Signify Loses Key LED Patent Battle Against TCI in German Federal Court
Munich, May 22, 2024: The Italian electronics group TCI Telecomunicazioni Italia S.r.L. has prevailed against Signify Holding B.V. in important patent nullity proceedings concerning a core technology for LED lighting systems before the German Federal Court of Justice (BGH) (Ref.: X ZR 62/22). In in its decision announced on May 16, 2024 immediately after the date of the oral hearing and not yet substantiated in writing, the X. Civil Senate confirmed the previous decision of the Federal Patent Court (BPatG) of May 17, 2022 according to which the German national portion DE 603 25 093.9 of the European patent EP 1 576 858 directed to a device for operating an LED module was declared invalid in its entirety to the extent of claims 1 to 4 challenged in the nullity action that had been filed on August 5, 2020 (Ref. 4 Ni 19/21 (EP) in conjunction with 4 Ni 21/21 (EP)).
With this decision by the highest German civil court, the patent dispute is finally decided in favor of TCI. The European patent EP 1 576 858 is a patent relevant in the LED field that expired in December 2023 and is known as the “Double PWM” patent and relates to the dimming of light-emitting diodes (LEDs). TCI had challenged the patent with regard to its claims relevant to general LED lighting systems in Germany with the nullity action, and the patent has now been declared legally null and void in this scope for Germany and thus ineffective from the outset. Claims 5 and 6, which were not challenged in the nullity action and are directed to very specific embodiments, are not affected by the decisions of the Federal Patent Court and now the Federal Court of Justice.
The patent at issue is part of the patent portfolio underlying Signify’s licensing program known as the EnabLED Licensing Program for LED Luminaires and Retrofit Bulbs. The invalidation proceedings for the patent, which Signify itself described as part of the “Core Technologies for LED Lighting Systems” with regard to dimming and the “Power Control” field of application, were closely followed in the industry. The relevance of the patent is also reflected in a further nullity action filed on December 10, 2020 against the same German part DE 603 25 093 in the scope of claim 1 on behalf of KaVo Dental GmbH. The two nullity actions were joined by the 4th Senate of the Federal Patent Court for the purpose of a joint hearing and decision.
In two further nullity proceedings initiated on February 26, 2024 against Signify Holding B.V. before the Federal Patent Court in Munich, in which TCI had asserted the complete nullity of the German parts 60 2007 043 581.1 and 60 2007 051 658.7 of the patents EP 2 030 483 and EP 3 013 124 belonging to the same patent family, TCI temporarily interrupted the proceedings despite excellent prospects of success in view of novelty destroying prior art and fundamental problems of the claim language that became apparent in successful first instance opposition proceedings against another patent, EP 2 999 314, of the same patent family, in order to give the other party the opportunity to find a reasonable technical and economic solution and to settle the matter for the common benefit of TCI and Signify and of the entire lighting industry and market. The nullity proceedings were interrupted by with- drawing the actions on April 11, 2024 with the reservation of a renewed filing of the nullity actions.
TCI was advised and represented in the proceedings before the Federal Patent Court and the Federal Court of Justice by a team led by patent attorney Dipl.-Phys., Dr.-Ing. Volker Jordan from the Munich patent law firm WEICKMANN, as was already the case in two nullity proceedings successfully concluded for TCI at the Federal Court of Justice in 2018 and 2019. Signify was advised by patent attorney Jochen Ehlers from the Hamburg office of Eisenführ Speiser. KaVo Dental was represented in the joint proceedings by HOFFMANN EITLE.
TCI Telecomunicazioni Italia S.r.L., based in Saronno (Varese), Italy, is one of the leading international manufacturers in the field of LED technology. Founded in 1982, the company offers a comprehensive portfolio of technical components such as LED ballasts and LED converters for the lighting industry. In the 2023 financial year, the company generated a turnover of over 210 million euros with more than 200 employees.
Signify Holding B.V. is a company that emerged from the Dutch group Koninklijke Philips N.V., and was formerly known as Philips Lighting Holding B.V., and is headquartered in the Netherlands and describes itself as the global market leader in lighting for professionals and consumers as well as lighting for the Internet of Things. In the 2023 financial year, the Amsterdam-listed company generated global sales of EUR 6.7 billion with around 32,000 employees. The EnabLED Licensing Program for LED Luminaires and Retrofit Bulbs, founded by Koninklijke Philips N.V. in 2008, bundles a patent portfolio with over 4,000 ex- isting patents and more than 300 patents applied for, which are said to be directed to over 530 different inventions.
Representative TCI Telecomunicazioni Italia S.r.L.
Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Munich
Dipl.-Phys., Dr.-Ing. Volker Jordan, Patent Attorney, European Patent Attorney, Partner Christoph Vischer, LL.M. (Univ. of Auckland, NZ), Attorney-at-Law, Partner
Dipl.-Ing. Alexander Beck, Patent Attorney, European Patent Attorney
Representative Signify Holding B.V.
Eisenführ Speiser PartGmbB, Hamburg
Jochen Ehlers, LL.M., Patent Attorney, European Patent Attorney, Partner
Representative KaVo Dental GmbH
Inhouse
Dr. Dietrich Peterka, European and Swiss Patent Attorney
HOFFMANN EITLE Patent Attorneys and Attorneys at Law PartmbB
Dr. rer. nat. Roland Schieren, M.Sc., Patent Attorney, European Patent Attorney, Partner
Federal Court of Justice, X. Civil Senate
Dr. Deichfuß (Presiding Judge)
Dr. Kober-Dehm (Judge)
Dr. Marx (Judge)
Dr. Rensen (Judge)
Dr. von Pückler (Judge)
Contact person:
Dipl.-Phys., Dr.-Ing. Volker Jordan, Patent Attorney, Partner
Weickmann & Weickmann, Patent- und Rechtsanwälte PartmbB, Munich Phone: +49 (89) 45563 0 | E-Mail: [email protected]
Press contact:
Matthias Struwe
Eye Communications, Agency for Press and Public Relations
Phone: +49 (7 61) 137 62-21 | E-Mail: [email protected]
About WEICKMANN
WEICKMANN is one of the oldest and most renowned patent law firms in Germany. A 40- strong team of experts, consisting of specialists admitted as patent attorneys or attorneys- at-law, as well as approximately 100 specialized assistants, provide comprehensive support to the firm’s clients worldwide in the field of intellectual property. WEICKMANN HAS proven expertise and experience in the filing and enforcement of patents in the fields of mechanics, electrical engineering/IT, chemistry and life sciences as well as in registration and litigation proceedings concerning trademarks and designs.
More information about WEICKMANN at www.weickmann.de.