“ARRI has agreed to a settlement with Rotolight”, a joint statement between the two companies begins. In September 2021, ARRI began legal proceedings towards Rotolight, amongst others, disputing the validity of their lighting effect patents. The challenge came in view of what ARRI called “myriad prior art”. Basically, it’s been around for years, so what’s Rotolight done that’s actually new and patentable? They argued that it was “not new, but rather state of the art”.
They argued that the patents should never have been issued in the first place. That the company’s “advances” were nothing more than building upon known technical solutions that had been “well established in the market for many years”. Well, ARRI and Rotolight seem to have figured things out because they’ve reached a settlement, and the patents still stand.
While they didn’t come right out and say it – they didn’t even call out Rotolight by name in their initial release – the impression ARRI gave at the time was that they felt this was simply an act of patent trolling on the part of Rotolight and other companies they challenged. They alleged that it simply built on existing tech and shouldn’t have been granted. This is similar to the argument that Apple attempted to use against RED to invalidate their patents with the introduction of ProRes RAW.
Unfortunately, it can repeatedly be observed that patents are erroneously granted for technical solutions that are not new, but rather state of the art. These properties are then often improperly exploited by rights holders, in an attempt to claim the right to be the sole owner of “inventions” that are in fact already known technical solutions, or to make financial demands for their use.
Rotolight, a British lighting company founded in 2009, along with its CineSFX technology and Magic Eye app, has been granted 18 patents covering user-customisable effects – with a total portfolio of over 42 patents in 41 countries. These 18 effects-related patents have been granted in the US, UK, Germany and Europe. They were developed, Rotolight says, along with Emmy-winning Visual FX veteran Stefan Lange, who is listed as a co-author on the patents.
In a statement, Rotolight CEO Rod Aaron Gammons said:
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.
– Rod Gammons, Rotolight CEO
And in a joint statement, the two companies appear to have come to an agreement, with ARRI no longer contesting the validity of the patents and Rotolight withdrawing its suit against 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. 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.
Exactly what the settlement between the two companies involves has not been made public, but the fact that ARRI has withdrawn their suit says pretty strongly that Rotolight’s patents are legit. Whether that means Rotolight’s patents don’t compete with the lighting effects technologies that just about every other lighting brand on the planet offers or if those companies are now going to have to pay royalties to Rotolight is unknown.
As well as their fight with ARRI, though, Rotolight has also successfully defended two lawsuits (one, two) brought to them by Vitec (now known as Videndum) in the USA, who also questioned the validity of Rotolight’s patents. That situation is not entirely over, however, as Rotolight has filed suit against Videndum, claiming that a number of their lighting products infringe upon Rotolight’s patents.