TCI wins with WEICKMANN in invalidity proceedings on LED technology against Signify before Federal Patent Court
Munich, 19.05.2022: The Italian electronics group TCI Telecomunicazioni Italia S.r.L. has prevailed in further patent nullity proceedings before the Federal Patent Court (BPatG) against Signify Holding B.V. concerning a core technology for LED lighting systems. Following an oral hearing on May 17, 2022, the 4th Senate (Nullity Senate) of the Federal Patent Court declared the German national part DE 603 25 093.9 of the European patent EP 1 576 858 B1 invalid to the extent of claims 1 to 4 challenged by the nullity action filed under date August 5, 2020 (Ref. 4 Ni 19/21 (EP) in conjunction with 4 Ni 21/21 (EP)).
With this decision of the Federal Patent Court, the German part DE 603 25 093 of Signify’s European patent EP 1 576 858 B1 for a supply assembly for a LED lighting module was declared completely invalid to the contested extent. This is an important patent in the LED segment known among experts in the context of a licensing program of Signify. This patent is also known as the so-called „Double PWM“ patent and concerns the dimming of light-emitting diodes (LEDs). TCI had challenged the patent with respect to its claims relevant to general LED lighting systems in Germany with the nullity action, and it was declared invalid to this extent by the Federal Patent Court. Claims 5 and 6, which were not attacked by the nullity action and are directed to quite specific embodiments, are not affected by this decision of the Federal Patent Court.
The patent at issue is part of the patent portfolio underlying Signify’s licensing program known as EnabLED Licensing Program for LED Luminaires and Retrofit Bulbs. The invalidity proceedings of the patent, which Signify itself describes as part of the „Core Technologies for LED Lighting Systems“ with respect to the subject matter „dimming“ and the field of application „power control“, had been closely followed in the industry, as is evident from several third party requests for inspection of files at the Federal Patent Court. The relevance of this patent also results from another nullity action under the date Dec. 10, 2020 against the same German part DE 603 25 093 in the scope of claim 1 on behalf of KaVo Dental GmbH. The two nullity actions were joined by the 4th Senate of the Federal Patent Court for the purpose of joint hearing and decision.
TCI was advised and represented in the proceedings before the Federal Patent Court by a team led by patent attorney Dipl.-Phys., Dr.-Ing. Volker Jordan from the Munich patent law firm WEICKMANN. KaVo Dental was represented by HOFFMANN EITLE.
TCI Telecomunicazioni Italia S.r.L., based in Saronno (Varese), Italy, is one of the leading international manufacturers in the field of LED technology. Founded in 1982, the company offers a comprehensive portfolio of technical components such as LED ballasts or LED converters for the lighting industry. In fiscal year 2021, the company generated sales of over 210 million euros with more than 400 employees.
Signify Holding B.V., formerly known as Philips Lighting Holding B.V., is a Dutch-headquartered company that emerged from the Dutch group Koninklijke Philips N.V. and describes itself as the global leader in lighting for professionals, consumers and lighting for the Internet of Things. In fiscal 2021, the Amsterdam-listed company had global sales of EUR 6.9 billion, employed about 37,000 people and had a presence in more than 70 countries. The EnabLED Licensing Program for LED Luminaires and Retrofit Bulbs, established in 2008 by Koninklijke Philips N.V., bundles a patent portfolio of over 4,000 existing patents as well as more than 300 pending applications, which are said to be directed to over 530 different inventions.
Representative TCI Telecomunicazioni Italia S.r.L.
Weickmann & Weickmann, Patent- und Rechtsanwälte PartmbB, Munich
Dipl.-Phys., Dr.-Ing. Volker Jordan, Patent Attorney, European Patent Attorney, Partner
Dipl.-Ing. Alexander Beck, Patent Attorney, European Patent Attorney, Senior Associate