But that's not all; to allow Super Vision to keep selling its LED-based products, the company has agreed to pay a royalty fee to license Color Kinetics' vast LED technology patent portfolio.
The dispute dates back several years and has generated so many articles that it has its own section on our website – see www.ledsmagazine.com/articles/features/1/12/10. In these disputes, Super Vision took the lead on behalf of a group of companies involved with LED lighting. Super Vision attempted, unsuccessfully, to challenge the validity of Color Kinetics' core patents, which various industry players have claimed are based on prior art.
The main features of the comprehensive agreement are as follows:
• Super Vision will pay Color Kinetics a set fee of $825,000 as settlement for all past claims Color Kinetics has against Super Vision.
• Color Kinetics will grant Super Vision a royalty bearing license to its worldwide patent portfolio, allowing Super Vision to continue the manufacture and sale of its LED-based lighting products, including the SaVi™ line.
• Super Vision will drop its pending claim of infringement against Color Kinetics with respect to U.S. patent #4,962,687, known as the ’687 patent. Color Kinetics will drop its declaratory judgment claim of non-infringement of the ’687 patent.
• Super Vision will grant Color Kinetics a royalty free license to the ’687 patent.
• Super Vision waives its rights to appeal the final judgment granted to Color Kinetics by the U.S. District Court of Massachusetts on November 8, 2006. In its ruling, the Court permanently enjoined Super Vision from manufacturing or selling in the United States any of the Super Vision products that were held to infringe Color Kinetics’ patents, and all other Super Vision products which are merely colorable variations of the litigated products. By granting a license, Color Kinetics is allowing Super Vision to continue the sale of all enjoined products. Color Kinetics is naturally very pleased with the result, saying that it "sends a strong message to the industry."
Bill Sims, president and CEO of Color Kinetics , said that the company "chooses not to exclude players from the field, but rather enable the market through an active licensing program."
Sims continued; "The resolution of this case, combined with an ever-growing number of patents and broad list of prospective licensees, will allow us to aggressively pursue new agreements in diverse markets -- ultimately helping to advance adoption of LED illumination worldwide."
Mike Bauer, president and CEO of Super Vision, attempted to put a positive spin on the agreement. "After almost five years of litigation, it is exciting to be able to focus 100% of our efforts on growing the company, developing new products and incorporating new LED technologies into lighting systems and controls through this agreement," he said. "It was time to put the past behind us and get refocused on the business of lighting."
