Philips allows companies to join its “LED-based luminaires and retrofit bulbs” licensing program for a licensing fee. According to a spokesperson, now the licensees exceeds 230, including Osram, Zumtobel, Acuity, Cree, Trilux and Cooper.

Of course, the public does not get to see details of the negotiations that result in licenses being signed. But in at least two cases, the companies approached by Philips have resisted joining the program.

Earlier this year, Philips resorted to a patent-infringement lawsuit against Nexxus Lighting. And more recently another lighting manufacturer, TCP Inc, has filed its own lawsuit in an attempt to avoid having to join the program.

Some of Philips’ licensees were also licensees with Color Kinetics, the US-based company acquired – along with its extensive patent portfolio related to LEDs and SSL – by Philips in 2007. Color Kinetics is now Philips Solid-State Lighting Solutions, Inc.

One of Philips’ most recent licensees is Charlotte, NC-based LED lighting manufacturer Nexxus Lighting Inc. Interestingly, Nexxus was formerly known as Super Vision, a company that had an extensive patent battle with Color Kinetics that the latter company eventually won in December 2006.

Despite this experience, Nexxus again ran foul of Philips and was the subject of a lawsuit filed in March 2012. Philips claimed that a variety of Nexxus’ products infringe six US patents assigned to Philips, namely no. 6,013,988, no. 6,250,774, no. 7,038,399, no. 7,358,679, no. 7,737,643 and no. 7,802,902.

According to the press release from Nexxus, the Philips lawsuit was settled at the end of September 2012, with Nexxus joining the Philips licensing program. According to Nexxus, the royalty-bearing license allows it to “continue to manufacture and sell LED-based lighting products, including [its] Array brand of LED replacement light bulbs.” Nexxus said it “will also pay Philips a one-time, lump-sum royalty fee to address past sales.”

The lawsuit was interesting because it apparently marked the first time that Philips has resorted to legal action to persuade a company to join its program. Going back a number of years, Color Kinetics was somewhat notorious for using a combination of threats and litigation to get licensees to sign up.

A spokesperson for Philips said that the complaint against Nexxus was “the first lawsuit around the licensing program and it shows that Philips is stepping up its approach. This is good news for current licensees as it shows that Philips is creating a level playing field in the market.”

It makes sense that companies who are paying for a license would also want to see their competitors paying as well, if appropriate. What is more difficult to ascertain is whether companies see a genuine, positive benefit to being part of the program – aside from being safe from a patent-infringement lawsuit. We haven’t found a company that will comment on this point.

Technical Consumer Products, Inc. (TCP) vs. Philips

Aside from Nexxus, at least one other company has clearly not enjoyed Philips’ invitation to join its licensing program. On October 11, 2012, Aurora, OH-based Technical Consumer Products, Inc. (TCP) filed a lawsuit against Philips Solid-State Lighting Solutions, Inc. and other Philips entities.

The complaint seeks a declaratory judgment of invalidity and/or non-infringement of several US patents, namely: no. 6,013,988, no. 6,147,458, no. 6,577,512, no. 6,586,890, no. 7,038,399, no. 7,352,138, no. 7,256,554, and no. 7,737,643 .

In its complaint, TCP says that Philips has “charged TCP with infringement of claims of each of the patents-in-suit.” TCP also says that Philips has “insisted that TCP requires a license under each of the patents-in-suit and other unspecified patents to market its LED lighting products.”

If the case comes before a jury, TCP will argue – for each of the patents-in-suit – either that TCP’s products do not infringe the patents, or that some of the claims are invalid, or both.

We’ll find out in due course whether this lawsuit will have any real effect, but the smart money has to be on TCP joining Philips’ licensing program in the near future