University of California initiates groundbreaking patent enforcement campaign in LED lighting

July 31, 2019

Intellectual Property Alert

The University of California (UC) has initiated a first-of-its-kind patent enforcement campaign against an entire industry to protect UC’s rights in the reinvention of the light bulb by a Nobel laureate-led research group at UC Santa Barbara.

Despite having increasingly robust and innovative tech transfer programs, academic institutions continue to face a number of challenges when it comes to licensing their IP rights to companies that can transform academic insights into commercial products. Some companies take advantage of academic openness by commercializing products that incorporate university IP, but then ignore the university’s patent rights or decline to take a license to them because there has historically been little threat that the university would actually enforce those rights against these companies. This is especially problematic with products that incorporate foundational university IP, but are manufactured through complex and inscrutable supply chains outside the United States, and then flooded into the domestic retail market where they are sold to unwitting consumers.

In this campaign, UC’s patents are fundamental to a new generation of light bulb technology known as filament LED, which replaces traditional incandescent light bulbs while using about 90% less energy and lasting many years longer. Light bulbs made with UC’s patented filament LED technology are often referred to as “Edison” or “vintage” LED light bulbs because they resemble Thomas Edison’s iconic light bulbs with glowing filaments visible inside glass bulbs.This revolutionary technology invented at UC Santa Barbara saves money and reduces energy consumption and waste, making meaningful contributions to solving some of the world’s most serious problems.

Because these products are substantially all manufactured overseas, this enforcement campaign is focused on infringement that occurs when filament LED lighting products arrive on United States shores and enter the retail marketplace. UC Santa Barbara is seeking to establish licenses with retailers that import and sell these products.

In one of the first instances of a university appearing as the sole complainant before the U.S. International Trade Commission (ITC), UC has requested the ITC to launch an investigation into the unauthorized importation and sales by, Bed Bath & Beyond, Ikea, Target, and Walmart of filament LED technology covered by UC’s patents and to issue limited exclusion and cease and desist orders to prevent retailers from importing and trafficking in these products without UC’s permission.

  • Certain Filament Light-Emitting Diodes and Products Containing Same, Inv. No. 337-TA-___ Docket No. 3401, pending institution (filed July 30, 2019)

Lawsuits seeking the payment of reasonable royalties were filed in U.S. District Court in Los Angeles against the same retailers.

  • The Regents of the Univ. of Cal. v. Walmart Inc., No. 2:19-cv-06570 (C.D.Cal. filed July 30, 2019)
  • The Regents of the Univ. of Cal. v., Inc. et al., No. 2:19-cv-06571 (C.D.Cal. filed July 30, 2019)
  • The Regents of the Univ. of Cal. v. Target Corp., No. 2:19-cv-06572 (C.D.Cal. filed July 30, 2019)
  • The Regents of the Univ. of Cal. v. IKEA of Sweden AB et al., No. 2:19-cv-06573 (C.D.Cal. filed July 30, 2019)
  • The Regents of the Univ. of Cal. v. Bed Bath & Beyond, No. 2:19-cv-06574 (C.D.Cal. filed July 30, 2019)

Nixon Peabody, which has more than 20 years of experience partnering with university technology transfer clients to help identify, protect, license, and enforce their IP, is representing UC in this patent enforcement campaign. Seth Levy and Shawn Hansen, two IP partners who are based in Nixon Peabody’s Los Angeles office, are leading the firm’s cross-practice team.

As this patent enforcement campaign progresses, we will continue to provide updates on key developments and the potential impact for academic institutions and the private sector.

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