A few days ago, the University of California at Santa Barbara (UCSB) launched an unprecedented intellectual property (IP) action against five major US retailers involving the sale of so-called LED filament lamps. Now Longford Capital has announced that it is funding the UCSB patent-enforcement campaign. Meanwhile, Nichia has also filed recent IP claims relative to filament lamps.
A filament lamp is generally an Edison-base bulb with a clear dome that allows you to see the filament glow inside the dome. In the case of solid-state lighting (SSL) implementations, the filament is constructed from strings of tiny LEDs connected in series as opposed to the legacy tungsten filament in incandescent products. The lamps are sometimes referred to as vintage lamps, come in various shapes in terms of the globe, and feature varying filament geometries.
UCSB, or in a larger sense the University of California system, asserts that its patents are fundamental to the making of such filament lamps. The university has retained the law firm Nixon Peabody to defend the IP. The initial action includes a complaint to the International Trade Commission (ITC) over what UCSB says is illegal importation of lamps by retailers Amazon, Bed Bath & Beyond, Ikea, Target, and Walmart, and claims against the same retailers in the US District Court in Los Angeles, CA seeking the payment of royalties.
This IP action is not the first we have seen against retailers. But in such prior action, the plaintiff has typically been a packaged LED manufacturer. For example, Nichia targeted Lowe’s all the way back in 2016. And Seoul Semiconductor pursued Kmart the same year.
In most of the actions against retailers, however, the packaged LED manufacturers were mostly intent on the manufacturer of a lighting product that used LEDs that the LED manufacturer believed infringed one of its patents. But it’s hard to police such lighting manufacturers in parts of Asia, so the LED manufacturers targeted retailers. In the case of UCSB, the university system seems to simply see the retailer as a convenient place to collect the royalties.
UCSB clearly will have some help in the pursuit of the royalties both with Nixon Peabody on the legal side and Longford’s financial support. It’s not clear even on the UCSB webpage dedicated to the suit why the university’s IP applies to filament lamps and not to the broader universe of LED replacement lamps. But clearly UCSB has a long history in the LED and SSL sectors. We covered the university’s establishment of the Solid State Lighting and Energy Center with white-LED pioneer Shuji Nakamura at the helm back in 2007.
Longford, however, defined the opportunity in filament lamps. The firm said the technology launched on the market in 2014 and has reached annual sales of $1 billion. Both UCSB and Longford stand to profit if the action is found valid. The UCSB website also encourages other retailers to proactively sign a license agreement.
“America’s universities are the backbone of innovation and economic growth in the United States,” said Michael Nicolas, co-founder and managing director of Longford Capital. “UC Santa Barbara is recognized worldwide for its scholars and for excellence across broad fields of study, including solid-state lighting and power switching. The technology at the heart of this enforcement campaign has fundamentally improved lighting technology in ways that conserve energy and increase efficiency. Simply put, UC Santa Barbara reinvented the lightbulb. We are proud to support UC Santa Barbara’s efforts to protect its valuable intellectual property rights and generate revenue that will be used to fund future technological breakthroughs.”
Nichia filament action
We suspect, though, that the IP battle in the filament area might continue for a while with many more players entering the skirmish. Concurrent with the UCSB action, Nichia filed to enforce a filament-centric patent — US Patent No 9,752,734 —against Global Value Lighting in the US District Court for the District of Delaware.
It’s certainly coincidental that Shuji Nakamura worked at both UCSB and Nichia, yet interesting all the same. Nakamura was a key researcher developing the blue LED at Nichia prior to moving to UCSB. Indeed, Nichia paid Nakamura for rights to patents filed in the blue LED area.
*Updated August 29, 2019 12:40 PM for additional information on ITC involvement.