ITC Investigates University of California Complaint Against Amazon and Other Major Retailers

By Steve Brachmann
September 19, 2019

“From a university perspective, it’s difficult to get companies to license patents even if they’re infringing. They tend to infringe with impunity as there’s very little risk that a university will actually enforce patent rights against them.”

U.S. International Trade Commission ITC in Washington DC.

U.S. International Trade Commission

In late August, the U.S. International Trade Commission published a notice of institution of a Section 337 investigation on behalf of the Regents of the University of California (UC), which is now underway. The University filed a complaint in July alleging that a series of major retailers including Amazon.com, Bed Bath & Beyond, IKEA, Target and Walmart have infringed patents through the importation of certain filament light-emitting diodes (LEDs) and products containing the same. The ITC action is part of an enforcement campaign that is being hailed by the firm representing the university as a “first-of-its-kind university-led effort” to vindicate patent rights owned by the institution.

There are four UC patents involved in the Section 337 investigation:

  • S. Patent No. 7781789, Transparent Mirrorless Light Emitting Diode. It claims an opto-electronic device comprising an LED that emits light from multiple sides and wherein all LED layers are transparent for an emission wavelength except for an emitting layer.
  • S. Patent No. 9240529, Textured Phosphor Conversion Layer Light Emitting Diode. The claimed invention minimizes the internal reflection of the phosphor layer by preferential patterning the emitting surface to direct more light away from the absorbing chip structure.
  • S. Patent No. 9589464, Light Emitting Diode With Light Extracted From Front and Back Sides of a Lead Frame. It discloses an LED combined with a shaped phosphor conversion which results in a combined structure that extracts more light out of the white LED.
  • S. Patent No. 10217916, Transparent Light Emitting Diodes. The claimed invention similarly addresses a need in the art for LED structures that more effectively extract light.

As the Section 337 complaint filed with the ITC  shows, the filament LED technology covered by the asserted patents was developed by researchers at the UC Santa Barbara’s Solid State Lighting and Energy Electronics Center (SSLEEC), especially through the work of the SSLEEC’s co-director Shuji Nakamura, a co-recipient of the 2014 Nobel Prize in Physics. Also listed as inventors on the asserted patents are SSLEEC co-director Steven DenBaars and research center co-founder James Speck. A background webpage on the patent enforcement campaign on the UC Santa Barbara website notes that the filament LED bulbs, which may vary in terms of filament number or filament length, can be installed in residential, commercial and industrial settings and the market for the bulbs is expected to reach $1 billion in sales in 2019.

First University Before the ITC as Sole Complainant

“This is essentially the first time that an academic institution has appeared as a sole complainant before the ITC,” said Seth Levy, Partner at Nixon Peabody. Levy is co-chair of the firm’s Life Sciences Center and co-lead counsel for UC in this case along with fellow Nixon Peabody Partner Shawn Hansen. “When you consider how much intellectual property is created at universities, there’s a very small fraction that is actually enforced by the institution,” he said, adding that in most patent litigation campaigns involving universities, suit would be brought by the licensee and the university would be added as a third-party for reasons of standing.

The Wisconsin Alumni Research Foundation (WARF), Boston University and Carnegie Mellon University are two academic institutions that have engaged in high-profile litigation campaigns over the past decade. However, some commentators have pointed to the seeming inconsistencies between the educational goals of a research institution and the profit motive of patent litigation for infringement damages. Further, as with any plaintiff in a patent case, universities asserting patents may risk implementing a legal strategy that doesn’t pass muster, as was the case in the Federal Circuit’s recent decision that sovereign immunity principles didn’t allow the University of Texas to bring an infringement suit in an improper venue.

Tech transfer offices at American universities have grown significantly in the four decades since the passage of the Bayh-Dole Act, transforming from smaller administrative programs on university campuses to contemporary programs with incubators, accelerators and other resources that are reflective of the scientific pursuits of the university. Levy acknowledged that recent reforms to the patent system, including passage of the America Invents Act (AIA) and the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, have posed challenges to tech transfer offices looking to vindicate their patent rights. However, the fundamental issue in UC’s case deals with the views of the private sector on the value of licensing university IP. While patents may be incredibly valuable in pharmaceutical spaces, where a single blockbuster drug may be covered by only a handful of patents, universities pursuing research in semiconductor or consumer electronics fields deal with a different industry reality wherein companies amass large portfolios for defensive purposes and don’t typically see individual patents as having much inherent value. “From a university perspective, it’s difficult to get companies to license patents even if they’re infringing,” Levy said. “They tend to infringe with impunity as there’s very little risk that a university will actually enforce patent rights against them. That industry environment is among the issues that this enforcement campaign addresses.”

