SAN ANGELO, TX — A San Angelo manufacturer won a patent infringement lawsuit for one of its key products. Principal Lighting Group, known also as Principal LED, located in the San Angelo Business and Industrial Park at 3940 Venture Dr., patented an adaptor that allows commercial business signs to be easily converted from traditional fluorescent lighting to more efficient LED lighting diodes. It is marketed by Principal as the Stik series and is an important revenue generator for the company.
Retrofitting existing fluorescent signage is big business and soon others developed competing solutions. Reece Supply, a Dallas-based distributer, along with an Odessa company, RetroLED, marketed a product similar to Principal LED’s Stik called the “Reece Stick.”
The court battle between the San Angelo manufacturer and RetroLED began when, in 2018, RetroLED filled a lawsuit against Principal to attempt to invalidate Principal’s U.S Patent No. 9,311,835, also known as Principal’s ‘835 patent. RetroLED sought a summary judgement. In turn, Principal LED filed a third party complaint to join Reece Supply for patent infringement, bringing Reece into the court case.
In Principal LED’s lawsuit, filed by Jackson Walker LP attorneys Wasif Qureshi and Blake Dietrich, the San Angelo manufacturer alleged that both Reece Supply and RetroLED were aware of the ’835 Patent and infringed on it with Reece Supply’s “Reece Stick” product fitted with RetroLED end caps.
The litigation dragged on for over 1.5 years, until August 2020, when U.S. District Judge Alan D. Albright in a federal court in Waco granted Principal LED’s motion for summary judgment confirming infringement of Principal’s patent by Reece Supply and RetroLED, in what appears to be his first summary judgment ruling finding infringement, according to Jackson Walker.
RetroLED and Reece presented the court a 200+ page report from a technical expert to argue Principal’s ‘835 patent was invalid. The judge’s granting Principal LED’s summary judgement “significantly narrowed” Reece and RetroLED’s case, and all parties decided to resolve the dispute out of court rather than fight an expensive jury trial.
In the ensuing settlement, Reece agreed to cease production of its “Reece Stick,” but will sell all remaining inventory, and compensate Principal LED for each stick sold. RetroLED has ceased production of its infringing end caps and destroyed its existing inventory, Principal LED said.
“While we are happy to fairly compete in the market, we cannot let others compete with and damage us by misappropriating our IP (intellectual property) 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,” stated Principal LED co-founder Dr. Bryan Vincent.
According to Jackson Walker, this is Principal LED’s second successful effort to protect its patents. In a previous lawsuit, Principal LED 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 Principal’s ’054 and ’501 Patents and to license the ’835 Patent.
Jackson Walker announced the details of this lawsuit late last month.