Tech Transfer eNews Blog

UC light bulb case may signal more aggressive infringement defense by schools


By Jesse Schwartz
Published: September 11th, 2019

Those vintage-looking light bulbs that hang in so many trendy bars and restaurants are the subject of a massive lawsuit campaign in which the University of California (UC) system is taking on some of the world’s biggest retailers. The litigation is the first “direct patent enforcement” campaign against an entire industry, according to the university.

UC says it is taking the unusual action to protect its patents because huge companies tend to ignore patent rights while profiting handsomely off of someone else’s work. The aggressive stance by UC could signal a new willingness by universities to protect what is rightfully theirs, though there are unique aspects that make the strategy more realistic for UC than it might be for a single university.

UC is suing five major retailers — Amazon, Walmart, Target, Ikea, and Bed Bath & Beyond — for what it calls an “existential threat” to its patents from the retailers, who the UC system allege are accepting foreign manufacturers’ infringement on the university’s patents for “filament” light bulbs.

The lawsuit filed with the U.S. District Court in Los Angeles calls for unspecified damages and asks the retailers to enter license agreements. Going a step further, UC also asked the International Trade Commission (ITC) to investigate the conduct of the big retailers.

The filing notes that sales for the LED filament bulbs became popular over the last five years, and 2019 sales are expected to exceed $1 billion. The university issued a statement saying the lawsuits are intended “to spearhead a broader, national response to the existential threat” posed by retailers’ “widespread disregard” for the patent rights of universities.

UC is taking on the big retailers because it is tired of them ignoring patent rights, says Seth D. Levy, JD, partner with the Nixon Peabody law firm in Los Angeles, CA, representing UC. The university hopes to have the support of other academic institutions, he says.

“The challenge that UC is facing with this portfolio is not unlike what a lot of academic institutions go through, particularly in areas where the industry does not take licensing IP very [seriously]. They tend to ignore academic IP and just assume that it won’t be enforced, or they have a very different view of the value of the IP,” Levy says. “For many years UC Santa Barbara had developed this innovative patent portfolio and took all the necessary efforts through tech transfer, and then some, to connect with industry and negotiate licenses. They even did some enforcement work, but tech transfer doesn’t usually have a big budget for that.”

When the LED filament bulbs’ sales skyrocketed in recent years, UC knew it had developed all the foundational technology and held the patents, he says. University leaders decided they could not accept what appeared to be flagrant disregard of its patents by not only multiple manufacturers, but also by the powerhouse retailers that were making so much money on the products, Levy explains.

The decision to sue the retailers came about after many conversations among university leaders, who weighed the pros and cons of such a large and very public action against companies they did not expect to roll over easily, he says.

“It’s so important to have an academic institution that is willing to show some leadership in patent enforcement. There are a number of institutions that have done some very important work to help demonstrate that universities can directly enforce their IP, but it’s still a small number,” Levy says. “The role UC is playing here is important for the academic community.”

A detailed article on the UC lawsuit appears in the September issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted under: Tech Transfer e-News

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