Color Kinetics confident of success in patent disputes

Last month, LEDs Magazine published an article about the patent dispute between Color Kinetics and Super Vision that relates to LED lighting systems. Here, Bill Sims, President and COO of Color Kinetics, responds to some of the points raised in that article.

Dec 1st, 2004
Within the LED lighting community, a bitter intellectual property dispute is ongoing between Color Kinetics and Super Vision, two rival manufacturers. While Color Kinetics has a strong portfolio of patents, many of its rivals are concerned that the company wields too much influence and is having a damaging effect on the industry. Super Vision and other manufacturers have formed the LED Alliance to try to gather evidence of prior art that they hope will negate some of the claims within Color Kinetics' patent portfolio.

LEDs Magazine spoke with Bill Sims, president and COO of Color Kinetics, to get his side of the story.

What is Color Kinetics' view towards intellectual property?
Bill Sims: Since 1997, Color Kinetics has heavily invested in the development of advanced intelligent solid-state lighting technologies, broadened our product offerings, and literally made the market for this technology. Like many technology companies, we protect this investment and invention through patents.

Some companies keep their patents for their own exclusive use; Color Kinetics does not. We seek to enable the marketplace with the IP that we have funded and developed through an active and open OEM & Licensing program.

Seven years later, some manufacturers such as Super Vision are now attempting desperate measures to move into the solid-state lighting market by copying what Color Kinetics developed, and unfortunately are resorting to a tactic of grandstanding in front of the press to try to assist them in an intellectual property dispute.

What's the history of the patent dispute with Super Vision?
Bill Sims: I don't think that most people realize that Super Vision was the first to sue - they sued us in 2002, and we subsequently countersued for patent infringement. Then, in early 2004, Super Vision acquired the rights to the Belliveau patent and sued us for infringement over that patent.
[Editors note: readers should refer to the article Patent issues cause discontent among LED lighting manufacturers for more details.]

Unfortunately, the first lawsuit (i.e. the suit-countersuit) has been delayed - we were expecting to have a hearing sometime around October 2004, and that the trial would begin in January 2005. We were extremely disappointed to receive notification of this delay as we're eager to get the case resolved as quickly as possible. We remain confident of our position.

The initial lawsuit filed by Super Vision includes matters related to improper business practices. You've also been accused (out of court) of making heavy-handed approaches to companies that you believed were using technology covered by your patents. How do you respond to that?
Bill Sims: The insinuations of heavy-handed practices relate to a few events that took place a long time ago, and we believe that they are overblown. We are undoubtedly serious about protecting the investment we make in technology developments and the subsequent intellectual property that results from it. Over the course of the last seven years we have refined our OEM and licensing strategy, and for years now have been open to providing technology and licenses to our patent portfolio at reasonable rates to those who want to establish such partnerships.

How do you try to work with other companies?
Bill Sims: We have a very open-for-business mentality. We market our products and technologies, approaching customers with the proactive intent of trying to assist them in joining the excitement that's taking place in solid-state lighting. We've been in this business for 7 years, we have the most experience and the broadest product line, and we think we can add a lot of value and help people to avoid the same mistakes and challenges we faced by being a pioneer.

We have 31 active licensing and OEM partners. We offer digital light engines, controllers and power supplies which OEM customers can incorporate into their own fixtures, and we also offer core components. Because we have developed and implemented this technology, unlike some companies that have done little to no technology development themselves, we can also offer technology transfer and we'll show customers how to successfully design their products. Contrary to the belief that we're trying to own the market by ourselves and not share, we firmly believe that the adoption of advanced solid-state lighting is to everyone's benefit, as well as to our benefit.

How do you approach companies that introduce products using technology which you believe is covered by your patents?
Bill Sims: Typically we would proactively go to them with a two-fold approach. Firstly, since they've created on their own they're obviously interested in this area, so we would offer our products, technology and licensing options. If we think there's a relation to our IP, we would have that conversation with them. Our precise approach would depend on the company concerned and the circumstances.

Our approach is to facilitate the adoption of the technology. We think intelligent solid-state lighting has a tremendous future. We believe adoption is happening much faster than was predicted, but we also believe that Color Kinetics had a lot to do with that. We blazed the trail, established a leadership position, and invested millions of dollars. We're happy that everyone has got on board, but that doesn't change our position that in certain situations we should protect our developments.

What is your response to claims that some of your fundamental patents are based on prior art and should not have been granted?
Bill Sims: We have, to date, 31 examples of OEM licensing partners that do place considerable value on our IP and technology. We've gone through 6 rounds of financing and a public offering in which our IP was reviewed. We have 37 patents and 120-plus applications, which contain many thousands of claims. It seems to me that the allegations reveal a complete misunderstanding of the claims that make up our patent portfolio.

One of the disconnects surrounding this issue is that people think our patents are all about color-mixing, which they're not - they cover many other subjects. Even for our core technologies, we have had patents granted in Australia, Canada and Europe, as well as the US, so these patent offices have also validated the claims independently.

Also, many of the technologies that we've protected are in our products. We aren't using patents as a way to simply build an IP portfolio - we use much of this technology. I'd like to contrast that approach with other companies that have invested little or no funds and are using patents as a way to generate revenue.

I think there is a general lack of understanding of our patent portfolio and what the claims contain, and frankly a lack of respect and understanding of patent law.

What is your summary of the patent situation involving Color Kinetics and Super Vision?
Bill Sims: Our patent portfolio is clearly one of our core assets, and we're going to defend it whenever necessary. We're extremely disappointed that the trial schedule in the suit-countersuit patent litigation against Super Vision was delayed, by approximately a quarter. We're very well prepared for the trial, and confident in our position that Super Vision infringes our patents. They sued us first after deciding not to purchase a license, although we tried very hard to work with them to set up a licensing agreement.

As for the Belliveau patent, it doesn't cover LED color mixing, and we feel strongly that we don't infringe that patent.

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