Enforcement Campaign Encompasses ITC, District Court

UC has also filed patent infringement suits in the Central District of California against Amazon.com , Walmart  and the other retailers in the ITC action. The accused products targeted by UC’s infringement complaints mirror those identified in the ITC complaint. Levy noted that the district court litigation and the Section 337 investigation were two valuable prongs of the same campaign because of the different remedies available. Injunctive relief in district court has been limited post-eBay so the ITC’s ability to issue limited exclusion or cease-and-desist orders can be incredibly valuable to parties fighting infringers who are importing products from overseas. The district court litigation, however, enables parties asserting patent rights to seek money damages that aren’t available at the ITC. “Our sincere hope and belief is that we will be settling these cases and licensing the patents long before there’s a dispositive outcome in any of these cases,” Levy said, noting that the University isn’t in the business of litigation but pursued legal action as a method of last resort to achieve licensing.

One unusual aspect of this enforcement campaign is the fact that the University of California is using an outside source of funding from investment firm Longford Capital Management to pay the legal expenses of the ITC and district court suits. “We felt that it was appropriate to be public about this,” Levy said. “The University is proud to have done this and find an innovative way to pursue the matter.” Longford Capital has offered funding in return for an agreed-upon portion of the proceeds from the campaign’s outcome. By using this outside funding source, Levy pointed out that UC won’t have to divert university resources from other academic priorities at the institution, including education and research.

The value of UC’s patented filament LED light technology—the ITC complaint notes that the LEDs use less energy than traditional incandescent bulbs and can last up to 20 years—is a major reason why retailers have entered the market with infringing products. “The speed with which these products became ubiquitous in the market is an indicator of the importance of the technology and the need for a larger-scale campaign to enforce the patents,” Levy said.

“The more pioneering an innovation is, the more likely it will have widespread applicability to many industry players,” said Ryan Marshall, patent lawyer and shareholder at Brinks Gilson & Lione. In this situation, the filament LED technology developed by a Nobel laureate inventor has been integrated into a wider range of products than just those targeted in the Section 337 investigation and district court suits. Marshall noted that, usually, a patent owner would go after many smaller infringers to build a successful case record, but he was curious whether the retailers in this case might look to the OEMs to indemnify them from infringement claims. “Whether or not indemnities are in place is an issue that would be fact-specific to each retailer,” he said, noting that it could be possible that some retailers approached their private label manufacturers with the idea of making filament LED products or vice versa. In either case, there would be a question of whether anyone did due diligence to make themselves aware of UC’s patent portfolio, which could open them up to a finding of willful infringement and treble damages.

“Universities are always resource limited when it comes to funding litigation,” Marshall said, pointing out that the use of litigation funding was a creative way to address the cost of patent enforcement for an academic institution. Marshall also was not aware of other cases at the ITC involving a university as a sole complainant.

Levy added that the five retailers targeted in the ITC and district court suits aren’t the only infringers on the market but were selected as the first round of respondents and defendants for tactical reasons. “Hopefully other retailers will take this opportunity to learn about the patents, understand the  landscape and reach out to us for licensing so that we can avoid litigation like this in the future,” he said.

 

 

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments. Join the discussion.

  1. Pro Say September 19, 2019 9:19 pm

    “All your patents are belong to us.”

    FAANG

  2. zoobab September 20, 2019 6:08 am

    Public money should not finance patents.

    Discoveries should be in the public domain.

  3. BP September 20, 2019 10:36 am

    @2 zoobab, public money should not finance Silicon Valley products/services.

    Read on . . . if a university were to sue, for example, Apple, Apple could retaliate by rescinding the “Apple Distinguished Educator” BRAND advisor, BRAND advocate and BRAND ambassador appointments, which some use at their universities to advance themselves, get more pay, sell more Apple goods/services, and annoy their colleagues. Apple is so loyal to universities, it sets up Apple Stores on campus, that is until the Apple Store becomes evidence supporting jurisdiction/venue, say in ED TX, which at that time, Apple says so what state taxpayer dollars paid for those iPads, students paid for those iPads, or student aid/loans paid for those iPads, we’re pulling out – closing down that store.

