Abstract: On July 30, 2019, the Regents of the University of California (UC) filed a complaint against five major retailers, including Amazon, Walmart, Target Corp, Ikea AB, and Bed Bath & Beyond Inc, for the unauthorized distribution of UC Santa Barbara’s patented filament LED lighting technology.
 
1. Case background
Researchers at UC Santa Barbara have dedicated years to developing technology that reinvented the traditional incandescent light bulb, the patent involved in this complaint is related to the filament LED light bulbs (shown below) studied by a Nobel laureate-led team at UC led by Professors Shuji Nakamura, Steven DenBaars and James Speck.



                     Filament LED Light Bulb                                                                           Filament LED
 
Since the filament LED light bulb has a light-emitting filament inside which can realize a high-quality 360° illuminating stereo light source, it has been widely used since 2014, and then the market has grown substantially. In 2019 alone, projected sales are more than $1 billion.
UC said that retailers have been profiting from the unauthorized sales of this technology since it first became available, despite UC’s efforts to notify infringers and establish licenses with companies in the lighting industry. These prior efforts, which are consistent with conventional practices in university technology transfer, have not been sufficient to address the ubiquitous and explosive infringement in this industry. As a result, UC has opted to take more aggressive action through the initiation of these legal actions.
 
2.  Complain about the “theft” of that technology by unlicensed foreign manufacturers
The filament LED light bulbs circulating in the US market are usually produced by foreign manufacturers, imported from abroad by US retailers, and finally sold in the United States. Therefore, UC also clarified that the source of infringement is actually the manufacturers, but since they are basically foreign manufacturers, it is difficult to pursue the responsibility, and UC can only choose the US retailer as the defendant.
Despite this, UC is still suing foreign manufacturers in its complaints. UC said that overseas manufacturers routinely take unfair advantage of academic openness and “steal” their technology to manufacture products. They exploit university intellectual property abroad with impunity and then traffic infringing goods into the US market through what are often complex supply chains. The retailers who sell these goods have the power to require their supply chains to respect UC’s intellectual property but have not done so. It should be noted that in each of the five complaints, it is pointed out that each of the accused products listed is labeled on the product or packaging “Made in China”. Presumably, UC is actually complaining about the Chinese manufacturer.
 
3. The object of protection of the patent involved
The four patents claimed by UC are 7781789, 9240529, 9859464, and 10217916. These four patents belong to the same family, and there are currently 284 patents in the same family, including PCT international applications, and the patents filed in the United States, the European Patent Office, Germany, Australia, Japan, South Korea, mainland China, Hong Kong, and Taiwan. It can be seen that UC has comprehensively protected its LED light technology.
The claims of US7718789B2 claim an opto-electronic device, which seems to be related to the filament LED light, but the transparent substrate mentioned therein actually refers to the substrate in the LED chip, that is to say, the defining feature actually protects the LED chip in the filament LED light; in addition, from the claims of US9240529B2, US9859464B2, US10217916B2, the subject names are also a light emitting device, but it is obvious that the defining feature actually protects the LED chip in the filament LED light.
The manufacture of the filament LED light bulbs involves many processes and components. As a relatively basic component, LED chips are generally used in the pre-production process, and the cost is not high compared to the entire filament LED light bulb. In addition, if the LED chip used by the manufacturer is purchased from a supplier licensed by UC during the manufacture of the filament LED light bulbs, then the purchase is equivalent to the first sale of the patented product, that is, the patent right on the LED chip will be exhausted with sales, UC will no longer be able to use the above four patents to claim the corresponding rights to the manufacture and sale of the filament LED light bulbs.
 
4. The impact of the lawsuit on Chinese manufacturers
At present, the above four patents do not have direct Chinese family patents. That is to say, UC does not have patent rights directly related to the above four patents in mainland China. Therefore, the act of manufacturing and exporting in mainland China does not involve infringement. So UC cannot prohibit the manufacture, sale, and export of Chinese companies in mainland China, nor can it prohibit the importation and sale of alleged infringing products in countries where no patent is granted. However, if the infringement of this case is established, US retailers will not be able to import from China and sell the products involved in the United States, which will definitely cause a certain blow to companies focusing on the US market.
In addition, in the above 284 family patents, there are still two valid Chinese patents, namely CN101138091B (Technique for the growth of planar semi-polar gallium nitride), CN102099976B ((Al, Ga, In) N diode laser fabricated at reduced temperature), it’s still unknown whether UC will use these two patents to defend rights in China.
 
CONCLUSION: The University of California has initiated a first-of-its-kind patent enforcement campaign against an entire industry to protect UC’s rights. At the same time, this is actually the offensive behavior of US universities using US patents to Chinese LED manufacturers after US companies. Regardless of the outcome of the judgment, it will definitely have a significant impact on the LED manufacturing industry.