Byline: Ellen Lampert-Greaux
On Friday, October 22, 2004 more than 40 LED lighting systems manufacturers met at The Entertainment Technology Show-LDI2004 to voice their concern over the past and most recent Color Kinetics patents. The key participants at the meeting were Wayne Howell of Artistic Licence, Nils Thorjussen of Element Labs, Tom Fay of TPR Enterprises, Doug Fleenor of Doug Fleenor Design, Banly Cheung of NCQ Holdings Ltd, John Ortiz of NSI, Chris Ewington of James Thomas Engineering, Bill Little of Advanced Lighting, Brett Kingstone and Mike Bauer of Super Vision, and Wayne Crosby, legal counsel for Super Vision.
"Almost all the participants voiced their concerns with the wholesale attempts at patenting prior art that has been employed by lighting manufacturers and designers for the last two decades," notes Kingstone, who provided an account of the meeting. "This appears to be nothing more than an attempt to extract a monopoly position on prior art. Something akin to a carpenter patenting a hammer, nail, and saw and then restricting all the other carpenters in the industry from competing with him in using these implements."
Super Vision, who took the lead in bringing a declaratory judgment action against Color Kinetics' patents, had asked the industry for both financial support and additional prior art evidence support in this case. Kingstone reports that the industry manufacturers in attendance have decided to band together and encourage their trade associations to oppose the early Color Kinetics patents on the use of pulse width modulation in variable controlled LED lighting fixtures. They are also concerned about the newly approved patents on the use of DMX control technology in conjunction with LED lighting systems. "Many participants voiced outrage that Color Kinetics would even consider patenting an industry standard control system such as DMX and were quite shocked at the naivete of the patent office to allow such a patent to be approved," Kingstone says.
There has also been some talk of creating an industry committee that will share e-mails and meet at ETS-LDI, Lightfair, or PLASA once or twice a year. One mechanism for immediately addressing the issue was to offer the industry a very fair and reasonable licensing agreement to the Belliveau patent and Laidman Technology.
The High End Belliveau patent, purchased by Super Vision, pre-dates Color Kinetics by almost a decade and provides much broader coverage on color-changing lighting fixtures. Super Vision also recently acquired Laidman Technology which has developments dating back to 1978 and pre-dates Color Kinetics' specific patent claims on variable color lighting fixtures utilizing pulse width modulations by varying the voltage controls to two or more LEDs in a lighting fixture. Such a license provided industry wide at a very low rate would be a cost effective insurance policy for the industry until this matter gets to trial. Super Vision now has more than 25 companies that have expressed interest in obtaining licenses to patents and technologies owned by Super Vision as a defensive move against Color Kinetics and also as a show of support for the financial burden in the current court proceedings.
"It is important to note that Jerry Laidman, not Color Kinetics, was the first inventor of color changing LED lighting systems," says Kingstone. "Color Kinetics was also aware of the Laidman technology and product while they were filing their patents on color changing LED systems. The Belliveau patent is significant in that it covers the networking of multiple color changing devices utilizing any 'lamp means' or 'light source.' This effectively provides patent coverage for the utilization of the prior art developed by Laidman decades earlier in a network configuration to allow control for multiple 'variable color' lighting fixtures (LED or otherwise) in individually or group controlled formats."
Wayne Howell, of Artistic Licence in the UK notes that, "Super Vision acquired both systems because the two together effectively cover the current practice in the industry and, again, pre-date the patents of Color Kinetics. Many of us are concerned that Color Kinetics will now turn its attention to patenting other industry standards such as DMX and LED white light applications commonly used in the industry. This probably was the key factor in such an unexpectedly large turnout at the meeting."
Howell will also be drafting a petition to the US Patent Office that will be submitted for industry-wide signatures. "There are two main issues here," he says. "The bigger issue is a fundamental flaw in the way US patents are granted. They are not really researched by the patent office. The Color Kinetics patent portfolio shows that it has really gotten out of hand."
For Howell, the other concern has broader implications. "The issue is about the commercial aspect of one company trying to effectively blackmail the industry," he says. "We are 100% confident that the Laidman prior-art claim will hold up. More specifically, within the American system, if you patent something knowing it already existed, your patent is not only invalid, but it could be a criminal offense."
Howell believes that the Color Kinetics patents are too broad, in terms of DMX control of LED technology. "There is a moral issue here as well as a commercial one," he says. "Even if what Color Kinetics is doing is legal, it is certainly immoral. If the patents don't hold up, there will be a huge benefit for the entire industry. LEDs are the future in many areas of lighting and the Color Kinetics patents are stifling development."
Color Kinetics recently reported revenues of $11.1 million for the third quarter of 2004, an increase over last year and the second quarter of this year. Color Kinetics also continues to file for new patents, and on October 19, 2004, they were issued US patent number 6,806,659 that broadens the protection of their first patent, issued in January 2000, relating to iChromacore[R] technology. (Color Kinetics now holds 37 issued patents and have more than 120 patent applications pending).
"We feel that some people are more interested in stirring the pot, rather than developing new products in support of solid state technology," says Kathy Pattison, a spokeswoman for Color Kinetics [see full official response below]. "We have protected our intellectual property through patents, and we have a choice what to do with those patents. To date, we have 31 OEM and licensing partners which indicate an open and active program of sharing our technology." Pattison points out that Color Kinetics hold patents not only granted in the US but also in Europe, Australia, Canada, and Hong Kong. "Now that the success of solid state technology is more apparent, a lot of people are jumping on the band wagon," she says.
COLOR KINETICS' OFFICIAL RESPONSE TO LED MANUFACTURERS' MEETING AT ETS-LDI:
"If there was any doubt that LED technology has become a major factor in the growth and development of the entertainment lighting industry, then the fact that this purported meeting took place should put that doubt to rest.
Had Color Kinetics been invited to the meeting, we would've been happy to share 31+ examples of our OEM & Licensing partners realizing success in the marketplace today with our technology, which we openly share. From what we've heard about the meeting, the baseless allegations waged reveal a complete misunderstanding of patent law, an even more complete misunderstanding of Color Kinetics' patents, and an apparent blindness to our open OEM and licensing program.
To invalidate Color Kinetics' worldwide patent portfolio, one would have to find precedent for the 7,000+ inventions represented by the claims in our patents and patent applications, claims that derive from our active, multi-million dollar research and development program, and that relate to our award-winning products applied in 10,000+ installations worldwide.
Furthermore, one must question the motives of a company that invests little in R&D, offers no unique contributions to the LED space, criticizes the US patent system, and yet purchases patents from third parties to exact a licensing fee under the guise of an 'open market' attempting to exploit that same 'naive' system to its own advantage.
We view this misguided and defamatory tactic as a mere attempt to wage a PR battle in the face of current litigation."
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