    Also consider underpaid university professors that make significant, technological developments – should those be handed free of charge to the illegal monopolies in Silicon Valley? Or, should those be properly monetized so that the taxpayers in the state see a partial return?

    Public money should finance patents and patent litigation against the patent pirates. Certain discoveries are in the public domain and others will be after the extremely short term of a patent. Yet others, trade secret, may never reach the public domain.

  4. Anon September 20, 2019 10:37 am

    zoobab,

    Do you have anything besides feelings to support your position? Notably, use of the patent system IS a good thing, and here, the use (and ownership) BY THE STATE does not implicate “private” ownership of “public money.”

    I am not sure that you have thought through your position enough.

  5. TFCFM September 20, 2019 10:44 am

    From the post: “‘Universities are always resource limited when it comes to funding litigation,’ Marshall said, pointing out that the use of litigation funding was a creative way to address the cost of patent enforcement for an academic institution.

    Universities are resource-limited, in terms of ALL of
    1. seeking to patent innovations,
    2. seeking to commercialize innovations, and
    3. seeking to enforce patent rights.

    It has long been recognized that non-academic entities appropriately advance #2 (far better than academic institutions can), and that #2 usually entails having the commercial entities pay for at least part of #1.

    Part of outside commercialization has also long been that the commercial entity has an obvious interest in #3 and will assist with it.

    Setting aside the question of whether this is the first instance of a university taking advantage of litigation financing to promote #3, enforcement academic institutions’ IP seems no less appropriate for “outside help” than commercialization. After all, it seems to me, this is merely one flavor of “commercialization” of academic IP.

  6. Hans U. Meyer September 20, 2019 1:23 pm

    I do not want to discuss the merits of universities vs. companies or inventors. How to defend one’s IP is never easy, maybe my experience would help. 30 years ago as China had no IP legislation, and anyway my company’s digital caliper patents were of no help. Amazon did not exist then, but many European and US importers were more than happy to flood the market with copies: as a small company we just couldn’t assert our IP rights.

    Odds are much better now. First, China has a pretty good, and yes, fairly enforced IP law, obviously because more and more Chinese companies want IP protection. Our new patented inductive caliper was reverse engineered by a Taiwanese chip design house for a caliper manufacturing company in Dongguan, which sold it worldwide, mainly over Amazon.

    We told Amazon that they were infringing: they stopped selling immediately ! Then we went to Dongguan to discuss with the infringing manufacturer and were about to sign a license deal when we got notice that some guy in China attacked our three infringed patents in validity. Obviously a front man, as this is allowed in China (and in Europe, so let’s not bash China !).

    Luckily, our Patent Attorney is in Hong Kong, the only place besides Singapore where you’ll find proficiency in English (good for the US) AND Chinese (good for China). We kept our three patents as they were. The license deal is not settled, but I’m confident on the outcome.

    The main lesson is that websites like Amazon do not want to be involved in litigation, they’d much rather kick the offenders off. In this light a University should have even less trouble enforcing their IP rights than a small company as we are.

  7. BP September 20, 2019 3:21 pm

    @6 Amazon and YouTube are setting in place the new paradigm for patent/trademark/copyright and copyright law, a new paradigm that does not, at the basic level, need US courts. If they block you, you may be done (given their respective market powers in distribution/advertising). However, NB, this does not have any bearing on whether or not Amazon and YouTube, themselves, utilize the IP of others. Thus, different issues at play.

  8. angry dude September 21, 2019 7:12 pm

    zoobab @2

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

    And your daily meals should be handed out to whoever wants it
    Dude, your name speaks for itself – so stupid… like all of your comments here

  9. angry dude September 21, 2019 7:20 pm

    Hans U. Meyer @6

    “The main lesson is that websites like Amazon do not want to be involved in litigation”

    Dude, are you talking about Amazon marketplace selling all kinds of sh1t from anyone online or Amazon as a giant octopus tech corporation (and FAANG member) branching out to other industries like drones, cell phones, cars… and lately food (!!!) …you name it?
    Just try to enforce you patent against Amazon’s own product or service and see what happens…

  10. Hans U. Meyer September 22, 2019 1:24 pm

    Angry dude @9

    Of course talking about Amazon marketplace, as this is where UC (and my company) found infringing products.

    Had it been Amazon’s own product, or Apple’s, or any other behemoth’s, maybe UC would have a fighting chance. For me, the only option left would be to sell to a patent troll. Luckily, this never happened !

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