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UC Santa Barbara Seeks To Authorize Retailers of Patented Filament LED Lighting Technology

 

On July 30, 2019, the Regents of the University of California filed a complaint with the U.S. International Trade Commission and lawsuits against five major retailers for the unauthorized distribution of UC Santa Barbara’s patented filament LED lighting technology.

 

Background

 

Researchers at UC Santa Barbara have dedicated years to developing technology that reinvented the traditional incandescent light bulb, creating an option for consumers and businesses that requires less energy, creates less heat and distributes light in all directions. By some estimates, the average American homeowner can save up to $600 per year in energy costs by switching from incandescent light bulbs to LEDs.  

UC Santa Barbara has amassed a portfolio of patents that cover filament LED light bulbs. Reflecting Thomas Edison’s enduring fame for inventing the light bulb, many products on the market today that infringe UC Santa Barbara’s patents are called “Edison” or “vintage” LED light bulbs because they resemble Edison’s iconic light bulbs with glowing filaments visible inside glass bulbs. These bulbs may include a variety of filament LED configurations, such as different shapes of filaments, different numbers of filaments, and different lengths of filaments. Products containing filament LEDs include lighting fixtures that are installed in residential, commercial, or industrial settings that include filament LED light bulbs.

Since filament LED light bulbs became available in 2014, the market has grown substantially. In 2019 alone, projected sales are more than $1 billion. Retailers have been profiting from the unauthorized sales of this technology since it first became available, despite UC Santa Barbara’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 Santa Barbara has opted to take more aggressive action through the initiation of these legal actions.

 

The Lawsuits

 

UC Santa Barbara and its legal counsel, Nixon Peabody LLP, have identified five major retailers who represent a large cross-section of the retailers who sell filament LED light bulbs containing the unlicensed technology. Those retailers are Walmart, Target, Ikea, Amazon.com and Bed Bath & Beyond. UC Santa Barbara is seeking to establish licenses involving the payment of a reasonable royalty from the defendants, the amount of which will be determined on a case-by-case basis. UC Santa Barbara is the first university to assert its intellectual property rights in this manner, against an entire industry through retail sellers of infringing products.

UC Santa Barbara encourages retailers to sell filament LED light bulbs and hopes they continue to make the benefits of filament LED lighting technology widely available to the public. However, retailers that sell such products must respect UC Santa Barbara’s intellectual property rights, and receive authorization from UC Santa Barbara in the form of a license in order to commercialize filament LED light bulbs.

Our hope is that these lawsuits demonstrate the importance of respecting the rights of university patent owners. Companies must appreciate that, when selling technology patented by a university, it is their responsibility to do so only with the proper license agreement in place. 

Become an Authorized Retailer

UC Santa Barbara encourages any company that seeks to sell (or that already sells) filament LED lighting products to contact the University through our Contact page. We will work together to negotiate a reasonable license agreement that will benefit the University, you and your customers.