ETI Says Signify’s Confidential Licensing Terms Support Proposed Patent Misuse Defense
ETI Solid State Lighting is asking a federal court for permission to expand its defense against Signify. The company argues that Signify’s confidential licensing terms and agreements produced during discovery revealed facts supporting its proposed patent misuse defense.
In a reply brief filed 25 June in the U.S. District Court for the Northern District of Georgia, ETI contends it could not have asserted the defense earlier. The company says Signify kept the key terms of its licensing agreements confidential until producing more than 90,000 pages of license documents during discovery in December 2025.
ETI: Confidential Licensing Agreements Changed the Case
According to ETI, Signify argues that ETI should have known enough about the EnabLED licensing program before the lawsuit to assert patent misuse. ETI disagrees.
The company says there is an important difference between knowing that Signify operates the EnabLED licensing program and knowing the confidential contract terms that govern royalties. According to ETI, it learned those specific terms only after reviewing the confidential licensing agreements produced during discovery. ETI says those provisions form the basis of its proposed patent misuse defense.
ETI also argues that Signify did not produce those agreements until months after the deadline for amending pleadings.
The company also points to a 2021 email from Signify’s counsel. In that email, counsel acknowledged that Signify’s license templates and more than 1,300 licensing agreements were confidential. The email also stated that Signify would not disclose them without a nondisclosure agreement.
According to ETI, that correspondence undermines Signify’s argument that the relevant licensing terms were publicly available before litigation.
Review of 90,000 Pages Took Time
Signify argues that ETI waited too long after receiving the documents to seek permission to amend its pleadings.
ETI disagrees. The company says reviewing approximately 90,000 pages of confidential license agreements required substantial time. At the same time, ETI was handling claim construction, discovery disputes, and other litigation responsibilities.
ETI also argues that courts have found similar delays reasonable when parties receive large volumes of discovery after amendment deadlines have passed.
Proposed Patent Misuse Defense
If the court grants the motion, ETI plans to assert a patent misuse defense.
The reply brief argues that ETI’s proposed allegations satisfy the legal standard for amending pleadings. ETI argues that Signify used the asserted patents to expand its licensing reach beyond what patent law permits.
ETI also argues that the court should address disputes over the meaning and economic effect of the licensing agreements later in the case rather than at the pleading stage.
Signify disputes those allegations. The company has urged the court to deny ETI’s request.
Discovery Still Ongoing
ETI also argues that allowing the amendment would not prejudice Signify. The company notes that discovery remains open, no Markman hearing has been been scheduled, and the current case schedule would not need to change.
ETI contends that denying the motion would prevent it from asserting a defense based on information it says remained unavailable until Signify produced its confidential licensing agreements.
Separately, the court granted ETI’s motion to file portions of its proposed amended pleading and supporting exhibits under seal because they contain confidential licensing information. The court has not yet ruled on ETI’s request to amend its pleadings.