Legal fundraiser for defense against Way Too Cool UV flashlight patent

A patent troll, Way Too Cool LLC has a patent they claim covers putting a static filter in front of a UV LED in a flashlight. While I don’t think the text of the patent actually supports that, the language they use is (deliberately, I believe) confusing. If the text does support such a claim, it’s absurd given Wood’s glass was invented in 1903.

This patent troll has bullied Simon of Convoy into not shipping his best UV flashlights to the US, and is suing Engenious Designs, a small hobbyist-owned company that created a buck-driver C8 design using a UV LED and ZWB filter.

Here is a fundraiser to help Engenious Designs and other hobbyists fight the lawsuit and get the patent invalidated. I’m not involved in any way - I’m just sharing because I think patent trolls deserve to burn.

This is garbage. I didn’t actually know there were such things as patent trolls, but now I do. I can’t imagine this will hold up in court, but I’ve seen stupid things happen before.

Moth..f.....er!!!

A lawsuit has been filed

2:21-cv-02364-HLT-ADM Gardner et al v. Engenious Designs LLC
Holly L. Teeter, presiding
Angel D. Mitchell, referral
Date filed: 08/20/2021
Date of last filing: 08/23/2021

Rhett Peterson/Engenious Designs has been sued by Bill Gardner/WayTooCool with a patent claim that many believe is invalid based on prior art. John Dean who sells UV flashlights to the Great Lakes Fluorescent Sodalite Hunters community has been threatened with the same patent lawsuit. Many of us feel that a claim against any defendant with this patent is an action against all of us in this small but enthusiastic fluorescent mineral community. But the courts and the Patent Office must decide the legal outcomes, not us. Defendants will have to pay $30K to $50K each to defend themselves/countersue, and if a case gets complicated or extended, then the fees will grow to potentially $100K to $150K.

While Rhett engages with a lawyer to fight the actual subpoena and case brought against him, John Dean is going to file a claim with the US Patent Office to formally invalidate Bill Gardner’s patent # US778175 B2. John will also incur significant fees to go through this process - upwards of $20,000. John’s action may put a stay on Rhett’s case, or it may not. Either way both Rhett and John will be incurring significant costs to fight and attempt to invalidate the WTC patent.

Here is some background I wrote up a year+ ago for those interested:

Patents and 365nm UV flashlights

(This post is my personal opinion. I am not posting as a representative of the FMS. I am not a patent attorney. I am not encouraging anyone to infringe on any valid patents. Please do your own research and consult with your own attorney. I am only stating facts (and some opinions) that I have discovered so that the public is aware of them and can make informed decisions.)

Way Too Cool has a patent for wave transforming filters – far different from colored bandpass filters. They have been claiming that this patent also covers colored glass bandpass filters (like ZWB2 and Hoya). This has caused severe problems for our hobby by preventing R&D and suppressing DIY discussions, while WTC has not designed and produced any viable LED products of their own. They even copied an open-source design (the FyrFly) , then made and made this statement on their website:

“This product was inspired by Mark Cole [that’s me]. Way Too Cool asked the Convoy manufacturer to make a REAL CONVOY flashlight based on Mark’s design. Mark modified a Convoy C8 flashlight by installing a UV LED and a filter. Mark then open-sourced the design. The problem with Mark open sourcing this flashlight design is that the use of the filter in the UV LED flashlight is illegal infringement of the patent and telling everyone to make their own is also illegal infringement. Making and selling filtered UV LED flashlights without a license to use the patent is illegal.”

The use of a colored glass filter in any kind of UV light, including UV flashlights, is well known and documented. I made one and used it as early as 2004 on my 2nd trip to Greenland (well before the WTC patent). I told WTC about this flashlight I made and he proceeded to start selling a similar light. Although I am not a patent lawyer, I do have common sense. My opinion is that this is “prior art” and the WTC claims are invalid, no matter how they try to twist the wording of the patent. WTC is acting as a patent troll (look it up). This is my opinion. I do not manufacture or sell flashlights.

