As many of you know, we reported on the Litepanels and their attempt to block the import of LEDs for video and photo back in August. A handful of companies have decided to fight Litepanels rather than give up the rights to sell LED lighting. The legal battle has been a slow uphill battle for them but it looks like things are making some headway. That said, I was contacted by one of the lawyers representing the companies battling Litepanels. This lawyer informed me of some crucial evidence they need to help nullify Litepanels patent claims.
As you may be aware, we’ve been in the “discovery” phase of the investigation since last August. “Discovery” means that the two opponents (i.e. the “Complainant” Litepanels on one side and the “Respondents” whom we represent on the other side) quiz each other about facts relating to the investigation. Each side is duty-bound by law to provide any relevant documents in their possession for the other side to examine, but only under the very strict condition that each side must scrupulously protect the secrecy of any confidential business information that the other side discloses. This process is where most of the “detective work” on an ITC investigation takes place.
But at a certain point, the “discovery” process runs its course and it becomes necessary to do some outside “sleuthing”. That’s where you and the rest of the cinematography community can really help out, as I’ll explain below.
U.S. federal patent law contains a provision called a “prior use statutory bar”, which just means that if an application for a patent covering a certain invention is not filed within one year after an embodiment of the invention is first offered for sale or otherwise disclosed to the public, then that invention is deemed to have been dedicated to the public and cannot be patented. The corollary is that any patent issued for such a previously-disclosed invention can subsequently be ruled invalid if the prior public disclosure is brought to the attention of the relevant authorities (either a court or the US patent office).
So what we are endeavoring to do now is gather information that will lead to a smoking gun – a verifiable instance of white LEDs being commercially used for illumination of subjects in photography or cinematography prior to the “critical date”. In this case, the application for the first Litepanels patent was filed on September 9, 2001, so any public use prior to September 9, 2001 will be potentially lethal to the patents that Litepanels is asserting against us.
You may also be aware that the hearing in this investigation (ITC Inv. No. 337-TA-804) is scheduled to take place in the middle of June. So at the same time that we are scurrying to gather as much evidence from the community as we can, we are also busily preparing our trial briefs and exhibits.
If you have any records of LED purchases prior to the above dates, contact them directly to help with the case. You can also help by spreading the word.