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    Update from the LED Legal Battle, PFO Still Fighting?

    Since news broke about the pending Orbital Technologies “Orbitec” v PFO case there has been a considerable amount of misinformation being spread across the internet. Despite what you may have read, LEDs are still an option for aquariums and the patent does not encompass the basic application of LEDs to marine aquariums. Last month we received an […]

    pfo_fighting_360

    Since news broke about the pending Orbital Technologies “Orbitec” v PFO case there has been a considerable amount of misinformation being spread across the internet. Despite what you may have read, LEDs are still an option for aquariums and the patent does not encompass the basic application of LEDs to marine aquariums.

    Last month we received an e-mail direct from Marty Gustafson, one of the patent holders for Orbitec. Not much can be said as the case is still pending, but Orbitec does openly reveal that they are working with an aquarium lighting manufacturer to bring a product to market. From the e-mail:

    Fortunately our product line will be released later this year under a partnership with another aquarium lighting company, and we look forward to continuing to integrate and work together in the industry. We hope that our many years of LED lighting experience for plant growth systems, aerospace applications, underwater bioreactors and controlled environments combined with our partner’s aquarium expertise will result in high quality, reliable products.

    We know not much can be said by either party, but the GBD team has been doing some research on the pending litigation battle between the two companies.  PFO has acquired the services of Wisconsin based Foley & Lardner, a large and respectable law firm, and it appears they have not given up fighting this case. This prompted some additional research on our end and resulted in some very interesting findings.

    As of February 9th, 2009 PFO filled a response summary judgement motion. (Note: This is 6 days after the news that PFO fired all staff and was going under) This was in response to Orbitec’s summary judgement and presents some interesting information. For example PFO is claiming that “there is strong evidence inferring intent to deceive” and that prior patents render Orbitec’s patent claims as inherent. There are always two sides to a story and it will be interesting to see how this turns out. The fillings are on hold until a judge rules on them, but we were able to get other documents like Sanjay Joshi’s deposition. In this deposition from January 23rd, Sanjay is tediously barraged with questions on his knowledge of LEDs, PFO and his thoughts on the patent. [Original deposition linked below].

    We cannot see the expert witness declarations, but we can see the titles  and it appears PFO have retained Sanjay, Dana Riddle, Tullio Dell Aquila and few others as expert witnesses. Most ought to know Sanjay and Dana for their influential work with aquarium lighting. It appears many do not know Tullio, who is a lighting industry expert. In particular he specializes in LED lighting technologies and has one of the strongest potential examples of invalidating prior art. See this 2003 article by Mike Kirda that shows an early LED unit by Tullio that was displayed at IMAC.

    Orbitec has responded to this prior art claim by stating:

    In that chart, PFO appears to allege that all the elements of each claim are found in a reference called “the Kirda Article,” which is entitled, “Lighting In Reef Tanks: Some Actual Data.”  Id.  This article depicts an LED lighting system apparently built by Tullio Dell Aquila, one of PFO’s experts, and displayed in his hotel room in May of 2003.  Facts at ¶ 181…A number of claim elements are obviously not disclosed by these pictures. For example, there is no evidence of the dimming controller required by independent claims 1 & 5. Facts at ¶ 184. Indeed, Mr. Dell Aquila explicitly states in his expert report that the LEDs in the device “were not attached to a dimming controller.” Facts at ¶ 185. On this basis alone, the Kirda Article cannot anticipate. It is also impossible to tell whether the device’s housing contains the required cooling system. Facts at ¶ 186. Accordingly, the Kirda Article does not anticipate any claim of the ‘018 patent.

    Does PFO have adequate evidence of prior art? We will have to see. With some additional research we were able to find dimmable LEDs for marine aquariums prior to the patent. They are your typical “moonlight”, but nonetheless they are dimmable and would suffice to grow some marine life. Below is a clipping from PFOs summary judgement listing examples of aquarium related prior art that are cited throughout the document.

    pfo-prior-art-patents

    Interestingly, PFO’s defense seems to be relying less on prior art from LEDs applied to marine aquariums and more on two patents (‘602, ‘432)  for Plant growth. The logic being that these prior Plant patents render the Orbitec patent obvious. 

    While these two prior art LED lighting systems for plant growth do not explicitly disclose use with a marine habitat, such a use can be found under the principles of inherency. An invention is not novel if a prior art “reference … discloses every limitation of the claimed invention either explicitly or inherently.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir. 2001). “A reference includes an inherent characteristic if that characteristic is the ‘natural result’ flowing from the reference’s explicitly explicated limitations.” Id. (citing Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). In this case, the prior art LED lighting systems disclosed in Morrow ‘609 and the ‘432 patent inherently are connectable to the top of a marine habitat containing plants or other organisms as easy as they are when used to illuminate plants in other settings. Further, plant LED lighting systems can easily be used to illuminate aquariums, especially given the fact that historically lighting technology has typically migrated from commercial to horticulture then to aquarium lighting. (DPFF ¶ 154.)

    Those are just some highlights from the documents, but you can find the originals here. All files are large PDFs, it may take a moment to download.

    12 Comments

    1. March 16, 2009 at 10:38 AM | Permalink

      eric or mr. clifford, do you know what “the principles of inherency” are? can that squash the patent?

      keep up the good work!!!