But – patent law being what it is, there are all kinds of threats about lawsuits being bantered about. Apparently a lawsuit by WTC/Gardner was filed naming Engenious Designs, the FMS, me personally, this FB group, along with others – but was never served; I think the court rejected it for some reason; new paperwork is reported to be in the works. WTC is proactively shutting down imports from China of these lights by threatening action. But new ones pop up almost daily. I feel that this is a great disservice to our hobby. I believe WTC is acting as a patent troll, misstating their patent to force people to pay licensing fees, or to stop designing and selling products.

Prior Art

Prior art, in most systems of patent law, is constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art or would have been obvious from what has been described in the prior art, a patent on that invention is not valid. I did some research into prior art using colored glass bandpass filters and came up with this documented evidence of prior art (documenting the proof was the problem, we all know it’s prior art – this clearly documents the prior art in writing):

As early as Sept. 2000 (far prior to the WTC patent) Don Klipstein, a well-known flashlight enthusiast, published the use of a bandpass filter (Wood’s Glass) with Nichia UV LEDs on his website - Don's homepage!. Further investigation showed that he filed a couple of patents mentioning the use of these filters in flashlights years before the WTC patent was filed. This clearly established the prior art.

I contacted Klipstein and this was his reply:

“As for a patent disclosing an LED flashlight intended to cause fluorescence of materials and having a filter that blocks wavelengths longer than the wavelengths used to cause fluorescence: You found the Canadian one. The original US one is 7,214,952. The part about adding a filter is in the Summary of the Invention and in the part of the detailed description for Figure 5 that mentions the lens 507. This patent was filed July 7 2004. It is based heavily on Provisional Application 60/481,986, filed February 1 2004, and I believe that provisional application mentions use of a filter to block LED wavelengths longer than the ones desired for causing fluorescence.”

Further, he proceeded to give me (and the hobby) permission to use his “invention” saying that the use of filters would not infringe on any of his patents (quote below):

“I have no problem with you making use of any technical material disclosed in patents where I am an inventor if that is done in ways not infringing on claims in them that are still in force. I expect that LED blacklight flashlights with filters and that are useful for causing fluorescence of rocks/minerals at least generally won’t infringe on any patents where I am an inventor and that are still in force. (The 22 US patents having me as a named inventor are listed at http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2….)”

My opinion is that no patents specifically cover the use of bandpass filters, even Klipstein’s. They are common knowledge and any patent claiming such would be invalid based on prior art. But the Klipstein patents clearly document this prior art and, even if one were to accept the WTC claim that their patent covers bandpass filters, this published prior art negates those claims.

Why am I posting this? LEDs are the future. Way Too Cool is restricting R&D into this area, and artificially driving the price of our flashlights to ridiculous levels. My personal opinion is that WTC is simply stretching the wording of their patent and acting as a patent troll by saying that it covers bandpass filters. I feel this is invalid, if simply only because of prior art (ignoring the obvious technical reasons such a claim is invalid). I want to see serious development of UV flashlights, along with fair pricing.

Consult your own attorney – I am not an attorney.

Oh, good to see a dedicated thread up now. I hope it’ll be updated for those of us not doing facebook…interested to follow along.

I hope everyone doesn’t get pitchfork riled up about this because there’s clearly a lot more to it than is being bandied about (or that has been bandied about for several years now). I really don’t like it any more than anyone else does, but so far the points I’m seeing mentioned aren’t necessarily the crux of the matter, but this is really stuff to discuss with experienced patent attorneys first, then experienced patent litigators second.

copypasta my comment from one of the other threads where pirateo40 posted:

“Ok. Well…there’s a whole lot to this stuff and it would take digging into the application and award/examiner’s opinion and such. It’s been awhile since I looked at this and I’m not IP expert but my understanding was that it was the sale-in-combination thing that he got. Not the invention or use of the lenses. This is where legit and experienced patent attorneys are worth their weight in gold. Not just someone experienced in applications and who knows the system, but those who have been through litigating in both the federal system (where the cases generally go) and in the patent system when it comes to challenging validation and such. A lot of “regular” attorneys even if they’re experienced in the usual state or county level courts will get in over their heads in federal court, let alone the separate world of patent law. If it’s not been done, I would absolutely meet with one or more patent attorneys to get their take on this…give them all the information you have but you still may not get too far without hiring them to start the deeper dive into the opinion and details.

