ARRI SETTLES PATENT LAWSUITS WITH ROTOLIGHT
POSTED ON 30 JANUARY 2023
Please find an official joint statement from ARRI and Rotolight below:
“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 ARRI no longer contests the validity of Rotolight’s patents and has withdrawn its Inter Partes Review in the US accordingly. Simultaneously, Rotolight has withdrawn its US District patent court action against ARRI.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”.
End of joint statement
Rod Aaron Gammons, CEO of Rotolight 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, 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. ”
Rotolight is a British family-owned business founded in 2009, designing innovative LED lighting products for the cine/broadcast and photographic industries. Rotolight’s award winning products have been used by leading filmmakers around the globe, including recent use on feature films by Netflix, Amazon Studios and SKY (see here). As well by leading broadcasters including BBC and ITV (see here), and customers including Microsoft, EA Sports and Formula 1. Manufactured in the UK, Rotolight products have pioneered numerous industry-first, patented technologies, such as the first suite of user customizable cinematic lighting effects (CineSFX™), and the world’s first electronic diffusion technology (SmartSoft™), amongst many other innovations in the sector. Rotolight has sold over 140,000 products in over 41 countries and has developed a considerable patent portfolio containing over 42 patents, stemming from its investment in industry-first innovations and features enjoyed by its global user community.
Specifically, the Rotolight CineSFX® and related Magic Eye® patent family contains 18 granted patents relating to user-customisable special effects, which have been thoroughly and independently examined and granted by respective patent offices in the US, UK, Germany and Europe. These patents were developed internally by Rotolight, working in conjunction with Emmy® winning Visual FX Veteran Stefan Lange (IMDB), a listed co-inventor of these patents. 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.
In addition to the settlement agreed with ARRI, Rotolight also successfully defended two landmark IPR cases relating to the same patents (IPR2022-00262 and IPR2022-00261) in the USA brought against it by Vitec Production Solutions Inc. The Patent Trial and Appeal Board (PTAB) found in Rotolights favour (see IPR1 and IPR2) , denied the institution of their InterPartes patent review (IPR) and re-confirmed the validity of the granted Rotolight CineSFX® patents:
“we determine that the Petitioner (Vitec Production Solutions) does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly we deny the Petition and do not institute an inter pares review of the ‘258 patent” (p.27)
Following the PTAB’s decision and in lieu of a licensing agreement, Rotolight filed a District court patent infringement action against Videndum Productions Inc, in Delaware (1:2022cv00928) in July 2022.
For detailed information relating to the lawsuit and the verdicts find the official court documents here:
Rotolight vs ARRI district court patent infringement complaint.
Vitec Production Solutions vs Rotolight – IPR denied.
Vitec Production Solutions vs Rotolight 2nd IPR denied.
Rotolight vs Videndum Production Solutions district court patent infringement lawsuit.