A jury in Michigan recently found that a lighting manufacturer willfully infringed two patents of its competitor and awarded damages in the form of lost profits. Smartrend Manufacturing Group, Inc. is a Canadian-based manufacturer of illuminated signage, specifically illuminated school bus signs and illuminated school bus stop arms. Smartrend owns a utility patent, U.S. Patent No. 11,170,673, and a design patent, U.S. Patent No. D932,930, that in combination provide protection for their illuminated bus stop signs. The utility patent includes claims directed towards a system for supporting illuminated signs for mounting on a vehicle, while the design patent covers an ornamental design for an LED light panel, as shown in FIG. 1 below:
Michigan-based Opti-Luxx, Inc. also manufactures and sells a variety of school bus lights, which Smartrend claimed directly infringed both their utility and design patents. In early 2021, Smartrend wrote to Opti-Luxx to inform them of their potential infringement of their then pending patent applications, but Opti-Luxx ignored these warnings and continued to develop their illuminated school bus designs. Most notably, Opti-Luxx was seen marketing their illuminated school bus designs at numerous conferences. One of the designs (shown below) was even witnessed and photographed by an employee of Smartrend at one of these conferences.
Even after additional threats by Smartrend that they would sue Opti-Luxx for patent infringement, Opti-Luxx indicated that they would not discontinue the manufacturing of the alleged infringing illuminated signs. Smartrend reached a breaking point, however, when they received an email from a potential customer that decided to no longer purchase an illuminated sign from Smartrend in favor for the same sign mentioned above sold by Opti-Luxx.
Smartrend proceeded to file a patent infringement suit against Opti-Luxx. Under 35 U.S. C. § 271, any person or business who makes, uses, or sells a patented invention infringes the patent. Further, the manufacture, use, or sell of the patented invention must occur in the U.S. during the term of the patent. In this case, the jury ultimately agreed to a verdict of willful infringement by Opti-Luxx of both asserted Smartrend patents. The jury also awarded Smartrend $23,308 in damages, which was the full amount requested by Smartrend to recoup its lost profits.
This case provides a great reminder that patent diligence is a critical step for many individuals and businesses. For those manufacturing a product or launching a service, it is recommended that a patent attorney conduct a clearance (or right-to-use) search to ascertain the potential risk of infringing upon on the rights of others and how to manage such risk. Further, a patent attorney will be able to assist and defend you if accused of patent infringement or served with any other intellectual property (IP) complaints.