The University of California Regents have filed patent infringement lawsuits against Walmart, Target, Ikea Amazon and other major retailers for unauthorized sales of UCSB patented LED lightbulb technology.
The lawsuits were filed on Tuesday in the United States Central District Court, a federal trial court in Los Angeles. The Regents have also filed a complaint with the United States International Trade Commission.
Nixon Peabody, a Global 100 law firm, represents the plaintiff.
According to the lawsuit, a Nobel laureate-led team at UCSB developed the technology behind four patents that are “fundamental” to the production of filament LED light bulbs. The bulbs have similar glass casings to the traditional incandescent light bulbs. The filament is made of multiple LEDs connected on a transparent surface layer. The surface has a coating that makes the light similar to the yellow light emitted by an incandescent bulb.
California began phasing out incandescent light bulbs from store shelves in 2018.
“The United States retail market has demonstrated tremendous customer demand for the aesthetic, economic, and environmental benefits conferred by the inventions of the Asserted Patents,” read the lawsuit.
“The patented filament LED technology invented at UC Santa Barbara enables light bulbs that replace traditional incandescent light bulbs and, in contrast, use a tiny fraction of the energy, don’t get hot, break less easily, and last up to ten or twenty years,” the lawsuit continued.
Plaintiff claims the sales of filament LED light bulbs are expected to exceed $1 billion in the United States in 2019. They have been available since around 2014. The allegedly infringed patents were granted from 2010 through 2019.
“There’s been a lot of effort made by UCSB to find licensees for this portfolio for a number of years,” said Nixon Peabody partner Seth Levy who explained that the Regents would like to settle the case without extensive litigation.
“Litigation is really something that universities rarely do. It’s not where you want to start it’s what you end up doing when other things haven’t been successful.”
While the statute of limitations on patent infringement was still two years away, the Regents decided filament LED light bulbs were becoming so widespread they had to take legal action to protect their intellectual property rights.
Companies who are interested in becoming formal retailers of the technology can contact UCSB through filamentpatent.ucsb.edu. Mr. Levy a said a reasonable royalty fee will be charged based on intended use and projected sales.
“UCSB wants to encourage sales not do anything too punitive,” said Mr. Levy who added that an injunction on ongoing sales is unlikely.
He said no responses to the lawsuit has been filed yet, but the ITC complaint should progress in the coming weeks.
“UC Santa Barbara is very proud of the cutting-edge technology that our talented, hardworking researchers developed and the beneficial impact it has had on the world. As a premier research institution focused on public service, we want to ensure that fair and reasonable royalties from the commercialization of this LED filament technology can be reinvested into future research, education and innovation that will perpetuate this beneficial cycle for California and beyond,” said UCSB Vice Chancellor for Research, Joe Incandela in a statement on the case.
“We hope that these legal actions will lead to greater respect for the rights and intellectual property of university patent owners.”