On April 17, local time, Denmark's NKT Photonics A/S was sued in a local federal court. Omni Continuum LLC alleges that NKT Photonics' "multi-stage hypercontinuum" lasers infringe two patents related to its technology in industrial, medical, defense, and quantum applications.
On Wednesday, Omni Continuum LLC, a subsidiary of Omni Technology Holdings, filed a complaint in the U.S. District Court for the District of Massachusetts, alleging that NKT's lasers infringed U.S. patents 7519253 and 7433116 and claiming at least $18 million.
Omni noted that NKT Photonics profited significantly from the allegedly infringing technology.
(Image source: Official Litigation Documents)
Plaintiff VS Defendant
The defendant in this case, NKT Photonics Inc., has its principal place of business in Massachusetts, USA, and NKT Photonics A/S is a multinational company headquartered in Denmark. In the following statements, NKT Photonics Inc. and NKT Photonics A/S, which are jointly sued, are collectively referred to as "NKTP". The plaintiff, Omni Continuum LLC, is a company owned by Professor Mohammed N. Islam of the University of Michigan.
According to the complaint, Dr. Mohammed N. Islam graduated from the Massachusetts Institute of Technology in 1985 with a Doctor of Science degree. He then worked as a senior photonics technician at AT&T's Bell Labs, Holmdel, New Jersey, and other corporate organizations until 1992. He has been recognized by the Optical Society of America (OSA) for his outstanding contributions to the field of nonlinear optics and optical fiber all-optical switching. He has been a member of the Society since 1998.
Dr. Mohammed N. Islam is currently a tenured professor in the Department of Optics and Photonics in the Department of Electrical and Computer Engineering in the College of Engineering at the University of Michigan, Ann Arbor. He is the first recipient of the 2007 Outstanding University Innovator Award and the inventor of the patent for a supercontinuous laser at issue in this lawsuit, and has extensive knowledge of the design and operation of supercontinuous lasers. Dr. Mohammed N. Islam has been actively researching and developing supercontinuum lasers since 1986.
NKT Photonics Inc. has filed for dismissal of the lawsuit. It is reported that at the hearing, NKT Photonics Inc., through its lawyers, indicated to the court and Omni that the laser products involved in the lawsuit did not meet the "pulse width of at least 100 picoseconds" limit set forth in Patent 253.
Subsequently, Omni filed a revised complaint alleging only that NKT Photonics infringed Patent 681.
The parties tried to reconcile, but could not reach an agreement. Omni had proposed to license its entire patent portfolio to NKT Photonics Inc., but the latter had rejected it. Instead, NKT Photonics Inc. filed a settlement only against Patent 681 and the amended complaint allegations. The parties eventually reached a settlement agreement, which was approved by the court on March 7, 2024, ending the dispute between the parties regarding patent 681, but retaining the risk of possible future litigation involving Omni's other patents.
However, Omni has recently discovered that some NKTP multistage superCW lasers have an external input that can be used to adjust the pulse width of the laser diode so that it can meet the minimum 100 picosecond pulse width requirement in Patent 253.
(Image source: Official Litigation Documents)
As a result, Omni believes that NKT Photonics Inc.'s legal counsel erred in their previous assertions. In addition, Omni argues that NKTP's multi-stage superCW laser infringes on one of its other patents, U.S. Patent No. 7433116 B2.
According to Omni's allegations, NKTP has manufactured, sold, offered for sale, used and/or imported multi-stage supercontinuum lasers that infringed Patent 116 over the past six years, including the NKT SuperK FIANIUM series and the NKT SuperK EXTREME series lasers.
(Image source: Official Litigation Documents)
In summary, the plaintiffs pointed out that NKTP had infringed 253 and 116 patents for at least the past six years. NKTP's alleged laser sales average at least $30 million per year.
In previous licensing negotiations, NKTP's parent company agreed to pay an 8% royalty to Omni's sister company for the sale of licensed products owned by the sister company.
The plaintiffs are seeking a permanent injunction prohibiting NKTP from manufacturing, using, selling, offering for sale, and importing to the United States the lasers involved in this lawsuit.
Omni and NKT Photonics Inc. have previously "gone to court". On February 17, 2023, Omni filed a lawsuit against NKT Photonics in the U.S. District Court for the District of Massachusetts, alleging that NKT Photonics infringed U.S. patent No. 7,519,253 B2 ("Patent 253") and 8,971,681 B2 ("Patent 681").
From: ofweek
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