In late 2021, ARRI launched legal proceedings to challenge the validity of multiple patents related to lighting effects, claiming that many were erroneously granted for technical solutions that weren’t actually new. It has today withdrawn that complaint with regard to Rotolight.
On September 10, 2021, ARRI announced that after it repeatedly observed that patents were, from its perspective, erroneously granted for technical solutions that weren’t new but rather just state of the art, it would sue to have those patents rescinded via an IPR, or an Inter Partes Reviews.
“These properties are then often improperly exploited by rights holders, in an attempt to claim the right to be the sole owner of ‘inventions’ that are in fact already known technical solutions, or to make financial demands for their use,” ARRI argued.
ARRI said that various lighting products that were “well established in the market for many years” who were making use of what it characterized as conventional lighting effects were being threatened with alleged infringement of United States patents “although these functionalities have been well-known in the art and established on the market for decades.”
It argued that in its view, these patents should never have been issued and are invalid because the “advances” they claimed are not new but instead were well known and widespread at the time of alleged invention.
“We have to defend ourselves, including to protect our customers and the industry against intellectual and industrial property rights that do not protect an innovation but instead improperly limit the available technical options,” the company concluded.
One company whose patents were targeted was Rotolight, a British lighting company founded in 2009, and its CineSFX and Magic Eye families which contain 18 granted patents that cover user-customizable effects that have been granted in the United States, the United Kingdom, Germany, and Europe.
These patents were developed internally by Rotolight, working in conjunction with Emmy winning Visual FX Veteran Stefan Lange, a listed co-inventor of these patents,” Rotolight says. “Rotolight’s patents have since been cited as state of the art in recent patent filings by Apple, Panasonic, and Signify (Philips) amongst several others.”
Rotolight says today that it successfully defended these two patents against ARRI’s lawsuits.
“Rotolight invests millions each year into research and development in order to bring its customers the latest in lighting technology and innovation. However, such investments can only be made with the knowledge that those investments and the intellectual property, which underpins them will be respected,” Rod Aaron Gammons, CEO of Rotolight, says.
“We are therefore pleased to have reached a settlement with ARRI, and shall continue to take all steps necessary to protect our intellectual property from ongoing infringement. In so doing, this will allow us to continue to invest in bringing industry-first innovations to market. Any other infringing companies should now proactively approach Rotolight directly, to secure a licensing agreement on reasonable commercial terms.
ARRI has agreed to a settlement with Rotolight, relating to Rotolight’s cinematic special effects “CineSFX®” patent portfolio in the US, UK, and Europe. ARRI no longer contests the validity of Rotolight’s patents and has withdrawn its Inter Partes Review in the US accordingly.
Simultaneously, Rotolight has withdrawn its US District patent court action against ARRI. All ARRI products will continue to be offered as always. ARRI and Rotolight respect intellectual property and value fair competition.
-Joint ARRI and Rotolight statement.
Last year, Rotolight successfully defended itself against two similar lawsuits brought by Vitec — now known as Videndum — the company that distributes brands such as Manfrotto and Litepanels. After that defense was completed, Rotolight immediately issued a patent infringement lawsuit against Videndum.
Image credits: Rotolight