Jackson Walker Successfully Resolves WDTX Patent Dispute for Principal Lighting Group

December 28, 2020 | Client Results

After over a two-year patent infringement dispute, Jackson Walker attorneys Wasif Qureshi and Blake Dietrich secured a favorable resolution for Texas-based Principal Lighting Group.

The litigation began in early 2018 when RetroLED Components filed a declaratory judgment action against PLG in Waco, Texas, seeking to invalidate PLG’s U.S. Patent No. 9,311,835, which is directed to light-emitting diode assemblies that can be used to efficiently and safely retrofit commercial signs designed for use with more traditional fluorescent lamps. In turn, PLG filed a third party complaint to join Reece Supply Company of Dallas, alleging that both Reece Supply and RetroLED were aware of the ’835 Patent and infringed with Reece Supply’s “Reece Stick” product fitted with RetroLED end caps.

In August 2020, U.S. District Judge Alan D. Albright granted PLG’s motion for summary judgment of infringement against Reece Supply and RetroLED, in what appears to be his first summary judgment ruling finding infringement. In addition, Judge Albright granted PLG’s motion for summary judgment that no single prior art reference invalidated the ’835 Patent, which significantly narrowed the invalidity case Reece Supply and RetroLED would be able to present at trial. The Court also denied Reece Supply and RetroLED’s motion for summary judgment seeking to invalidate the ’835 Patent based on various prior art references and combinations discussed in a 200+ page report from its technical expert.

Shortly after the hearing, the parties resolved the case with an agreement on certain financial and business terms, which included compensation to PLG and the discontinuation of Reece Supply’s “Reece Stick” and RetroLED’s infringing end caps.

In a PLG news release about the resolution of the case, co-founder Dr. Bryan Vincent stated: “While we are happy to fairly compete in the market, we cannot let others compete with and damage us by misappropriating our IP which we have spent considerable resources investing and developing. It was a long and expensive battle to protect our ’835 Patent, and I am pleased that Reece Supply and RetroLED have finally come to terms.”

Dr. Vincent commented for this release that: “We try to avoid litigation. Here, we reached out to both Reece Supply and RetroLED prior to their involvement as parties in this case. But the infringement continued and litigation followed. We are glad to have had the very able and creative counsel of Wasif and Blake to help secure this result. The Jackson Walker team assisted with key strategic decisions that brought an end to this case prior to trial.” Wasif noted, “We are honored to have Principal Lighting Group as a client and its confidence in our team to protect and enforce its IP both in and out of the courtroom.”

This is PLG’s second successful effort to protect its patents, both of which Jackson Walker has now handled for PLG. In the previous lawsuit, PLG brought suit in the Central District of California seeking a preliminary injunction against The Sloan Company d/b/a SloanLED for infringement of PLG’s U.S. Patent Nos. 9,851,054, and 10,024,501. On the day of the preliminary injunction hearing, SloanLED agreed to redesign its PrismBEAM product in view of the ’054 and ’501 Patents and license the ’835 Patent. More information about that result can be found here.

In addition to IP matters, PLG regularly relies on Jackson Walker for significant transactions, including the formation of Ventex Technology, an effort which Dallas partner Mario Perez Dolan led.

The case is RetroLED Components, LLC v. Principal Lighting Group, LLC; Principal Lighting Group, LLC v. Reece Supply Company of Dallas (No. 6:18-cv-00055-ADA) (W.D. Tex.).

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Founded in 1887, Jackson Walker continues to advance the world of business by helping companies of all sizes navigate today’s increasingly complex, interconnected legal landscape. With more than 400 attorneys across seven offices, we are the fourth-largest law firm in the state and have been recognized by Law360 as a “Texas Powerhouse” and an “elite law firm” that regularly provides counsel to industry-leading clients on highly complex transactions. To explore the Firm’s experience enforcing and defending intellectual property rights in federal and state courts, arbitrations, alternative dispute forums, and proceedings before the International Trade Commission and the Patent Trial and Appeal Board, visit our Intellectual Property Litigation practice page.