ROSCO SIGNS PATENT LICENSING AGREEMENT WITH ROTOLIGHT
POSTED ON 6 APRIL 2023
Please find an official joint statement from ROSCO LABORATORIES, INC® and Rotolight ® below:
ROSCO LABORATORIES, INC® has agreed to an IP licensing agreement with Rotolight®, relating to Rotolight’s cinematic special effects “CineSFX®” patent portfolio in the US, UK, and Europe. ROSCO acknowledges the validity of Rotolight’s patents and is pleased to join Rotolight’s licensing programme. ROSCO and Rotolight acknowledge and respect each other’s intellectual property and value fair competition.
Rotolight CEO Rod Aaron Gammons said: “We are very pleased to welcome Rosco to our CineSFX® licensing programme and appreciate their proactivity and professionalism in approaching us for a license for use within their DMG Lighting products. Rotolight continues to invest millions each year into research and development in order to bring industry-first innovations to market, that saves filmmakers time and money on set. Any other infringing companies should now proactively approach Rotolight directly, to secure a licensing agreement on reasonable commercial terms.”
Rotolight has additionally also agreed to become part of ROSCO Laboratories licensing programme, and is pleased to announce that it will be adding True Rosco Color™ library of digital gels to its NEO 3, AEOS 2, and Titan series lights in a Q2 firmware update for its customers.
Mark Engel, CEO Rosco said: “Rosco is a leading manufacturer with a rich a history of innovation, product development, and respect of intellectual property and we are therefore pleased to have officially joined Rotolight’s CineSFX® licensing programme. Our history includes over 100 years of developing solutions for creative professionals. The True Rosco Color™ library contains our gel colors, names, and numbers which have been technically validated and trademarked by Rosco. Customers around the world know and trust Rosco for its color quality and associated name and numbering system. We appreciate Rotolight joining other manufacturers in our license program by adding True Rosco Color™ digital gels to its product line up in Q2 2023”.
End of joint statement
The Rosco & DMG Lumiere licensing agreement follows the settlement and licensing agreement agreed with ARRI ® earlier this year (see rotolight.com/arri): “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.”
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. In April 2023, in lieu of a licensing agreement, Rotolight filed a District Court patent infringement action in Delaware against Chauvet & Sons LLC, who acquired Kino Flo, Inc® in 2021 (1:23-cv-00364-UNA)
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 originating back to 2011, 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. 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.
For detailed information relating to the lawsuit and the verdicts find the official court documents here:
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.
Rotolight vs ARRI district court patent infringement complaint.
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