October 7, 2024
Court Halts Signify-Menards Lawsuit Pending Patent Review
“This has become an extraordinarily ponderous case, even among typically ponderous patent cases”
A federal judge last week granted a motion to stay proceedings in a patent infringement lawsuit involving lighting company Signify, retailer Menards, and 13 downlight makers that distribute products through Menards, pending the outcome of a patent review by the U.S. Patent and Trademark Office.
U.S. District Judge James D. Peterson ordered the stay, citing the potential to "streamline this case significantly" if the patent in question is invalidated. The patent at issue covers LED lighting technology and impacts nearly half of the over 170 products accused of infringement in the case.
Potential Impact on other Signify Lawsuits
The review of Signify's patent (US 10,299,336) could have ripple effects beyond the Menards case. Signify has asserted this LED patent in multiple lawsuits, including past litigation against Current and ongoing litigation against Keystone Technologies. If the U.S. Patent and Trademark Office invalidates or narrows the '336 patent, it would very likely weaken Signify's position in other cases — present and future. Even if the patent is upheld, the review board's interpretations might influence how other courts view the patent's scope and validity.
Notably, the judge also pointed out that several other patents in the Menards case will expire before or shortly after the scheduled trial date in March 2025.
The ‘336 Patent: Color-, lumen- and distribution-selectable fixture
Above: Excerpt from Signify's patent (US 10,299,336)
The '336 patent was acquired by Signify as part of its 2020 acquisition of Cooper Lighting. It describes a configurable lighting system designed to provide flexible illumination options by allowing adjustment of color temperature, lumen output, and photometric distribution.
The system includes a luminaire with multiple types of LEDs that can emit different color temperatures, such as 3000K and 4000K, and combine them to produce intermediate values like 3500K. The lighting system features a controller and switch, enabling users to configure settings for various applications either at installation or later, without the need for large inventories of different fixtures.
Complex Case with Multiple Parties
"This has become an extraordinarily ponderous case, even among typically ponderous patent cases," Peterson wrote, noting that summary judgment filings alone totaled over 2,000 pages. The case, originally filed in 2022, has grown increasingly complex with the addition of 13 third-party defendants—lighting manufacturers whose products are distributed by Menards.
Over the course of more than two years of litigation, both Signify and Menards have secured minor victories in various procedural rulings, contributing to a docket that now exceeds 350 court filings. This legal back-and-forth has significantly expanded the scope of the dispute, leading to the voluminous documentation and procedural complexities that have come to characterize the litigation.
Patent Review and Its Potential Impact
The stay comes as the USPTO's Patent Trial and Appeal Board conducts an inter partes review (IPR) of the patent's validity, initiated by Luminex, one of Menards's suppliers.
Menards had argued for the stay, claiming it would simplify issues and reduce litigation costs. The company said invalidation of the patent could eliminate infringement claims for about a third of the accused products.
Signify opposed the motion, contending the case was well advanced and that a delay would cause undue prejudice. The company argued the patent in question was only a small part of the overall dispute, which involves six patents.
Judge Seeks to Streamline Proceedings
However, Judge Peterson found that the potential benefits of waiting for the USPTO's decision outweighed concerns about delay.
The judge ordered all pending motions denied without prejudice, allowing parties to refile after the patent review concludes. His order suggests a desire to simplify the proceedings, which he described as having "plenty of blame to go around" for their complexity.
With the stay in place, the parties will await the USPTO's decision, which could significantly reshape the landscape of this lawsuit and others depending on whether the patent is upheld or invalidated.
