In 2018, RetroLED Components filed a declaratory judgment lawsuit against signage products provider Principal Lighting Group (PLG), in an attempt to invalidate PLG’s U.S. Patent No. 9,311,835.
In 2019, as part of that suit, Principal Lighting Group sued Reece Supply Company of Dallas for infringement of the ’835 Patent. After more than two years of litigation, PLG announces it has favorably resolved the case.
In the suit, PLG alleged that Reece Supply and RetroLED were aware of PLG’s ’835 Patent and infringed that patent with Reece Supply’s “Reece Stick” and certain RetroLED end cap products. As a result of the infringement, PLG suffered monetary and market damage. In addition to alleging that the ’835 Patent was invalid, Reece Supply and RetroLED responded that they did not infringe.
On Aug. 27, 2020, the U.S. District Court for the Western District of Texas conducted a hearing on a number of potentially case dispositive motions that the parties had filed. The Court ultimately granted summary judgment that Reece Supply and RetroLED infringed the ’835 Patent. The Court also granted PLG’s motion for summary judgment that no single prior art reference invalidated the ’835 Patent. Relatedly, the Court 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.
Since the hearing, the parties have resolved the case with an agreement to certain financial and business terms by which Reece Supply and RetroLED will compensate PLG. Reece Supply has ceased production of its “Reece Stick” product but will be allowed to sell any existing inventory for a short period of time during which Reece Supply will pay PLG royalties on those sales. RetroLED has ceased production of its infringing end caps and destroyed its existing inventory of those end caps.
Dr. Bryan Vincent, the co-founder of PLG, states, “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. Having been in the industry for over 15 years, I know the state of the market prior to the ’835 Patent and have steadfastly maintained that the ’835 Patent brought significant innovation. 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.”
This is PLG’s second successful outcome to protect its patents. In 2019, SloanLED agreed to resolve a preliminary injunction suit PLG filed in California by taking a license to the ’835 Patent and redesigning SloanLED’s PrismBEAM product to avoid infringement of PLG’s U.S. Patent Nos. 9,851,054 and 10,024,501.
Don Hartford, director of business development at Reece Supply, says, “We are disappointed with the court’s recent decisions; however, we are glad the litigation is resolved and the parties can amicably move forward. In its summary judgment rulings, the court did not agree with us that the ’835 Patent is invalid and we acknowledge that the ’835 Patent is valid in the face of the various prior art references and invalidity grounds we raised. While we could have pressed on to have our case tried by a jury, we decided that it made more sense to find a way to bring this litigation to a close now, especially in view of the court’s recent decisions.”
Sid Norton, president of RetroLED adds, “like Reece Supply, we were disappointed by the court’s rulings, but we too are glad that the parties have ended this long battle.”