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.

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.

• Orbital Technologies “Orbitec” Summary Judgement 
• PFO Reply, Opposing Summary Judgement
• Sanjay Joshi Condensed Deposition 

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