the test of being innovative or non-obvious and should not have been granted," he says. "The industry will grow more and have more innovation, and consumers will have better products at lower prices, without having to pay a tax on every sale to Color Kinetics for these patents."
Super Vision
At the heart of the LED Alliance sits Super Vision. After becoming involved in litigation with Color Kinetics, Super Vision in March 2004 acquired the rights to the Belliveau patent (US patent number 4,962,687) from High End Systems and then sued Color Kinetics for infringement.
"Super Vision acquired the Belliveau patent because after reviewing it during the Color Kinetics litigation we were convinced that this was in fact the only valid patent that Super Vision was infringing," says Kingstone. "We later learned that High End System's lawyers had put Color Kinetics on notice that they also believed that Color Kinetics was infringing their patent."
Super Vision subsequently acquired the rights to technology developed by Jerry Laidman dating back to circa 1978 (see Super Vision acquires Laidman LED technology). In fact, Color Kinetics management visited Jerry Laidman at his facility in Nevada and viewed his "Saturn I - IV" color-changing, PWM-based LED lighting fixtures, which were originally designed and produced in 1978, prior to the publication of their patents.
While Color Kinetics has more than 30 licensing partners, Super Vision has also licensed its technology to 7 companies. "This gives our licensees a solid foundation to continue their sales of LED lighting products," says Kingstone. "In addition, the funds provided by the licenses will be put towards our efforts to invalidate Color Kinetic's patents so they will not be able to continue their campaign of intimidation in our industry." Kingstone adds that Super Vision hopes that licensing will "ultimately provide a return to both Super Vision and the inventors that have assisted us."
Patent office problems
So if the LED Alliance's prior art claims prove to be correct, why was Color Kinetics granted the patents in question? Kingstone blames understaffing and lack of expertise within the US patent office.
Interestingly, the European patent system publishes applications before the patent is granted, allowing industry experts to cite prior art against the claims. Howell says that his company used this system to make sure that the European version of Color Kinetics' key US patent contained significantly fewer claims. "Most of its bite was taken out," says Howell. "We put a lot of effort in working with the patent office on our objections before it was granted."
The Alliance has also approached the US patent office. "We've written to them with regard to patent number 6,788,011 recently granted to Color Kinetics," says Howell. "We suggested they didn't investigate a number of strands of prior art that they should have done, and we're waiting for a reply."
The 011 patent covers the control of LED systems using DMX, a technique that has been used in the lighting industry for decades. The patent has caused consternation, since industry experts believe that it contains much broader and far-reaching claims than the original Color Kinetics patent.
Lighting & Sound International magazine recently published a letter from a UK lighting designer, who said, "I believe that [the 011] patent is a highly restrictive money-making exercise to try to control fundamental intellectual rights that have existed for decades."
The creation of the LED Alliance indicates the strength of feeling surrounding this subject in the industry. Whether the prior art assembled by the Alliance will be sufficient to upset Color Kinetics' strong intellectual property position is for the courts, or the patent office, to decide.
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Bill Sims, president and COO of Color Kinetics, has addressed many of the issues raised in this article in a previous interview with LEDs Magazine - see Color Kinetics confident of success in patent disputes.
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Anyone wishing to comment on this or any other article in LEDs Magazine should contact the Editor, Tim Whitaker