    2. mcliffy2
      March 16, 2009 at 11:12 AM | Permalink

      The plant theory is interesting – this is a battle over what the relevant art is. PFO appears to be arguing that the relevant art is lighting sufficient to support photosynthetic life (i.e. plants and corals), whereas Orbitec will likely argue that the claims means what it says marine life (although marine plants are marine life, aren’t they?). I am interested to see how this plays out…

    3. mcliffy2
      March 16, 2009 at 11:22 AM | Permalink

      Tim,

      I’ll have to take a look at the motions and deps – can you give me a page site where this is mentioned and I’ll get back to you?

      – Mike

    4. Nick
      March 16, 2009 at 12:37 PM | Permalink

      Poor Sanjay, I don’t understand why he involved himself, the prior Art is so obscure and the forum postings hurt his position as much as they help it.

      I have been deposed myself a few times these things go two ways 1. If your honest the transcript is clear and repetitive.2. if you are stretching the truth it ends up taking all day with multiple breaks and the transcript reads like this one did, confusing.

      It’s also funny that PFO must have known about orbitech and they still threatened aqua illumination with a lawsuit, SHADY!

      It’s sad that PFO thinks it’s ok to take customers deposit money and use it to pay a lawyer to defend them in an unwinnable case.

      Of course this is just my opinion, I’m sure many will disagree.

    5. March 16, 2009 at 1:11 PM | Permalink

      Nick,

      I wouldn’t feel too bad for Sanjay – my guess is that he is making anywhere from $200-400/hour for his time 😉

      Also, as for the obscurity of the prior art, for purposes of invalidity, it is assumed that the person of skill in the art knows of all publicly available references. In other words, if it qualifies as being “publicly available” (which can be as little as a prototype or document being shown to one other person), it doesn’t matter how obscure it was.

    6. Nick
      March 16, 2009 at 1:26 PM | Permalink

      well then the article with tulios tank certainly applies, it will be interesting to see what the judge does, I don’t see a summary judgement coming anytime soon it looks like there is enough here that the judge will want to hear all of this in court.

      I don’t beleive that the plant growth patents are applicable here like sanjay alluded to, if such a fixture had actually existed for plant growth we would have seen them applied to reef tanks. Photosynthesis is the only tie that binds the two.

    7. Matthew
      March 17, 2009 at 2:41 PM | Permalink

      Uh…pg 13 in Sanjay’s depo

      7 Q And LED stands for lead and diode, right?
      8 A Right.

      What does it mean when they can’t even get a simple and crucial definition correct?

    8. George
      March 17, 2009 at 7:45 PM | Permalink

      I’m not buying a system until this has blown over or licensing deals are made public.

    9. Elebriend
      March 26, 2009 at 7:10 PM | Permalink

      So it seems to me, by reading the PFO reply, that Gustafson may be the achilles heel. I wonder if this thing blow back up in their faces if she will be invited to the company summer BBQ. Now if this information is true, and I suspect it is condsidering that it isn’t second hand information, it appears that Ms Gustafson was looking for other aquarium LED lighting fixtures while the examiner was looking at their info and that she didn’t tell him? I mean particularly since she signed a legal document saying she would doesnt this almost nullify the patent since that is one of rules you have to obey? Quick who knows an attorney friend :P?

    10. damon
      April 3, 2009 at 1:02 PM | Permalink

      I have bought a 4000$ led lighting system and it does not work. I have had it 6 mos and cannot get it fixed. How do you think i feel about this fight. I believe and think i am the victim not pfo or orbitec. I the consumer is S O L. you figure that out. =That is wrong………….

    11. Shayne
      April 19, 2009 at 2:40 PM | Permalink

      I suggest Anthony Calfo, Richard Durso, Dr. Dean Jaubert, Dietrich Stuber, Ken Stockman, and every other inventor of one profound marine aquarium system or another head over to Orbitec’s president, Tom Crabb’s house and inspect his marine system. Anything that remotely resembles their intellectual property should be ripped out and proceedings made to sue his ass.
      This type of behaviour is not nor has it ever been part of the aquarium and reefing community and I suggest we all make efforts to quash this. If we want to get ridiculous perhaps I can sue Orbitec since I thought of lighting with LED’s back around 1994 when I had a battery charger next to my 25g (saltwater coral skeleton system..LOL) casting a red glow then a green glow (once the batteries were charged). I am positive others have thought of things like this even prior to that…..
      Should Orbitec win I suggest a huge DIY LED lighting project posted on every aquarium forum and website or a couple of well placed emails to Chinese manufacturers that will scoff at American patent laws.

      I for one am sick of waiting for a viable alternative to replacing my metal halides with something much more eco-friendly.

    12. Elebriend
      April 20, 2009 at 1:14 AM | Permalink

      I’m right there with ya Shayne. Problem is, what they are doing is legal, it isn’t right but it’s legal. Go over to nano-reef.com and go to the DIY section, Evilc66 is the lead in DIY LED lights over there if anyone’s interested. At this point in time I am laughing at Orbitech. At this point in time they can’t stop legal action since it would cost them dearly but at the same time they have screwed themselves up to the point that people are now going alternatives routes. If Tom Crabb was such an avid reefer 1. why haven’t we seen him on any of these forums and 2. why didn’t he consider some of the reprocussions, I mean spend a few hours on some of these forums and it’s clear: The community is resourceful.

    4 Trackbacks

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