December 6, 2021
Lighting Lawsuit Names an Unusual Defendant
A Texas Lighting Agent is co-Defendant in a Patent Lawsuit
WACO, TEXAS – Heavy Duty Lighting has filed a patent infringement lawsuit against lighting manufacturer Xicato and its local Austin-San Antonio agent, Design Build Lighting.
Since taking ownership of multiple LED patents originally assigned to Sharp in 2020, Heavy Duty Lighting has filed suits against:
- Acuity Brands Lighting, filed September 2020
- Kichler, filed September 2020
- RAB Lighting, filed January 2021
- Xicato, Inc. and Design Build Lighting, filed December 2021
Heavy Duty Lighting is considered to be a Non-Practicing Entity as it is not actively engaged in manufacturing lighting products, but owns intellectual property (IP) relating to lighting technology.
Why is a Lighting Agent named as a Co-Defendant?
It’s becoming a more common practice for distributors and retailers to be named as defendants in IP lawsuits. The strategy sometimes includes affecting the supply of the product closer to the point-of-purchase and going after additional, deeper pockets.
In a recent lawsuit involving architectural lighting companies, a project sold by a Chicago lighting agent was mentioned in the complaint to establish Illinois as the proper court venue. But citing a lighting agent as an actual Defendant in a patent infringement lawsuit is unusual.
We imagine that the Texas lighting agent was named mainly because the agency is located in Texas. Plaintiff Heavy Duty Lighting is headquartered in Texas where the lawsuit was filed. The U.S. District Court in Waco is described to be “the patent litigation capital of the world” by some. Texas juries are reputed to be a Plaintiff-friendly audience for patent cases – awarding damages with greater frequency than in other U.S. Court jurisdictions.
Agent-Manufacturer Indemnification Clauses
It’s typical that agent-manufacturer agreements contain “hold harmless” or indemnification clauses to protect the manufacturer against liability or litigation expense that arises due to the agents’ actions or omissions. But it may be uncommon for those indemnification clauses to go both ways. It would be expected for the manufacturer, Xicato in this case, to lead the legal charge in defense of the lawsuit, but that doesn’t mean that the lighting agent defendant won’t incur significant legal expenses protecting their best interests.
Above: Sample indemnification clause from an agent-manufacturer contract.
We would expect Xicato to deny the allegations and contest the charges. But if this case ends up as a settlement or a ruling in favor of the Plaintiff, it may just be that the agency Design Build Lighting will be holding a hefty bill for their legal defense.
Don’t miss the next big lighting story…Click here to subscribe to the inside.lighting InfoLetter |
