The goal of this campaign has always been to ensure UC Santa Barbara is rightfully compensated for the use of its patented LED technology and to stop the unauthorized importation and distribution of that technology. UC Santa Barbara began the campaign with retailers because that is where infringement was most readily apparent. Now, after a successful first phase, UC Santa Barbara is expanding the campaign to include other infringers of its patents – the manufacturers and suppliers.
UC Santa Barbara is seeking reasonable royalties from the defendants. The royalty that is reasonable for a given defendant will depend on a variety of factors. UC Santa Barbara encourages retailers to make filament LED lighting products widely available to the public so that the benefits of this technology can have a significant impact, so long as those retailers obtain a license from UC Santa Barbara and pay a reasonable royalty.
The first ITC investigation concluded on May 20, 2020. The district court litigation is ongoing against Ikea (which is also a respondent in the second ITC investigation), Amazon, Walmart, and Target. Bed, Bath & Beyond entered into a settlement and is now an Authorized Retailer of UC Santa Barbara’s patented LED technology.
No, patent trolls do not undertake the massive investments in research and education that are commonplace at universities to generate scientific knowledge and new technologies that can benefit the public. Once universities create new intellectual property through their research, they typically do not commercialize the intellectual property themselves. Rather, working through their technology transfer offices, universities’ intellectual property rights are licensed to the private sector to bring academic innovations to the marketplace. Because many in the private sector have not respected UC Santa Barbara’s patent rights, despite its many efforts to license this technology, this approach became necessary.
The goal of this campaign is to address the infringement of UC Santa Barbara’s intellectual property while changing the way universities’ intellectual property rights are respected, ensuring that universities are recognized for the research and creation of innovative technologies. In turn, the royalties secured through this licensing campaign and any damages awarded in litigation will supplement the funding that UC Santa Barbara receives from taxpayers, student tuition, and the generosity of donors to support research and education.
As a nonprofit institution, UC Santa Barbara’s research has been conducted for the purpose of education and to advance the understanding of science and the world around us, and many students, professors, and others have been recognized for their academic accomplishments pertaining to this technology through hundreds of academic publications. However, the intellectual property that resulted from the research is a university asset that must be respected by the private sector.
UC Santa Barbara is using a litigation financing firm in place of university resources to finance the litigation. The use of a litigation financing firm made it possible for UC Santa Barbara to assert its intellectual property rights without spending university resources on litigation.
As the seller of patented filament LED technology, you are responsible for ensuring that your products are licensed under applicable patents, whether your business acts as a retailer, manufacturer, distributor, or supplier. UC Santa Barbara is offering businesses licenses so they can source their filament LED light bulbs from any source they want, as long as appropriate royalties are paid to UC Santa Barbara. Businesses that choose to sell this technology without a license from UC Santa Barbara may face legal action.
Through this license, UC Santa Barbara will receive the compensation it is rightfully owed for exploitation of the patents and can reinvest in research and education.
Businesses that are interested in learning more about a license can connect with UC Santa Barbara via our Contact page.
Nixon Peabody is a leading international law firm with approximately 600 attorneys focusing on litigation, intellectual property, corporate law, and other areas of legal practice across industries. The firm has a long history of representing academic institutions around the country and overseas.
More information on Nixon Peabody can be found at the firm’s website.