I don’t think this guy fits into the “troll” category but I definitely understand where you (and all of us that have been cheesed by this nonsense) are coming from. Unless there was really some gross error by the examiner or other technicalities afterwards by the holder/defender, it’s extremely difficult to get things undone, if it’s feasible at all. If there is standing and an avenue, it’s likely to drag on for a few years at least.

I’ve read through I think three of his previous suits, and certainly noticed the shift in products in the marketplace over the last 2-3 years. I’ve wondered if he’s pursuing the many little Chinese sellers on amazon and ebay…there seem to be tons of “infringing” lights still being sold and advertised. That’s not an easy route to pursue, though, and he’s doing what he should with the easy-pickings sellers here domestically (I’m not crazy about that “aggressively defend” part of patent law but it’s a necessary and somewhat understandable requirement). When I see sellers like Convoy and Sofirn and Lumintop honoring the law here whether that’s on amazon or aliexpress and not allowing shipment of those lights to this country, it gives me a good-but-still-irritated feeling…but then you see all these others just sort of flipping him/us the bird and that’s equally irritating.

Anyway…it’ll be interesting to see how this plays out. I’d certainly like this to disappear but that decision will be an educated one in a realm above my pay grade. :)”

One additional friendly note….maybe be a little cautious with the words used and whether any words are used at all in public forums. Given his history and given litigation in general, especially once it is in motion, some things that we might consider free speech or harmless speech can easily be used/misused/twisted around in ways that are not in your favor, and believe me, once a party’s online presence is known, people will be observing regularly.

Regular occurrence, short lived. You won’t be able to see anything on Pacer anyway unless you register and pay. There are some sites that may make the docket available for free viewing and sometimes some of the filed pleadings (justia and law360 maybe but there are others with a better chance….googling case/district will bring those sites up if they’ve listed it).

Found the court filing here:

https://mksupport.s3-us-west-2.amazonaws.com/litigation/files/D/53/70/KansasDistrictCourt_2-21-cv-02364_complaints.pdf

The patent claim number 1 is for a portable battery powered LED flashlight that creates a UV beam with one or more “wavelength transforming materials” over the lens.

I’ll do my best to keep y’all updated. This issue is currently being discussed on three platforms: Facebook in the Fluorescent Mineral Group (full text of the lawsuit is posted there), on reddit/r/flashlight, and here. I have a blog post about it on Naturesrainbows - https://www.naturesrainbows.com/post/save-our-hobby-donate-now

I have been intimately involved since day 1 on all topics here. The patent was originally filed to cover sheets of phosphor inserted over a UVC fluorescent light. The phosphor sheets would transform the 254nm wavelength to 312nm or 365nm. He subsequently got a patent for the same thing covering UV LEDs. Only later did he realize that the market for plain jane UVA lights would be big, without using the phosphor sheets to transform wavelengths. He got some twisted wording in the patent that allows him to make his current claims, IMHO without merit. His claim is that the filters get hot and emit IR - thus wave transformation.

But that technical argument is how patent lawyers earn the big $$$. I think it is much simpler. All boils down to prior art. The challenge is proving it. In this case we have a patent, dated long before his, which describes the use of bandpass filters with LED flashlights, clearly establishing the prior art which we in the mineral hobby have known for decades.

We’ll see I guess. Good news is that a bunch of people are backing us (https://gogetfunding.com/uvunited/#) and we can finally get this tested in the courts. #UVUnited

The “technical argument” is just part of the process, depends greatly on the matter in question. The big bucks - well the entire process is quite expensive, all around - happens when the patent examiner issues challenges, so to speak, to which the applicant must respond before anything proceeds. That can happen zero, once, or a dozen times in the process and it’s not uncommon for it to take several years for an application to be awarded, and then you have to actually get the patent itself. Really need an attorney to do all of that (or rather, it’s stupid not to).

Prior art may or may not matter. Very complicated area and like much of patent law it’s clear as mud sometimes.

