U.S. Patent and Trademark Appeal Board Decision Supports Satco’s IPR Action, Invalidating all Claims of UCSB ‘464 Patent

Satco Products, Inc., a leading supplier of lighting products for the commercial, residential, and industrial markets, today announced that it has prevailed in a proceeding before the U.S. Patent Trial and Appeal Board (“PTAB”) invalidating all claims of U.S. Patent No. 9,859,464, which had been asserted by The Regents of the University of California at Santa Barbara (“UCSB”). The ’464 patent is generally directed to a light emitting device comprising an LED chip on a transparent plate. This was the fourth patent relating to LED technology which had been asserted by UCSB that has been invalidated by Satco.

Importantly, the ’464 patent was also the subject of a recent trial before the International Trade Commission (“ITC”) which concluded on September 3, 2021. The parties are presently awaiting a decision from the ITC, which is expected soon.

Today’s decision is the latest in a series of positive results obtained by Satco against UCSB. Specifically, after UCSB sent threatening letters to Satco’s customers containing unsubstantiated allegations of patent infringement, Satco filed a complaint seeking a declaratory judgment of non- infringement in the Eastern District of New York and subsequently filed petitions for inter partes review of U.S. Patent Nos. 7,781,789, 9,240,529 and 10,217,916. On September 15, 2021, the PTAB determined that Satco “has shown, by a preponderance of the evidence, that all challenged claims” of the ’789 and ’529 patents “are unpatentable.” And, last week the PTAB likewise found the asserted claims of the ’916 patent invalid.

Satco will continue toaggressively defend its products fromunwarranted claims of patent infringement from non-practicing entities, such as UCSB, who unfairly attempt to extract royalties from companies which offer innovative products to consumers.

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

“Satco is pleased with the decisions from the U.S. Patent Trial and Appeal Board and looks forward to finally putting these allegations to rest so it can continue to focus on delivering high quality lighting solutions to its customers,” Lynn said.

The victories achieved by Satco against UCSB were not isolated occurrences. Recently, Satco also obtained rulings of invalidity against Seoul Viosys Co. Ltd. and Seoul Semiconductor Co. Ltd. (“Seoul”). After Seoul filed a litigation in the Eastern District of New York with allegations of patent infringement, Satco initiated inter partes review of U.S. Patent Nos. 9,343,631, 10,134,967, and 8,860,331. On September 10, 2021, Satco obtained a ruling from the PTAB invalidating the challenged claims of the ’631 patent. This latest setback for Seoul followed earlier decisions invalidating the challenged claims of the ’967 patent on July 21, 2021, and the ’331 patent on August 23, 2021.

“We are proud to represent a company like Satco which is willing to devote valuable time and resources defending its customers and products from baseless allegations involving invalid patents,” said Bornstein.

Satco Products, Inc., established in 1966, is a privately held New York based company that offers a wide variety of lighting products, 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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