March 20, 2023   

Texas Firm Swings for Fences with Three IP Lawsuits

2023 03 FerRuiz Signify North America cooper lighting felio sylvania.jpg

  • A 5-month-old company accuses HALO, Color Kinetics and Felio Sylvania of violating its patent.

  • Some of the accused products were commercialized before the original patent application was filed.

 

A new Texas business has initiated an intellectual property lawsuit campaign against three prominent names in lighting. Over the last ten days Austin, Texas based FerRuiz IP LLC has sued Signify North America, Cooper Lighting and Felio Sylvania – asserting the same “Optical System for Luminaires and LED Lighting” patent and accusing each company of infringing upon it.

The asserted patent was granted in 2018, but the original Spanish patent holder assigned the patent to FerRuiz IP just five months ago in October 2022.

The seemingly small firm, FerRuiz IP, is taking on some of the larger, more popular and IP-protected lighting brands and products. Some of FerRuiz IP's assertions cite numerous HALO branded products including RL4 downlights, RL56 downlights and E27 housings from Cooper Lighting Solutions – products that were commercialized long before FerRuiz's asserted patent application was originally filed.  Also targeted is the strong patent-protected Color Kinetics brand of Signify – with PowerCore products being accused of infringement.

808 patent HALO.jpg808 patent CK.jpg

Above:  Examples of accused products from Halo and Color Kinetics - cited in lawsuits.

 

Felio Sylvania – a separate company not affiliated with LEDVANCE – is based in Europe and is the company that purchased many Sylvania business assets and European licensing rights to the Sylvania name years ago when OSRAM was spinning off many of its lamp and lighting portfolio. The lawsuit against Felio Sylvania states that the Hungarian company has an established place of business in Texas and regularly solicits business there – a claim that we were unable to verify.

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The inside.lighting I-Team has investigated the plaintiff’s claims and the company behind them. Here’s what we found:

Non-Practicing Entity (NPE)

FerRuiz IP is a non-practicing entity, meaning it owns a patent relating to lighting optics, but does not seem to produce any such product relating to the patent. According to public filings in the state of Texas, Ferruiz IP is managed by a company called Pueblo Nuevo. As we investigated further, we learned that Pueblo Nuevo is managed by a company called Dynamic IP Deals which is led by Texas businessman Carlos Gorrichategui.

FerRuiz IP-1 (1).jpg

NPEs are often cynically referred to as patent trolls for trying leverage patent ownership into licensing deals or large sum settlements. With FerRuiz IP going after three large defendants – each with its own strong focus on enforcing intellectual property – the enforceability of the ‘808 patent will likely be tested with some very capable and experienced legal teams from Signify, Cooper and Felio Sylvania.

Origin of the patent:

The original U.S. Patent No 10,066,808 was assigned to a Spanish inventor named Fernando Ruiz – who likely inspired the naming of Gorrichategui’s business name, FerRuiz IP. Perhaps the LLC was created as a separate profit center for solely monetizing the ‘808 patent.

Timeline:

February 25, 2015
Spanish resident, Fernando Ruiz, files a patent application with the United States Patent and Trademark Office.

September 4, 2018
U.S. Patent No 10,066,808 was granted to Fernando Ruiz under the name Ruiz de Apodaca Cardeñosa Fernando. Location is cited as Logroño, Spain.

October 19, 2022
A new company is registered in Texas: FerRuiz IP LLC.  It is managed by Pueblo Nuevo which, in turn, is managed by Dynamic IP Deals.

October 21, 2022
Fernando Ruiz signs a document that assigns the patent to Carlos Gorrichategui, who leads FerRuiz IP’s parent company.

March 2023
Three separate lawsuits are filed in the U.S. District Court for the Western District of Texas asserting the '808 patent. The three defendants are:

  • Cooper Lighting
  • Signify North America
  • Felio Sylvania

808 patent.pngAccording to the filing with the U.S. Patent and Trademark Office, the ‘808 patent relates to an optical system for single-chip or multi-chip LED lamps and luminaires, with heat sink and trim body, consisting of a glass lens which has various geometric shapes having a perimeter rim on the circular base thereof and a rubber seal of matching size via which the lens is inserted, optionally including a self - adhesive translucent polymer vinyl filter on the base of the lens, a trim having a special design in the shape of a top hat and a partially or completely translucent planar glass panel attached under the flange of said trim.

Our untrained eyes may be missing some important hook, but the general nature of the patent which was filed in 2015 makes us wonder if there really is something significantly unique and patentable about the optical design that wasn’t previously done or patented by others before 2015.

Below is a video of Ruiz demonstrating the optics in 2018:

 

On Tuesday, March 14 a spokesperson from Cooper Lighting and Signify shared the following statement with inside.lighting:

  • On 10 and 13 March 2023, Ferruiz IP LLC filed a patent infringement complaint against Cooper Lighting Solutions and Signify, respectively, in the United States District Court For The Western District Of Texas, Waco Division.

  • We are currently assessing the claims and have no further comment on the details of the case.

  • We do want to stress that we have been a clear innovation leader in LED lighting technology, shaping the lighting industry time after time, and that we respect other companies’ and individuals’ valid intellectual property in the same way as we expect others to respect our intellectual property.

Once served with the lawsuit, each defendant will have 30 days to file its answer with the U.S. District Court.

 

 

 




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