Y’know what I would love to see? For the suppliers of WTCs hosts to just quit selling to him. I suppose the way things are that some other seller or manufacturer would step in to make a buck, but it’d be great if they just flipped him the financial bird. I still don’t think he qualifies as a patent troll, but this patent is one of those shady things to do. I’ve seen some other examples - actually worse - and the end result was that entire communities of hobbyists basically got shafted, and in one of those the patent holder never made any money or tried to make any money with it anyway. Stupid. But those patents stood firm…unpleasant but solid reasons. This is where the concepts of IP law end up falling short of the original intent of the system.

Looking forward to the third and subsequent pleadings of substance. The initial filing and first response are just boilerplate stuff.

What really is a wavelength-transformation material? i understand about the photoelectric effect of UV on metals, but what is the physics of WT, or is there any? How does it compare with just a filter that blocks certain wavelengths?

The patent presents no mathematical theory, no physical theory, no examples, basically nothing other than this guys made-up theory that he can transform UV from one wavelength to another…?

Interesting rock photos at Engenious,

That’s definitely important advice for people involved in the suit. I’m not, but for my part, I’ll clarify what I mean by “patent troll”. Some use that term strictly for non-practicing entities, which WTC clearly isn’t (they sell UV flashlights with filters), while others use it less precisely, to refer to anyone they believe is misusing the patent system. I used it in the latter sense, though maybe I should say “patent bully” or “patent abuser” next time so there can be no confusion.

I’ve been pitchfork riled up about this since I first heard of it. I’ll explain in purely colloquial, common-sense terms why. The technicalities of patent law may differ from my interpretation, but I think anyone who exploits those technicalities in an offensive manner as WTC is doing is a jerk, and jerks deserve to be fed (metaphorically) to lawyers.

  • Sticking a visible light filter on a UV light that emits too much visible light is obvious to anyone who knows such filters exist. It was obvious to Gardner just as it would have been to Robert Williams Wood had someone shown him a UV flashlight in 1903 after his invention of Wood’s glass.
  • Using a wavelength-transforming phosphor on a UV light source, assuming such a phosphor already existed would also be obvious. That’s how fluorescent lights make white light, and both remote and on-chip phosphors over blue LEDs have been used to emit white light before the patent was filed.
  • The facts that the light is powered by a battery or the light source is a UV LED are irrelevant to the obviousness of putting a filter over it to remove unwanted purple.
  • The patent describes a variable filter, which have been commonly used for CMY mixing in entertainment lighting for decades. Using a gradient of material that passes UV instead of cyan, or even a variable concentration of quantum dots that fluoresce to produce a variable filter is also obvious.
  • The language of the patent is deliberately confusing. I’m neither a lawyer nor any other kind of expert on patents, but I’ve read a few. None have been nearly as hard to understand as this one.

Just copying from my above post to make sure I explain it better: The patent was originally filed to cover sheets of phosphor inserted over a UVC fluorescent light. The phosphor sheets would transform the 254nm wavelength to 312nm or 365nm. He subsequently got a patent for the same thing covering UV LEDs. Only later did he realize that the market for plain jane UVA lights would be big, without using the phosphor sheets to transform wavelengths. He got some twisted wording in the patent that allows him to make his current claims, IMHO without merit. His claim is that the filters get hot and emit IR – thus wave transformation.

A UVC fluorescent bulb has no phosphors inside. The bulb is clear and you see the mercury vapor that excites the phosphors on the white bulbs you are probably familiar with. The bulb is made of quartz so it passes the 254nm UVC. The patent refers to a phosphor sheet (teflon impregnated with phosphor powder) that is placed over the UVC bulb. The phosphor “glows” at a different wavelength (312nm MW UVB for example if that type phosphor is used) - this is the wave transformation.

In the photo of the rocks above you see a piece of tugtupite from Greenland. It has the unique property of responding to different wavelengths of UV light with different colors - red 254nm SW, pinkish 312nm MW, and salmon @ 365nm LW.

