Luminara Worldwide, an Eden Prairie distributor of a flameless candle that is popular in the home decor market, scored a significant victory against a large competitor on patent infringement allegations.
In a ruling unsealed Thursday, U.S. District Judge Susan Richard Nelson placed a temporary injunction against the Chinese manufacturer Liown Electronics Co. and several U.S. suppliers that prevents any more sales of Liown's "Illuminaires" candle and recalls candles already in the hands of certain retail suppliers.
Minnesota's Luminara claimed that Liown lifted its flameless candle technology and has been taking sales and market share from the firm since last year.
"In the court's view, Luminara has demonstrated that it is likely to prevail with its patent infringement claim," Nelson wrote in imposing the injunction and recall.
Luminara sued Liown on patent infringement claims last year and requested an injunction to halt sales of its rival's candles until a trial could be held on the merits of Luminary's case. The trial is still pending.
Retailers and home decor specialists who spoke to the Star Tribune said the product is growing in popularity, particularly among high-end consumers. Its lighted, flickering flame-like tongue offers the look of a real candle without the waxy mess and is reusable.
Sections of Nelson's order that deal with sales volume and market size are blacked out, presumably for proprietary reasons. However, the market potential for the candles is considered to be huge.
"It is not insignificant," said Luminara attorney Joseph Anthony.
The flameless candle technology was originally developed by Disney for use in the Haunted Mansion exhibit at its theme parks. It was licensed to a California company named Candella, which eventually was acquired by Luminara.
The companies first sued Liown in 2012 over patent infringement issues after a manufacturing and distribution agreement signed in 2010 fell apart. A 2014 settlement of the lawsuit resulted in a partnership between Luminara and Liown, but that was short-lived and a new lawsuit was filed later that year. Liown has a separate patent infringement lawsuit against Luminara pending before Nelson.
Anthony called Nelson's ruling a signal that "our retailers are protected against unfair foreign competition."
The injunction prohibits Liown from manufacturing, distributing or selling any of the disputed flameless candles to any of Luminara's customers. It also recalls Liown flameless candles from the stores and distribution centers with whom Luminara does business.
In a statement, Liown said: "While Liown certainly respects the court's order, this is preliminary and only narrowly applies to Luminara's customers and certain products. Liown continues to maintain it has acted properly and Luminara is — in fact — the infringer. Liown will continue to defend its patent rights and is confident that when the court hears the full details of its prior invention history, Liown will prevail."
David Phelps • 612-673-7269