WEST CALDWELL, N.J. – MaxLite has provided an update on the status of its pending lawsuit against Jiaxing Super Lighting Electric Appliance Co., Ltd. (“Jiaxing Super Lighting”), a Chinese contract manufacturer based in the city of Jiaxing, located in Zhejiang province.
This update provides information concerning recent significant developments in the pending lawsuit, and clarifies MaxLite’s previously-filed petitions for inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (USPTO) seeking to invalidate U.S. Patent Nos. 9,897,265 (“‘265 patent”), 9,723,662 (“‘662 patent”) and 9,807,826 (“’826 patent”) (collectively, the “IPR Petitions”), all owned by Jiaxing Super Lighting.
Jiaxing Super Lighting forced to substantially narrow its case
MaxLite reported today that it was successful in forcing Jiaxing Super Lighting to substantially narrow the number of claims it was permitted to assert in the lawsuit. After originally asserting 103 claims contained in six asserted patents, Jiaxing Super Lighting was ordered by the Court to withdraw two thirds (68) of those claims in response to MaxLite’s invalidity contentions. Thus, Jiaxing Super Lighting’s case is substantially smaller today than it was when it was initially filed.
Jiaxing Super Lighting twice fails in its attempt to add a seventh patent to the case
Additionally, MaxLite reported today that it has defeated Jiaxing Super Lighting twice in its repeated attempts to add a seventh patent to its lawsuit. Twice over the past several months, Jiaxing Super Lighting filed motions with the court seeking to amend its complaint to add a seventh patent to its claim of patent infringement. In both instances, most recently on June 1, 2020, the court denied Jiaxing Super Lighting’s motions to amend.
“As time goes on, we move closer to shutting down Super Lighting’s baseless patent license program, which is founded on narrow and invalid patent claims,” said MaxLite President and CEO Spencer Bolgard. “We will continue to aggressively fight this case on behalf of ourselves, and the entire LED lighting industry, and seek to invalidate Jiaxing Super Lighting’s patents. As I have said before, we will not allow our company, distributors, representatives or customers to be harassed by groundless assertions of patent infringement.”
MaxLite also reported the following today concerning the IPR Petitions:
The ‘265 IPR
On June 16, 2020, while MaxLite’s IPR seeking to invalidate the ‘265 patent was pending, rather than try to oppose MaxLite’s powerful arguments showing many of the ‘265 claims to be invalid, Jiaxing Super Lighting voluntarily filed a request with the PTAB that it invalidate all of the claims that had been challenged by MaxLite and asked the PTAB for the entry of an adverse judgment against Jiaxing Super Lighting, resulting in the termination of the ‘265 IPR proceedings.
Commenting on this development, Zvi Raskin, MaxLite’s general counsel, stated: “As a result of our filing of the ‘265 IPR, Jiaxing Super Lighting surrendered all challenged claims in the ‘265 IPR, resulting in those claims no longer being assertible against MaxLite or against any other company in the LED lighting industry. The result is the effective removal of this patent from the case and from Jiaxing Super Lighting’s patent licensing program. The remaining two claims in the patent are just as weak. By Jiaxing Super Lighting’s conceding invalidity in the IPR, MaxLite has won another victory in its dispute against it.”
The ‘662 IPR
On June 5, 2020, MaxLite filed with the PTAB a Request for Rehearing, under 37 CFR 42.71, of the PTAB’s decision denying institution of trial on MaxLite’s ‘662 IPR. In its Request, MaxLite demonstrated that that the decision to not institute an IPR was based on misconceptions by the PTAB and asked the PTAB to reconsider its denial.
The ‘826 IPR
In denying MaxLite’s petition to invalidate certain claims of the ‘826 Patent, the PTAB did not address the substance of the Petition but sided with Super Lighting regarding a dispute over the alleged priority date of the ‘826 patent. Super Lighting still has the burden in the pending lawsuit to establish that it can properly claim priority to earlier applications. MaxLite is confident that Jiaxing Super Lighting’s claim of priority is not correct and will strongly argue that position in court. Not only did Super Lighting fail to show any petitioned claim was entitled to an earlier priority date, but Super Lighting also improperly relied on a Chinese priority application by a different named inventor.
Additionally, MaxLite intends to file a request for review of this denial by the PTAB’s Precedential Opinion Panel (“POP”), a quasi-appeals body set up to resolve issues of PTAB policy or procedure. MaxLite will ask the POP to review this matter on several grounds: first, the standard for burden shifting for priority dates relied on by the PTAB appears to be at odds with the Federal Circuit. Second, the PTAB determined a priority application supported its alleged priority date even though the named inventors were different, a clear violation of long-held PTO policy. And third, the PTAB’s decision would have effectively required translating more than a dozen foreign priority applications from Chinese to English, and providing argument for why each did not provide an adequate priority claim—which raises multiple questions of fairness.
Regarding the recent PTAB decisions, Mr. Raskin noted, “Other than the effective elimination of the ‘265 patent from the case, which further limits Jiaxing Super Lighting’s case against MaxLite, the IPR decisions have had no appreciable effect on this case. Per Patent Office rules, the PTAB is not permitted to evaluate prior art LED products, but can only look at prior art publications. Thus, in addition to the other printed publication art that is still available to MaxLite in the litigation, MaxLite’s invalidity theories based on actual prior art tubes sold by the early players in the LED tube industry remain 100% intact. Moreover, all of MaxLite’s noninfringement defenses in the case are still available to establish that MaxLite’s LED tube products do not fall within the scope of any claim of the Jiaxing Super Lighting patents. Indeed, MaxLite has asserted a counterclaim against Jiaxing Super Lighting seeking a declaration that none of its accused products infringe any valid and enforceable claims of the patents. We remain highly confident that MaxLite will prevail in this litigation.”
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