Lighting Industry Update: Super Lighting’s TLED Patent Licensing Program in Jeopardy; Radulescu LLP: The Patents Were Obtained Through Misconduct and Fraud
by Randy Reid, May 19, 2021, Edisonreport.com
Radulescu LLP (“Radulescu”) announces an update on the patent litigation between Jiaxing Super Lighting Electric Appliance Co., Ltd. (“Super Lighting”), on the one hand, and CH Lighting Technology Co., Ltd. (“CH Lighting”) and Shaoxing Ruising Lighting Co. Ltd. (“Ruising”), on the other. Today, the US District Court for the Western District of Texas ruled in Radulescu’s favor agreeing to allow its clients CH Lighting and Ruising to add new defenses and counterclaims against Super Lighting alleging patent invalidity and unenforceability based on misconduct and fraud.
As background, for the past few years Super Lighting, one of the leaders in the TLED market, has boasted about the size of its patent portfolio and has been approaching lighting companies across the US requesting licensing fees for the sale of T8, T5 and other LED-based tube lamps (“TLEDs”). With no success in establishing a licensing program, Super Lighting turned to the US Courts and filed a pair of lawsuits.
The first suit was filed against MaxLite in May 2019 in Los Angeles and alleged infringement of six patents based on its sale of TLEDs manufactured by CH Lighting and distributed by Ruising. The second suit was filed directly against CH Lighting and Ruising in Jan 2020 in Texas and alleged infringement of eight more patents by the distribution and sale of CH Lighting’s TLED products. Radulescu was engaged to defend CH Lighting, Ruising, and MaxLite in these cases, as well as several other US-based lighting companies selling TLED products manufactured by CH Lighting in China.
Based on Radulescu’s extensive experience in the LED industry, it was able to uncover competitor TLEDs that it argued invalidated many of the claims in Super Lighting’s fourteen patents asserted across both cases. These TLEDs were sold by early TLED players such as Philips and Cree. This experience also led Radulescu to develop a unique defense. Because of subtle similarities between the patented designs and some of these prior art products (including down to component values for resistors), Radulescu suspected the prior art products were used by Super Lighting to improperly draft and file its patent applications with false inventor declarations. Although the key documents were buried among thousands of pages of other technical documents (all in Chinese), Radulescu was able to piece together evidence to argue that “Super Lighting had a practice of reverse engineering other companies’ LED tube products and presented those designs as its own inventions in patent applications.” In some cases, Radulescu argued that “no evidence exists to show that any named inventor had conception of the claimed inventions at issue prior to discovering the technology in competitor products.” This included Super Lighting’s CEO, who is named as an inventor on more than half of the asserted patents. Radulescu argued the illegal copying-and-patenting practice was so pervasive that it infected all eight patents asserted in the Texas case. Although the documentation is confidential pursuant to Court rules, there are enough details revealed in public filings to understand what Radulescu argued to the Court. Below are some of the more revealing allegations in the public filings, with the following probably summing it up best:
“Super Lighting’s “documents evidence an egregious copying-and-patenting effort that centered on analyzing other companies’ products and filing patent applications covering their technology…Claiming as their own the technologies of others is, of course, unlawful, and Super Lighting’s patents should be deemed unenforceable as a consequence.”
Here are the other allegations in the public filings that are important for US-based lighting companies to understand if they too are the subject of Super Lighting’s unreasonable patent licensing demands:
“Defendants’ proposed amendments will also have important, far-reaching effects beyond this litigation, because Super Lighting boasts about having one of the largest patent portfolios among Chinese LED manufacturers and has engaged in an enforcement campaign against multiple companies across the United States. Prior to this lawsuit, Plaintiffs filed another action…asserting patents related to the ones at issue here…Super Lighting has sent over 100 licensing letters to numerous lighting companies in the U.S. and has used the threat of patent infringement lawsuits in attempt to pressure those companies into buying Super Lighting’s products.”
“Adjudication of Super Lighting’s unclean hands and inequitable conduct is important to reinforce the duty of candor before the Patent Office and the good faith of litigants before this Court. These claims also serve to preserve the business interests of the numerous enforcement targets, many of which are domestic companies and family-owned businesses…It is important for companies accused of infringement to know if the patents offered for license are in fact someone else’s inventions or were obtained through fraud or misrepresentations to the Patent Office.”
“These specific allegations lay out when Super Lighting first reverse engineered which prior art product, how each product was copied into which Super Lighting patent application, who at which department owed and breached the duty of candor to the PTO, and why each product would have been material prior art for the asserted patents, and are therefore more than sufficient to meet Rule 9(b)’s heightened pleading standard for claims of inequitable conduct.”
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The Texas Court granted Radulescu’s request today to allow the new defenses and counterclaims to be included in the lawsuit. Further details of the defenses implicated by Super Lighting’s alleged misconduct are expected to be revealed in the coming weeks when a public version of the 175+ page Amended Answer and Counterclaim is filed on the Court’s docket. Of course, these are all just allegations that need to be proven at trial (scheduled for the end of the year) and, to be clear, Super Lighting has not conceded any of the allegations.