EXCLUSIVE:  MUST CREDIT EDISONREPORT

by Randy Reid and Jacob Wright.  

On 16 July , 2020, EdisonReport reported that Cree Lighting, an Ideal Industries company, has brought forth litigation against RAB Lighting. The actual patent trial (hearing) before the U.S. International Trade Commission (ITC) began on 3 May, 2021, with Cree Lighting claiming patent infringement of five patents against RAB Lighting.  We listened to a portion of the 5-day hearing and read the transcripts to fill in the gaps.

There are five patent claims against RAB and three of them seem like noise. However, two claims, involving the ‘819 and the ‘531 patents could have a profound impact on our industry, so profound that it could ensnare the entire industry.  Basically, a company could be infringing for importing or selling in the U.S. a luminaire or a bulb that uses at least one LED and has a (wall plug) efficiency greater than 60 lumens per watt (LPW).  That is pretty much all of us.

The ‘819 patent was submitted in May of 2007 and only granted in December of 2013.  The patent claims any LED that makes white light at more than 60 LPW, infringes.  That is almost the entire lighting industry.  The ‘819 was an old LLF patent. LLF was purchased by Cree, who was purchased by Ideal.

The ‘531patent was originally filed in November of 2008 and granted in March of 2013.  This, too, was an old LLF patent.  Instead of 60 lumens per watt, the ‘531 claims at least 85 lumens per watt.  The patent is quite simple in that it claims IP on a lighting device with one solid state emitter and at least one LED.

It is of particular note that some claims of these patents have no upper limit to their scope, which, I interpret as meaning that if a company invented an LED lighting device that can achieve 500 lumens per watt—which no one can do today—they would be infringing on Cree’s patent.  It is as if Cree is claiming a patent on something not yet invented.

It is also curious that the description of the invention in both patents focuses on a new way of making white LED light. This new way is achieved using Blue LEDs (with phosphor that results in a greenish light) combined with separate red LEDs.  We believe this is also known as CREE’s True White Technology and was first introduced in the LR6 series downlight.  The invention described in the patent is not mentioned in the claims which instead cover all ways of making white light.

The third patent claim is the ‘270, a design to improve heat dissipation, improve air and water flow.  There is much prior art available, and we don’t see this claim being relevant.

The fourth claim regards a lens to allow for asymmetric distribution of light known as the ‘570. Optics have changed greatly, so regardless of outcome, the ‘570 would have little commercial impact on the industry.

The fifth claim is the ‘449, a patent dealing with downlights. During the hearing, Cree worked hard to establish that the patents and products in question are an important part of their industrial domestic strategy. Cree emphasized that they are a U. S. company and are impacted by the importation of the infringing products from overseas by RAB Lighting. RAB took great issue and mounted a strong defense against all patent infringement claims, but RAB did not contest the validity of Cree Lighting’s relevant patents being domestic industry prongs with the exception of the ‘449 downlight patent. RAB explained that Cree’s products under the ‘449 patent are manufactured in Hong Kong, imported as finished products, and have no production or manufacturing expenses related to them once in the United States. Therefore they won’t satisfy the domestic industry requirement of the ITC.

We suspect Cree chose RAB for this ITC complaint as a test case to determine the true value of their patents.  RAB is big enough to defend themselves, but not a huge conglomerate with an army of attorneys.

The hearings concluded on 7 MAY, 2021. Judge Cheney presided over the hearings and stated that both sides will most likely have some disappointment with the final decision, a decision that will come no later than 17 AUG, 2021. He states that Cree Lighting and RAB Lighting can end the uncertainty of this litigation sooner by reaching an independent settlement, otherwise it will most likely drag out for a couple more years.

Each side will submit up to a 50,000-word summation.  Judge Cheney will review those and issue an initial determination, which is sent to the other ITC judges and they will write the final determination.  If Cree is successful on any of the claims, an exclusion order would be written based on the final determination. However, before the exclusion order would go into effect, there would be a public interest hearing. Cree and Feit tangled a few years ago on an ITC complaint and  settled before the public hearing.

Public transcripts of the proceedings can be read below.

Evidentiary Hearing, Volume I (May 3rd, 2021)
Evidentiary Hearing, Volume II (May 4th, 2021)
Evidentiary Hearing, Volume III (May 5th, 2021)
Evidentiary Hearing, Volume IV (May 6th, 2021)
Evidentiary Hearing, Volume V (May 7th, 2021)

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