PTAB Invalidates Signify Patent Claims in IPR2024-00101
On 13 August 2025, the Patent Trial and Appeal Board (PTAB) issued its Final Written Decision in IPR2024-00101. The Board found claims 1–7, 9–15, and 18–20 of U.S. Patent No. 10,299,336 B2 unpatentable. However, it left claims 8, 16, and 17 intact.
What the ’336 Patent Covers
The ’336 patent describes a luminaire with a housing, an external cable, and a remote multi-position switch. Each switch position selects a specific correlated colour temperature (CCT). In short, installers can set CCT in the field without stocking multiple SKUs. That feature helped popularise “CCT-selectable” fixtures across value and retail channels.
How We Got Here
Early on, Signify argued the petition was time-barred under §315(b). The company said Menard, Inc. was sued more than a year earlier and counted as a real party in interest or privy to the petitioner, Luminex International. Initially, the Board denied institution. Then, on 20 August 2024, the USPTO Director granted Director Review, vacated the denial, and remanded. The Director concluded the record did not show Menard controlled or funded the filing.
A supplemental opinion on 21 November 2024 underscored that point. The Director wrote that Menard’s desire to avoid liability did not make Luminex its proxy. With that, the case proceeded to trial on the merits.
The Final Decision
After a full record, the panel ruled most claims unpatentable. The chart in the decision lists the losing claims as 1–7, 9–15, and 18–20. The Board also noted that any party seeking review must follow the notice and service steps in 37 C.F.R. §90.2.
What Survived—and Why It Matters
The petitioner failed to prove claims 8, 16, and 17 unpatentable. Those claims now define a narrower—but still live—path for enforcement. Consequently, Signify can assess whether to lean on those claims, pursue reissue or reexamination, or both. Meanwhile, OEMs and distributors should compare their CCT-selectable designs to the surviving claim set. That exercise will shape risk assessments for private-label and big-box programs.
Of the 17 claims the Board invalidated, 12 had targeted Menard. Even so, Henrik Villumsen reminds us that ‘9 of those 12 fell,’ and Menard still faces 46 claims.”
The Wisconsin Case
On 1 October 2024, the Western District of Wisconsin stayed the parallel case. The court said the IPR could streamline a “ponderous” matter. It also applied Douglas Dynamics-style estoppel. Defendants are estopped from raising any invalidity grounds they raised—or could have raised—in the IPR. By contrast, grounds the PTAB declined to institute remain available. With the IPR decision now in, parties should expect renewed motion practice under that framework.
What to Watch Next
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Appeal: Either side can seek Federal Circuit review. Expect quick notices, given the tight post-decision deadlines.
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Amendment Pathways: Signify can evaluate reissue or reexamination to address the panel’s reasoning and target the same market space with amended claims.
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District-Court Tempo: The Wisconsin stay did what it was meant to do. Now, the court will likely reset schedules, apply estoppel, and narrow disputes before any claim-construction or trial steps resume.
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Copycat Designs: With many claims cancelled, competitors may accelerate CCT-selectable lines. Procurement teams should confirm that new or revived SKUs avoid the surviving claim language.
Bottom Line
The PTAB removed most of the ’336 patent’s claim coverage, but not all of it. Accordingly, Signify keeps a smaller island to defend, and the industry gets more room to operate. The next moves—appeal, amendments, or both—will determine how large that island remains.
Go Deeper: USPTO Refuses Signify Rehearing.