Filament IPR: “Reasonable Likelihood” that Satco will Prevail

Brentwood, NY, Satco Products, Inc., a leading supplier of lighting products for the commercial, residential and industrial markets, today announced that it had received key rulings from the U.S. Patent and Trademark Appeal Board in connection with four patents at issue in a pending litigation in the Eastern District of New York (“EDNY”) with the Regents of the University of California at Santa Barbara.

Specifically, after receiving unsubstantiated threats of alleged patent infringement by the University of California, Satco filed a lawsuit in the EDNY seeking a ruling by the Court that the patents identified by the University of California were not infringed by Satco. In addition, Satco filed petitions for inter partes review against U.S. Patent Nos. 7,781,789, 9,240,529, 9,859,464, and 10,217,916—which the University of California had asserted against some Satco products in a complaint previously filed with the International Trade Commission (“ITC”). In a series of decisions capped by a ruling on October 22, the U.S. Patent Office instituted inter partes review of all four patents challenged by Satco, finding that there is a “reasonable likelihood” that Satco will prevail in demonstrating that at least one claim in each of those patents is invalid.

The recent setbacks for the University of California follow earlier losses it sustained in its continuing effort to extract royalties from numerous companies in the LED lighting industry. As explained in Satco’s complaint in the EDNY, the University of California has mounted what it calls a “patent monetization campaign,” which is being funded by a private investment company in exchange for a portion of the proceeds. This campaign was kicked off on July 30, 2019, when the University of California filed the ITC complaint mentioned above against five retailers. That same day, the University of California began sending threatening letters to numerous retailers attaching copies of its ITC complaint, and demanding payment of royalties. Yet, after months of litigation and letter-writing, the University of California mysteriously withdrew its first ITC complaint, and on May 26, 2020 the ITC terminated the investigation in its entirety.

More recently, it has refiled a substantially similar complaint with the ITC, based on the same patents and additional ones. Satco intends to vigorously defend its products in the 2nd ITC matter.

Satco is represented by Scott J. Bornstein, who serves as Co-Chair of the Global Intellectual Property & Technology Group and the Global Patent Litigation Group at Greenberg Traurig, LLP, along with Shareholders Nicholas A. Brown, Heath J. Briggs, and Stephen M. Ullmer, as well as Robert P. Lynn, Jr. and Stephen W. Livingston of Lynn Gartner Dunne, LLP.

“We are pleased with the orders from the U.S. Patent and Trademark Office, and look forward to finally resolving all claims made by UCSB,” Bornstein said.

SATCO Products, Inc., established in 1966, is a privately held New York based company that manufactures and distributes a wide variety of lighting products to an international lighting and electrical market. Including, LED, incandescent, halogen, fluorescent, HID and energy efficient lamps as well as decorative and functional lighting fixtures sold under the NUVO brand. For more information on SATCO, visit www.satco.com

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