On August 20, 2024, the United States Patent and Trademark Office (USPTO) made a critical decision regarding the inter partes review (IPR) involving Luminex International Co., Ltd. (“Petitioner”) and Signify Holdings B.V. (“Patent Owner”). The IPR ruling is helpful to the Menard’s defense team.
The dispute centers around U.S. Patent No. 10,299,336 B2 (“the ‘336 patent”). Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, reviewed Luminex’s request for Director Review after the Patent Trial and Appeal Board (PTAB) initially denied the IPR. Luminex contested the PTAB’s classification of Menard, Inc. as a real party in interest (RPI). After reviewing the facts, Director Vidal concluded that Menard does not qualify as an RPI or a “privy” of Luminex under § 315(b). Consequently, she vacated the earlier decision that barred the IPR based on timing and remanded the case to the PTAB for further evaluation.
Background of the Case
In 2022, Signify sued Menards, alleging that some of the lighting products it sold infringed on their patent. Menards responded by bringing Luminex and other suppliers into the lawsuit, arguing these suppliers should bear responsibility for any legal issues related to the products. By October 2023, Luminex sought to challenge the patent’s validity through an inter partes review. However, the PTAB blocked the challenge, citing Menards’ close involvement in the dispute.
Director Review and the Favorable Ruling for Luminex
The USPTO’s Director intervened after Luminex argued that Menards should not be considered a central party in the dispute. Upon review, the Director ruled that Menards does not meet the criteria to be classified as a “real party in interest.” This decision now allows Luminex to proceed with the patent challenge.
How the IPR Ruling helps Menards
This decision has important implications for Menards. If the review ultimately invalidates Signify’s patent, Menards could minimize its legal risk and avoid potential damages or the need to alter its product offerings. Essentially, this ruling provides Luminex another opportunity to prove that Signify’s patent is unenforceable—an outcome that could benefit Menards significantly.
Looking ahead, Menards can focus on allowing the IPR process to unfold with the hope of a favorable result. Although they remain involved in the broader legal case, they are now less directly tied to the patent challenge itself.
Read the details here: IPR Decision Helpful to Menards.