Signify Wins IPR Against Luminex

IPR image showing a gavel

PTAB Denies Luminex’s IPR Petition Against Signify’s Patent in Key Lighting Industry Decision

Luminex International Co., Ltd filed a petition for an Inter Partes Review (IPR)The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, aimed at challenging the 10,299,336 B2, patent held by Signify Holdings B.V.

The IPR was denied.

Detailed Case Background

The dispute centers around Signify’s U.S. Patent No. 10,299,336 B2, entitled “Configurable Lighting System.” Luminex International contended that the claims of the patent were not novel, asserting that prior art existed that should prevent the claims of the patent from being enforceable.

Legal Framework and PTAB’s Rationale

Under the framework established by 35 U.S.C. § 314, the PTAB is empowered to institute an IPR if there is a reasonable likelihood that the petitioner will prevail concerning at least one of the patent’s claims. However, another statutory provision, 35 U.S.C. § 315(b), introduces a significant procedural hurdle. It stipulates that an IPR petition must be filed no later than one year after the petitioner, or a party in privity with the petitioner, is served with a complaint alleging patent infringement.

In this instance, the PTAB determined that Luminex was effectively barred from initiating an IPR because the petition was filed after the one-year window had closed. This determination was largely based on the relationship between Luminex and Menard, Inc., which had previously been served with an infringement complaint concerning the same patent more than a year before Luminex filed its petition. The PTAB’s decision was influenced by the interpretation of ‘privity’, as Menard’s earlier involvement in related patent litigation established a connection that extended the legal constraints to Luminex.

The ruling serves as a stark reminder of the importance of adhering to procedural deadlines in patent litigation.

Danish Attorney Henrik Villumsen, of the Henrik Villumsen Law Firm first brought the IPR to our attention.   Villumsen said it was another win by the Signify patent machine, but he did caution us that the decision can be appealed at the Federal Circuit level.