University of California expands its LED lamp patent infringement action

Law firm Nixon Peabody, representing the Regents of the University of California (UC), has announced an expansion of its patent enforcement campaign related to LED-based, filament-style lamps newly targeting leading manufacturers and retailers. The UC solid-state lighting (SSL) intellectual property (IP) initiative is intended at licensing LED-centric, lamp technology developed by renowned researchers at the University of California at Santa Barbara (UCSB). It was just over a year ago when Nixon Peabody first launched the effort to stop sales of filament lamps that were not developed under license to the UCSB IP or to collect license fees at retail. Again Nixon Peabody has instigated the legal action at the International Trade Commission (ITC).

The action last year was focused primarily at major retailers Amazon, Bed Bath & Beyond, Ikea, Target, and Walmart. The new action targets manufacturers General Electric (GE), Savant Systems, Feit Electric, and Satco Products, and retailers Home Depot and Ikea. Targeting retailers has become a primary method for IP holders to collect license fees given a retrofit lamp supply chain that includes manufacturing in China and other areas that exhibit little or no regard as to the owners of IP. For example, Nichia launched a major IP action against retailer Lowe’s back in 2016. That Nichia suit was among the first SSL-sector IP actions to target parties other than product manufacturers.

The UC system believes it has legal rights to such license fees. Moreover, it hopes the program will generate funding to support more educational opportunities for students and more academic research to move industry and technology forward.

“We are encouraged by the successes achieved during the first year of this campaign. The new litigation is an important next step in addressing what is becoming ubiquitous infringement, so that UC is rightfully compensated for the exploitation of its inventions and the important benefits they provide to society,” said Seth Levy, a Los Angeles-based partner at Nixon Peabody. “UC remains committed to standing up for university patent owners and leading the conversation with industry partners about fair compensation for the use of university patents.”

The announcement noted that more than a dozen parties had signed license agreements since the IP program began early last August. The list of licensees includes retailers and manufacturers/suppliers. One major example of a manufacturer taking a license came last December when LEDvance and the UC system reached an agreement.

Retailers and manufacturers that want to learn more about the licensing program can get more details from a website hosted by UCSB. The UC system has still not publicly explained why its IP applies explicitly to filament lamps and not LED replacement/retrofit lamps in general. The filament-style lamps generally use a string of very small LEDs connected in a series topology, most often with a clear dome, to mimic the appearance of an incandescent filament whereas other LED replacement lamp designs simply strive to provide uniform illumination around the surface of an opaque lamp diffuser.

One pair of targets in the new action is especially interesting. The lawyers decided to go after both GE and Savant Systems. Of course, GE was a stalwart of the light bulb sector and GE Lighting was one of the earliest manufacturers of LED replacement lamps. But the once-iconic corporation has divested itself of lighting businesses. It first sold off GE Current to American Industrial Partners (AIP) in late 2018. That company is focused on commercial luminaires and not on replacement lamps. More recently, GE sold the residentially-targeted GE Lighting including its lamps business to Savant Systems. We’d presume that GE is included in this UC action because the GE brand is still being used on lamp products.

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