Patent issues cause discontent among LED lighting manufacturers

Amid the noise and clamor surrounding the recent Entertainment Technology Show - LDI in Las Vegas (October 18-24, 2004), perhaps the most significant event for the LED lighting industry took place one evening, away from the main show. At the invitation of Super Vision International, a group of around 40 people representing manufacturers with interests in LED lighting gathered to discuss the patent situation that some feel could threaten the future success of the industry.

Super Vision, a manufacturer of fiber-optic and LED lighting, is leading the charge against what many in the industry feel is an unfair and damaging approach to intellectual property on the part of Color Kinetics, one of the leading developers of LED-based lighting systems.

Color Kinetics has established a large number of patents, including several fundamental US patents relating to digital control of color-mixing products using LEDs. The company has used its patent portfolio to suggest - at times aggressively, it is alleged - that other companies should license its technology or face patent infringement lawsuits.

For example, Artistic Licence, a UK-based developer of electronic control systems and LED products, withdrew for around 3 years from the US market because of the perceived threat of litigation by Color Kinetics. However, at ETS-LDI Artistic Licence relaunched its LED digital lighting range in the US, following a patent licensing deal with Super Vision earlier this year.

Prior art

From conversations held at ETS-LDI, it is clear that a number of leading players in the industry believe that several of Color Kinetics' fundamental patents should be ruled invalid because they are based on technology that was well known in the industry at the time of filing.

For example, Super Vision recently announced the acquisition of a technology portfolio from inventor Jerry Laidman. The portfolio (which includes prior art but no patents) relates to the use of LEDs for color mixing dating back as far as 1978 (see Super Vision acquires Laidman LED technology).

According to Super Vision and others, a key patent in this area was awarded to Richard Belliveau of High-End Systems in 1990, and was acquired by Super Vision earlier this year. US patent #4,962,687 entitled "Variable color lighting system" was filed in September 1988 and appears to provide very broad coverage of the use of networked, centrally controlled, addressable color-changing lighting systems incorporating pulse-width modulation (PWM) and variable digital control circuitry which can vary the intensity of individual lamp elements to generate unlimited colors. (It should be noted, however, that the use of LEDs is not specifically claimed in this patent, although Super Vision believes that the patent claims cover any "light source".)

Color Kinetics' first patent, US patent #6,016,038, was filed in August 1997 and granted in January 2000. The patent relates to Chromacore? technology, covering stand-alone and network control of multiple LEDs for illumination and display. This technology has now been licensed to a number of other companies, and Color Kinetics has added a further 36 patents to its portfolio, with more than 120 applications pending. Most recently, Color Kinetics was granted a patent broadening the protection for its Chromacore technology (see Color Kinetics receives further patent coverage for Chromacore).

Lawsuits

Color Kinetics and Super Vision are involved in litigation that could have serious repercussions for this section of the LED industry. In March 2002, Super Vision filed a lawsuit seeking a declaratory judgment that certain Color Kinetics patents should be ruled invalid. In June 2002, Color Kinetics retaliated with a lawsuit claiming that many multicolor LED-based lighting products sold by Super Vision infringe numerous Color Kinetics patents. These lawsuits are both ongoing.

In March 2004, Super Vision acquired the "687" patent from High End Systems, and four days later filed an infringement lawsuit against Color Kinetics claiming past due royalties and damages in excess of $10.5 million (see Super Vision acquires key LED patent, sues Color Kinetics).

In response, George Mueller, Color Kinetics' chairman and CEO, said at the time, "The [former High End Systems] patent relates only to traditional incandescent lighting systems, not to LED-based systems, and we're confident that its assertion against Color Kinetics is completely without merit."

However, several companies at ETS-LDI evidently disagree with Mueller's view and question why the fundamental Color Kinetics patents were granted, given precedents such as the 687 patent and the prior art developed by Jerry Laidman.

In a similar vein, Color Kinetics has been granted two important patents on DMX control of LED-based systems. The DMX control protocol has been around for about 20 years in the lighting industry. LEDs Magazine spoke with at least 3 companies at ETS-LDI that could not understand how these patents could have been granted, pointing the finger at a lack of detailed knowledge of this area within the US patent office.

Of course, any disgruntled competitor is free to make such claims (at least in private), but Color Kinetics' patents remain in force unless or until the courts rule otherwise. The outcome of the litigation between the Color Kinetics and Super Vision is likely to have serious repercussions; if Color Kinetics' color-mixing patents are ruled invalid, this could threaten the company's business model of licensing its technology throughout the industry (see Color Kinetics adds five OEM and licensing partners in third quarter). If the courts find in favor of Color Kinetics, this could result in some companies being pushed out of this particular market. Even for Vegas, the stakes are high.

Footnote

Color Kinetics has agreed to an interview with LEDs Magazine to clarify, from their perspective, some of the issues raised in this article. We hope to publish the interview next week.