August 15, 2022
Signify Sues Home Improvement Retailer, Menards
Private label downlights and disc lights accused of violating LED-related patents
Signify is suing Menards over private-label lighting products that, according to Signify, violate six Signify patents. Menards is a family-owned, Wisconsin-based home improvement retail chain with over 300 locations that span across fifteen mostly-Midwestern U.S. states from West Virginia to Wyoming.
Just like Home Depot and Lowe’s market their respective private label lighting brands, Commercial Electric and Utilitech, Menards offers its private label lighting products under three brand names: Patriot Lighting, MasterForce and Smart Electrician.
The six asserted U.S. patents relate to LED technology, power control and configurability. The accused Menards products include 61 SKUs in various categories including LED discs, LED downlights and portable LED work lights.
The lawsuit, filed Friday in U.S. District Court for the Northern District of Ohio, makes no mention of other lighting brands sold through Menards and focuses solely on the retailer’s private label products.
Above: Accused private-label product SKU 349-1353, included in the court filing
Signify's attempts to resolve without litigation
Court filings indicate that Signify attempted to resolve the matter outside of court for a one-year period of written and verbal communication with Menards. In February 2021, Menards received its first of many written notices from Signify of its alleged infringement of Signify patents.
During a March 2021 phone conference described in the complaint, Signify attorneys provided an overview of Signify’s technology licensing program to Menards and proposed next steps, including Signify’s willingness to provide additional details through a technical presentation concerning Menards branded products and Signify’s patents. During the telephone conference, Menards declined to discuss a license, and requested that Signify instead speak to Menards’ suppliers. Signify's attorney allegedly explained to Menards in-house counsel that it was Signify’s policy to license private label retailers directly, not suppliers.
Menards' in-house counsel reportedly had numerous email exchanges and conference calls with Signify attorneys over several more months and, according to Signify, Menards stated in September 2021 that future calls between the parties would not be productive.
According to the complaint, subsequent correspondence from Signify attorneys to Menards received either no response or a short, dismissive response.
Signify asks for enhanced damages
Signify is asking the court for a permanent injunction that prohibits Menards from selling the accused products. Signify is also requesting not just standard damages, but "a three-fold enhancement of any damages" alleging that Menards conduct relating to Signify's intellectual property has been "willful and deliberate."
A signify spokesperson shared the following comments with us on Sunday:
“The six Asserted Patents are part of the EnabLED licensing program, under which licenses are available to companies offering products that practice these patented technologies. The Asserted Patents generally relate to different technologies and techniques for LED-based lighting systems, including power management, optics and thermal management. Signify believes that its patents are infringed and valid.”
“We respect other companies’ or individuals’ intellectual property in the same way as we expect others to respect Signify’s intellectual property. As the legal dispute is currently running, we refrain from providing further details.”
