In a major blow to Super Vision International and a group of LED fixture manufacturers known as the LED Alliance, a court in Boston has ruled that a group of five patents granted to Color Kinetics are valid, and that certain Super Vision products infringe on these patents.
Specifically this covers three of Super Vision's current color-changing LED products, and two products that are no longer sold. Super Vision believes it has "strong grounds" to appeal the decisions, although its prospects for success don't seem good.
The summary judgment ruling in favor of Color Kinetics means that the U.S. District Court for the District of Massachusetts has determined there is no genuine dispute of material fact, and that the case will not proceed to trial.
The case stems from 2002, when Super Vision filed a lawsuit seeking to have a core group of five Color Kinetics patents ruled invalid. Color Kinetics subsequently responded with a counter-suit claiming infringement by Super Vision of some of Color Kinetics' large patent portfolio (see "Patent protagonists head to court").
As well as dismissing Super Vision's claims of patent invalidity, and upholding Color Kinetics' claims of infringement, the court also found that Color Kinetics was not guilty of inequitable conduct regarding its actions with the U.S. Patent and Trademark Office, as alleged by Super Vision.
The ruling did not assess any damages against Super Vision, which will be the subject of a future trial.
The dispute between Color Kinetics and Super Vision has another strand, which has yet to be resolved. No dates have yet been set to hear the patent infringement claim brought against Color Kinetics by Super Vision in March 2004 relating to the "Variable color lighting systems" patent (acquired by Super Vision from High End Systems).
Color Kinetics is also currently in the discovery phase of its patent dispute with TIR Systems; no schedule has been yet for a possible trial.
Responses
Super Vision responded immediately to the ruling. On the issue of patent infringement by its products, the company said that it "believes that the Court's findings of fact and conclusions of law contain errors that provide the basis for successful appeal for each of the findings of infringement."
In court, Super Vision argued that each of Color Kinetics' patents in the case were invalid because of prior art and/or inequitable conduct before the U.S. Patent Office in the applications for those patents. Supporting these prior art assertions were numerous affidavits from LED Alliance members and other industry experts. Super Vision believes that "errors of fact and law pertaining to invalidity and inequitable conduct provide even further strong grounds for appeal."
In contrast, Color Kinetics has proclaimed this as a major victory. “This major win vindicates Color Kinetics’ intellectual property rights and reaffirms the validity of our patents, which protect important innovations spanning eight years of R&D in intelligent solid-state lighting,” said Bill Sims, the company's president and CEO. “This resolution sends a strong message that we can and will successfully defend our intellectual property against others who attempt to exploit our investments in innovation. We look forward to our continued progress in developing the fundamental technologies that will drive worldwide use of intelligent solid-state lighting.”
The financial markets also responded; Color Kinetics' shares leapt up by around 33% on the day following the announcement.
Many other LED fixture manufacturers will not share Color Kinetics' understandable joy at the news. LEDs Magazine has spoken to companies that have held off from marketing their products in the U.S. until this issue was resolved, fearing possible lawsuits from Color Kinetics. Another company told us that if Color Kinetics prevailed it would most likely move away from working with LED-based fixtures altogether.
In a conference call, Color Kinetics said that it had not yet evaluated whether the numerous companies that have licensed the "Variable color lighting systems" patent and related technology from Super Vision were likely to be infringing on Color Kinetics' patents.
Companies that have not signed licensing agreements with Color Kinetics will now have to consider this option. Some lighting companies that have sat on the sidelines will enter the market, now that the uncertainty of the patent dispute has been (largely) removed, while others will leave the market or be forced out. The one bright spot is that Color Kinetics' stranglehold on the control of LED-based systems is largely based on U.S. patents and is much less restrictive in other countries and regions.
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