Long Island City, NY—A British maker of LED light devices, Rotolight and ARRI a German camera and lighting systems company, ended patent disputes before a federal court in Delaware and an administrative tribunal in Virginia. The dispute involved Rotolight’s cinematic special effects CineSFX® patent portfolio.
Bringing the matter to a close, the companies issued the following official joint statement:
“ARRI has agreed to a settlement with Rotolight, relating to Rotolight’s cinematic special effects ‘CineSFX®’ patent portfolio in the U.S., UK and Europe. ARRI no longer contests the validity of Rotolight’s patents and has withdrawn its Inter Partes Review in the U.S. accordingly.
“Simultaneously, Rotolight has withdrawn its U.S. District patent court action against ARRI.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.”
Also commenting on the closure of the dispute was Rod Aaron Gammons, CEO of Rotolight. He added: “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.
“We are therefore pleased to have reached a settlement with ARRI. We 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.”
Rotolight and ARRI Patent Lawsuits Background
Two years ago, ARRI initiated legal proceedings against multiple patents related to lighting effects. The company asserted various patents were wrongly approved for technical solutions that weren’t new. In September 2021, ARRI said it would sue to have those patents annulled via an Inter Partes Reviews (IPR).
“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 stated at the time.
Further, the company asserted various lighting products that were “well established in the market for many years,” which utilized what it said were conventional lighting effect, were threatened with alleged infringement of U.S. patents “although these functionalities have been well-known in the art and established on the market for decades.”
ARRI asserted that it believed such patents were invalid because the “advances” they claimed were not new. Instead, ARRI claimed the technology was well known and widespread at the time of “invention.”
Particularly targeted was Rotolight’s CineSFX and Magic Eye families. They comprise 18 granted patents involving customizable effects that were approved in the U.S., the UK as well as Germany.
However, according to Rotolight, the patents were developed internally in conjunction with Stefan Lange, a listed co-inventor. Lange is an Emmy-winning visual FX specialist. Rotolight commented: “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.”