August 15, 2025
Signify Downlight Patent Faces Major Legal Setback
Key LED fixture claims invalidated, shrinking enforcement against Menards and others
In a setback to Signify’s legal strategy, the U.S. Patent Trial and Appeal Board (PTAB) has invalidated 17 of 20 claims in a key lighting patent the company is asserting against Menards and its vendors.
The August 13 ruling centers on U.S. Patent No. 10,299,336 — a “configurable lighting system” patent covering selectable color temperature fixtures. The decision stems from a PTAB review initially filed by retail downlight maker Luminex and later joined by Menards. In a separate but related civil case, the U.S. District Judge overseeing the litigation previously described the ’336 patent as “a major component of the case,” highlighting its central role in Signify’s infringement claims.
What’s left? Claims 8, 16, and 17 — all dependent claims, meaning they rely on broader, now-invalidated parent claims. That sharply limits the patent’s enforceability
The ‘336 patent, born from Cooper Lighting R&D and acquired by Signify in 2020, covers LED fixtures with configurable outputs: color temperature, lumen output, and beam distribution. Think 2700K to 5000K tunable HALO downlights with built-in selector switches.
Narrow Claims, Narrow Options
Claim 1, the patent’s foundational independent claim relating to CCT selection, was among those struck.
The surviving claims add niche technical limitations, like network communication sequencing or module configuration. Their applicability to the 61 Menards SKUs originally accused of infringement remains uncertain.
Signify could amend its complaint to focus on these narrower claims, which may not support the same infringement theories or damages potential. In short: even if enforceable, they’re weaker weapons.
A Litigation Tangle, Simplified
The Wisconsin district court case, filed in August 2022, has been paused since October 2024. The judge — citing over 2,000 pages of summary judgment briefing — granted Menards’ motion to stay, pending the PTAB outcome. That stay now looks like a prescient move.
Signify opposed the pause, arguing the ’336 patent was just one of seven patents at issue. But it was a central one. It covered nearly half the accused products and figured prominently in pre-trial filings. In fact, the judge himself highlighted the weight of the ’336 patent, writing last year that it was “a critical component of the infringement theory against multiple defendants.”
Now, the remaining portion of the case rests on a narrower footing.
The Bigger Picture
While the PTAB’s decision applies only to the ’336 patent, its impact could ripple outward. The Board found the invalidated claims obvious in light of familiar prior art — a rationale that other defendants, courts, and USPTO panels are likely to study.
Signify still has six other patents in play in the Menards case. It may try to pivot its infringement theory or emphasize remaining claims, but the strength of its original position has been diminished.
Beyond Menards, more than a dozen lighting manufacturers that supply the retailer (including Luminex) have been pulled into the litigation. For those companies, many facing indemnification pressure, the weakening of the ’336 patent strips away a key liability threat.
