Super Lighting’s ‘unheard’ of LED patent success
Companies based outside the US, often believe that they have limited options when it comes to enforcing their US patent rights against other infringing companies selling in the country.
The company may believe it will not be treated fairly in the US, particularly if the case proceeds to a jury trial. However, recent cases suggest this thinking is wrong.
Case in point is China-based Jiaxing Super Lighting Electric Appliance Co. Ltd (Super Lighting), which recently won a jury trial in Waco, Texas, in the US District Court for the Western District of Texas.
The West Texas jury in Judge Alan Albright’s court found that Super Lighting’s China-based competitors, CH Lighting Technology (CH) and Shaoxing Ruising Lighting, owed Super Lighting nearly $14 million for willful infringement.
What is one of the major takeaways from this verdict? Foreign nationality does not matter as much as having a convincing story, credible witnesses, and patents that cover interesting innovations. With these, anybody can successfully try cases in the US.
Parties, products, and patents
Although several companies were involved in this case, the key players were Super Lighting (the patent holder) and CH (the infringer). Super Lighting and CH are competitors that manufacture and sell lighting products to US-based entities, which then sell them to end-users.
The patents found to be infringed cover LED “tube lamp” technology, or simply put, a tube that houses LEDs. The technology has recently emerged as the replacement for fluorescent tube lights more common to older commercial buildings. Of the three patents found to be infringed in this case, two improved on the physical structure of the LED tube lamp, while the third used internal electronics to prevent fatal shock to an installer.
Admitting Infringement
Super Lighting helped its case during litigation before trial. First, Super Lighting convinced CH to admit to infringement on all products for two of the asserted patents, and on many products for the third asserted patent. This stipulation meant that Super Lighting did not need to prove infringement on them at trial.
Second, Super Lighting obtained evidentiary sanctions against CH based on CH’s discovery misconduct. The sanctions established as an undisputed fact for trial that CH did not do anything upon learning of Super Lighting’s patents other than hiring counsel many months later.
During trial, before the case went to the verdict, Super Lighting also won a judgment as a matter of law (JMOL) that one of the three patents was valid. In other words, the Court found in Super Lighting’s favour that no reasonable jury could find the patent invalid. The granting of a mid-trial JMOL is almost unheard of, and a Chinese company obtaining this result highlights the success foreign companies can have in U.S. trials with the right case and legal team.
The Super Lighting and CH Witnesses
After deliberating less than two hours, the jury rendered its verdict awarding Super Lighting all of its requested damages, nearly $14 million for CH’s willful infringement of the valid Super Lighting patents. The jury reached this verdict after hearing sworn testimony from several key individuals affiliated with Super Lighting, including its CEO/inventor and its research and development head/inventor.
Because of COVID restrictions on travel to the US, the Super Lighting CEO and R&D head testified remotely from Macau with no negative impact in doing so. The jury also heard live testimony from CH’s corporate representative, who was at the centre of Super Lighting’s willful infringement case. While other individuals testified, the testimony from these principal witnesses likely influenced much of the jury’s findings.
Super Lighting’s CEO was the first witness. Testifying live by Zoom, he described his upbringing in China, the founding of the company, and his invention story. He talked about how his inventions benefit end users and installers, and how those inventions improved upon prior solutions. He used documents throughout his testimony to reinforce these topics.
