Signify Faces Litigation from Former IP Counsel

by Jacob Wright and Randy Reid.

Signify is facing litigation originally brought against them by former in-house IP counsel David Barnes. The suit is based around allegations that Signify infringed on patent rights belonging to the company L3Harris Technologies. The events that led up to the suit started around October 1, 2019. Barnes, acting as an agent for the company L3Harris, began sending Signify “evidence of use” charts alleging that Signify infringed on patents ‘986 and ‘572. As time went on, further allegations of patent infringement of additional patents were brought forth against Signify. Below is a timeline of events:

  • Around January 21, 2020, Barnes began reaching out to Signify to discuss the issues of patent infringement for the patents previously mentioned.
  • On or about April 9, 2020, Barnes sent Signify “evidence of use” charts alleging that Signify infringed on additional patents ‘310 and ‘117.
  • Patents-in-Suit were thereafter assigned to Acacia Research Group, and thereafter were assigned to Defendant Stingray IP Solutions, LLC.
  • On or about November 4, 2020, Eric Lucas of Acacia Research Group, acting on behalf of Acacia subsidiary Defendant Stingray, continued to contact Signify alleging that Signify’s products infringe its patents.
  • On February 8, 2021, Defendant filed two complaints for patent infringement. The patents included in these complaints include: ’986 Patent, the ’310 Patent, ’426 Patent, ‘678 Patent, the ’572 Patent, and the ’961 Patent.
  • The formal case was filed on 31 MAY 2021.

Stingray is a non-practicing entity. Non-practicing entities have sometimes been pejoratively referred to as trolls, and Stingray is a great name for a patent troll.  The litigation focuses on networking, not LEDs and the Philips Hue is a big target. Stingray recently filed suits against Amazon and Legrand.

Signify disputes all claims of patent infringement. Signify went on to say that the suit has caused, and is causing, irreparable harm to the company and requests that judgement be in favor of Signify and to be reimbursed for all costs associated with this suit. Signify demands a jury trial.  The original suit was against Signify in The Netherlands and it was filed in the U.S. District Court for the Eastern District of Texas, which has been quite friendly lately to non-practicing entities.  The Signify countersuit was filed in the US District Court for the District of New Jersey.

We believe that Signify is pursuing a smart strategy. They did not sit back and wait, they are on the offense trying to get a NJ judge to rule that their patents are not infringed and proactively asking the court to protect their business by declaring no infringement.

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