Patent Trial and Appeal Board (PTAB) Decimates 3 Lighting Science U.S. Patents

November 2 [addtoany]

EdisonReport can confirm that the Patent Trial and Appeal Board (PTAB) this week issued rulings that the vast bulk of three Lighting Science Group (LSG) patents directed to low-profile LED downlights are not patentable. Forty two out of fifty one claims were formally “cancelled” across the three patents by the U.S. Patent & Trademark Office. These are the very patents that LSG asserted in over 20 patent litigations in recent years demanding royalties for what had become a common design for replacement LED downlights. The litigation campaign came to a screeching halt last year when a number of lighting companies filed Petitions with the PTAB requesting cancellation of a number of claims asserted in litigation.

We reached out to David Radulescu, Ph.D., of Radulescu LLP, who has spoken publicly about the LSG litigation campaign in the past and was involved in a handful of cases defending against LSG’s claims. He has confirmed the rulings and offered the following comment:

“Just as I said at the last three LIGHTFAIR’s where I have discussed the power of the PTAB for challenging broad patents, the Patent Office is not hesitant to consider invalidity challenges and tackle substantive arguments on their merits. This is to be contrasted with validity challenges in U.S. District Courts where such issues are typically decided by a lay jury. In this instance, the PTAB determined that LSG’s claims covered obvious and trivial design features in LED lights so the decisions are not surprising.”

One of the patents challenged by the PTAB includes U.S. Patent 8,967,844. Your humble editor concludes this story by quoting the full Abstract of that patent (which may explain the PTAB’s decision):

A luminaire includes a heat spreader, a heat sink, a light source and an outer optic. The heat sink is substantially ring-shaped and is disposed around and in thermal communication with an outer periphery of the heat spreader. The light source is disposed in thermal communication with the heat spreader, the light source having a plurality of light emitting diodes (LEDs) that are disposed in thermal communication with the heat spreader. The outer optic is disposed in optical communication with the plurality of LEDs. The heat spreader, the heat sink and the outer optic, in combination, have an overall height H and an overall outside dimension D such that the ratio of H/D is so dimensioned as to: cover an opening defined by a nominally sized four-inch can light fixture; and, cover an opening defined by a nominally sized four-inch electrical junction box.

Editor’s Note:  An earlier version of this article implied that all three patents had been invalidated. That was incorrect. The vast majority of the claims in the patents were invalidated, but the patents themselves are upheld.