On reading realized I’m still not clear. Basics: all fluorescent bulbs work the same inside - mercury vapor with a peak of 254nm (UVC). In your typical fl bulb the inside is coated with a white phosphor. This phosphor glows in reaction to the UVC. The “color” it glows depends on how it is made. There are cool white phosphors, yellow phosphors, green, etc. There are also phosphors which glow in the UV range - 365nm UVA and 312nm UVB (and lots more in between). A bulb coated with a UV phosphor is usually made from UV transparent glass or quartz. THus the UV get out.
From this you can see that you can take a bulb which is not coated with any phosphors and illuminate a phosphor sheet outside the bulb. This sheet “transforms” the wavelength of the bulb.
Story the same for UV LEDs.
But a bandpass filter does not transform the wavelength, it just blocks visible light. His argument is that the filter gets hot, thus emitting IR - a “transformed” wavelength. Completely useless, silly, and obvious - in fact, unwanted. All glass in front of an LED does that.
Hope this helps….

I’m gonna go give you some reddit gold!!! Great analysis!

Hi Mark,

This really stinks that you and everyone affected on your side of the issue/lawsuit has to deal with this.

Like everyone else, I know virtually nothing about patent law, so I'm curious, when WTC filed for their patent, were you made aware and/or given an opportunity to contest the patent filing?

No, I have no idea how anyone would contest a patent, don’t know much about them. Just common sense and what I google ;-).

You don’t but if you have interest as a holder of another patent or related material then that will (should) come up in the search done before application. That’s another thing that should be done by an experienced attorney (or an IP firm at least) and can take months to do thoroughly. If something somehow slips through and you notice it later then you go through USPTO and work it that way. Someone who has no real standing…not sure how that might (or not) work but that’s all through USPTO, not the courts.

Bottom line will probably end up being that defendant was in violation, and if (as it appears) they did so knowingly and continued to do so knowingly, then they’ll get the hammer as those in previous cases did. The law may not be right or may not seem right, but as long as it’s the law then you need to follow it and work other ways for change. Basically the way our whole civil society is set up and supposed to work. The bad thing here is that it’s one of those cases where punitive costs are exponential if it’s proven that the act(s) were willful. Ignoring a demand letter or worse…that’s enough to make you end up paying 3-5 times more than what you might have initially. Ultimate responsibility is to research first, adapt to issues that come up (such as being made aware of a law/restriction)…….etc. As a business owner, manufacturer, producer….you fail at those things and you end up paying dearly unless someone chooses to be extra kind to you.

I do hope that if there’s something of merit that the examiner’s opinion and award can be challenged later in USPTO. One of the things that makes this a little extra difficult is the type of science/physics involved. Mistakes or misunderstandings can be made by the office, by the applicants, and even in past awards/literature/data that may erroneously form a base. Even complex mechanisms or parts of larger mechanical works are much easier to address, and for the most part so are all of the electronics involved these days. I’ll have to go back and sift through his stuff again but I’ve been under the impression that his award was based on something other than the mechanics everyone is focused on.

It sure would be nice for the free and creative flashlight market to be that way again totally. Just one more example of some bad apple squelching people for its own benefit and not really contributing anything to the tree…pretty much the same exact thing as I’ve seen before elsewhere and I was a little sad when I first learned of it and started reading the backstory and then docs in his other suits. Sometimes these kinds of guys get too much of a sense of pride to do the right thing, even if they don’t deserve what they think they have.

It appears to me that “Wavelength-Transformation” is a patent-obscuration term for what everyone else calls “Fluorescence”, in which a photon is emitted after an excited electron drops back down to the ground state energy level.

The wavelength of the emitted photon is always longer than that of the photon which caused the excitation (energy is always lost in the round-trip process). So why make up new terms like WT…

see the fluorescence wiki here: Fluorescence - Wikipedia

Typically fluorescence produces visible colored light but in this case he claims to be able to operate within the UV bands to produce non-visible UV fluorescence from UVC to UVB or UVA.

How could anyone distinguish between an optical filter that simply blocks or transmits certain frequencies versus his WT material?

How would a person test or prove that WT is the mechanism that has actually occurred?

Donate it to the fundraiser instead!