MaxLite Provides Update on Lawsuit Against Jiaxing Super Lighting
MaxLite, an energy-efficiency lighting company, recently provided an update on the status of its pending lawsuit against Jiaxing Super Lighting Electric Appliance Co., Ltd. (Jiaxing Super Lighting), a Chinese contract manufacturer based in the city of Jiaxing, located in Zhejiang province.
The update provides information concerning recent significant developments in the pending lawsuit, and clarifies MaxLite’s previously-filed petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) seeking to invalidate U.S. Patent Nos. 9,897,265 (‘265 patent), 9,723,662 (‘662 patent) and 9,807,826 (’826 patent) (collectively, the IPR Petitions), all owned by Jiaxing Super Lighting.
MaxLite reported that it was successful in forcing Jiaxing Super Lighting to substantially narrow the number of claims it was permitted to assert in the lawsuit. After originally asserting 103 claims contained in six asserted patents, Jiaxing Super Lighting was ordered by the court to withdraw two-thirds (68) of those claims in response to MaxLite’s invalidity contentions. Thus, Jiaxing Super Lighting’s case is substantially smaller today than it was when it was initially filed.
Additionally, MaxLite reported that it has prevented Jiaxing Super Lighting twice in its repeated attempts to add a seventh patent to its lawsuit. Twice over the past several months, Jiaxing Super Lighting filed motions with the court seeking to amend its complaint to add a seventh patent to its claim of patent infringement. In both instances, most recently on June 1, 2020, the court denied Jiaxing Super Lighting’s motions to amend.
MaxLite also reported the following concerning the IPR Petitions:
The ‘265 IPR
On June 16, 2020, while MaxLite’s IPR seeking to invalidate the ‘265 patent was pending, rather than try to oppose MaxLite’s powerful arguments showing many of the ‘265 claims to be invalid, Jiaxing Super Lighting voluntarily filed a request with the PTAB that it invalidate all of the claims that had been challenged by MaxLite and asked the PTAB for the entry of an adverse judgment against Jiaxing Super Lighting, resulting in the termination of the ‘265 IPR proceedings.
The ‘662 IPR
On June 5, 2020, MaxLite filed with the PTAB a Request for Rehearing, under 37 CFR 42.71, of the PTAB’s decision denying institution of trial on MaxLite’s ‘662 IPR. In its request, MaxLite demonstrated that that the decision to not institute an IPR was based on misconceptions by the PTAB and asked the PTAB to reconsider its denial.
The ‘826 IPR
In denying MaxLite’s petition to invalidate certain claims of the ‘826 patent, the PTAB did not address the substance of the petition but sided with Super Lighting regarding a dispute over the alleged priority date of the ‘826 patent. Super Lighting still has the burden in the pending lawsuit to establish that it can properly claim priority to earlier applications. MaxLite is confident that Jiaxing Super Lighting’s claim of priority is not correct and will strongly argue that position in court. Not only did Super Lighting fail to show any petitioned claim was entitled to an earlier priority date, but Super Lighting also improperly relied on a Chinese priority application by a different named inventor.
Additionally, MaxLite intends to file a request for review of this denial by the PTAB’s Precedential Opinion Panel (POP), a quasi-appeals body set up to resolve issues of PTAB policy or procedure. MaxLite will ask the POP to review this matter on several grounds. First, the standard for burden shifting for priority dates relied on by the PTAB appears to be at odds with the Federal Circuit. Second, the PTAB determined a priority application supported its alleged priority date even though the named inventors were different, a clear violation of long-held PTO policy. And third, the PTAB’s decision would have effectively required translating more than a dozen foreign priority applications from Chinese to English and providing argument for why each did not provide an adequate priority claim—which raises multiple questions of fairness.
For more information, visit MaxLite's website to read the full press release.
