Signify vs. Luminex: Request for Documents
Is Menard Indemnified? That is the big question that Signify Holdings B.V. is looking to answer in its patent dispute with Luminex International Company Ltd. The case revolves around U.S. Patent No. 10,299,336 and is under review by the Patent Trial and Appeal Board (PTAB). This battle also highlights Menard Inc.’s involvement and raises questions about the patent’s validity and the nature of the parties’ relationships.
The Background of the Dispute
Signify initiated the conflict by accusing Menard of selling products that infringed on its patents. Menard responded by filing third-party complaints against Luminex, claiming the supplier should bear responsibility for any patent infringement. This led to an inter-partes review (IPR) process where Luminex challenged the patent’s validity.
At the center of the case is U.S. Patent No. 10,299,336, which belongs to Signify’s EnabLED Portfolio. This portfolio includes innovative technologies for advanced lighting products.
Signify’s Discovery Motion: Is Menard Indemnified?
On 14 November 2024, Signify filed a motion to obtain documents and communications between Luminex and Menard. The requested materials cover the period from 8 February 2021 to 25 October 2023, which includes the start of Menard’s third-party complaint and its coordination with Luminex.
Signify’s request focuses on three key areas:
- Communications and Agreements: Signify wants to examine patent infringement or indemnification correspondence. These records could show if Menard acted as a “real party in interest” in the IPR.
- Pre-Litigation Agreements: Signify believes a pre-existing indemnification agreement requires Luminex to defend Menard.
- Coordination of Legal Strategies: A district court order required Menard and Luminex to coordinate their defense strategies. Signify seeks details about how Menard influenced Luminex’s actions in the IPR.
Legal Standards and the Garmin Factors
The PTAB uses Garmin factors to evaluate discovery requests, ensuring they are fair and not overly burdensome. Signify addressed these factors in its motion:
- Likelihood of Relevant Information: Signify provided evidence suggesting important agreements and communications exist between Luminex and Menard.
- Focus on Facts, Not Arguments: The request avoids seeking legal positions and targets factual records, such as agreements and communications.
- Signify’s Limited Access: These documents are only available from Luminex and Menard, making them inaccessible through other means.
- Clarity in Requests: The motion specifies the documents, date ranges, and relevant litigation materials, making compliance straightforward.
- Minimal Burden: Signify notes that many requested documents were already prepared for earlier court proceedings, reducing the workload for Luminex.
Indemnification and the “Real Party in Interest”
Signify’s motion also examines whether Menard qualifies as a “real party in interest.” According to PTAB guidelines, this term refers to entities that control or fund litigation efforts. Evidence of an indemnification agreement between Menard and Luminex suggests a deeper relationship than a simple supplier-customer arrangement.
Dr. J. Gary Eden’s Role in the Case
Dr. J. Gary Eden, an expert witness retained by both Menard and Luminex, plays a central role in this dispute. Signify seeks details about Menard’s involvement in hiring or compensating Dr. Eden. His reports are critical to both the district court case and the IPR, making his role a key point of interest.
This patent dispute between Signify and Luminex raises essential questions about intellectual property law and corporate relationships. If the PTAB grants Signify’s discovery request, it could reveal information that changes the case outcome. The decision may also set a precedent for future cases involving indemnification and real party in interest determinations.
Its resolution could influence Signify’s EnabLED Portfolio and the future of lighting innovation.
Read the Request for Production here
Read the Request for Additional Discovery here
Go deeper and read about Menard seeking a stay.