MaxLite has filed petitions for inter partes review (IPR) aiming to invalidate the patents of Jiaxing Super Lighting to fight against the Chinese company’s accusing of patent infringement. MaxLite provided an update on the status of the pending lawsuit.

(Image: MaxLite)

In May 2019, Super Lighting filed a patent infringement lawsuit against MaxLite, accusing MaxLite of infringing several Super Lighting’s US patents. In response, MaxLite filed petitions for IPR before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) seeking to invalidate U.S. Patent No. 9,897,265, 9,723,662 in November 2019, followed by an additional IPR for Patent 9,807,826 announced in December last year.

MaxLite reported on July 15 that it was successful in forcing Jiaxing Super Lighting to substantially narrow the number of claims it was permitted to assert in the lawsuit. After originally asserting 103 claims contained in six asserted patents, Jiaxing Super Lighting was ordered by the Court to withdraw two thirds (68) of those claims in response to MaxLite’s invalidity contentions. Thus, Jiaxing Super Lighting’s case is substantially smaller today than it was when it was initially filed.

Moreover, the U.S.-based company said that it has defeated Jiaxing Super Lighting twice in its repeated attempts to add a seventh patent to its lawsuit. Twice over the past several months, Jiaxing Super Lighting filed motions with the court seeking to amend its complaint to add a seventh patent to its claim of patent infringement. In both instances, most recently on June 1, 2020, the court denied Jiaxing Super Lighting’s motions to amend.

As for the three IPR petitions, all the claims of the ‘265 patent was invalidated by Jiaxing Super Lighting in June, 2020. The other two IPR petitions of ‘662 and ‘826 have been denied by the PTAB but MaxLite is still fighting on the cases.