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Former IPG Photonics Consultant Sues over Fiber Invention

Photonics.com
Aug 2013
By Melinda Rose, Senior Editor

OXFORD, Mass., Aug. 26, 2013 — Armen Dallakian, a former consultant to IPG Photonics Corp., claims that he is the inventor of a simple, highly effective technique to align light beams as they pass from one fiber optic cable to another at a coupler or switch, and that the technology was misappropriated by IPG.

Dallakian is demanding a jury trial in his civil complaint, filed Aug. 5 against IPG in the US District Court for the District of Massachusetts.

He claims in the lawsuit that he filed a provisional patent application in March 2008 describing the physics and geometry involved in his fiber-coupling invention, in which an inexpensive commercially available mirror mount could be adapted for use as a high-resolution X-Y positioner in a fiber coupler or switch.

Dallakian states that he disclosed his invention to IPG in confidence in 2007 during his consultancy with the company. Before his disclosure, he alleges, IPG was paying thousands of dollars for couplers and switches from its supplier. The devices also were “difficult to use, and their housings were bulky,” he says.

In late 2006 and early 2007, he alleges, he had discussions with IPG about possible collaboration on optomechanical and optical components and subassemblies, and although offered a staff position, chose instead to consult as an independent contractor. On several occasions after that decision, Dallakian says, the company attempted to get him to transfer his intellectual property, to which he refused.

In the first few months of his consultancy, which began April 1, 2007, Dallakian says he worked on technology to improve IPG’s production of advanced fiber collimators. After that project was completed, the company’s high-power laser product line manager asked for his help in refining the design of its high-power fiber-coupler prototype.

According to the lawsuit, Dallakian “learned quickly that modification of [IPG’s] design would be futile and that his own fiber-coupling invention could be successfully used in a coupler to substantially reduce its bulk and cost.”

Dallakian states that he disclosed his system to IPG with the expectation that the company would license it, and that within weeks he had successfully tested a coupler using his invention and had built a prototype that was tested at IPG’s facilities in the US and Germany.

He says he built five prototypes for field testing before ending his consultancy with IPG in February 2008 for health reasons, among others. Shortly after the first prototype demonstration, Dallakian alleges that he was approached by IPG’s patent attorney about filing a patent on the invention. He says he refused because the coupling was his own invention, but that he offered to license it to IPG.

While searching the US Patent and Trade office website in September 2011, Dallakian says he discovered IPG’s application for US Patent No.8,014,641 (’641 patent), a beam coupler assembly for a fiber laser, that was issued in July 2010. The company had three other patents that built on that initial one issued between 2010 and 2012. None credited him for the invention, Dallakian says.

He subsequently discovered that, since 2008, the company has “sold thousands of couplers and hundreds of switches” based on his work and has not paid him any royalties.

Through the suit, Dallakian says he is seeking to correct the ’641 patent by having himself named the inventor and wants an injunction to keep IPG from using his invention, or derivatives of it, without his authorization. He also is seeking compensatory and other damages of an unspecified amount, double damages for misappropriation of trade secrets, treble damages for unfair trade practices, and payment of his attorneys’ fees.

In its quarterly filing with the Securities and Exchange Commission, IPG acknowledged the suit, saying, “We have not answered the complaint. ... We intend to vigorously contest the claims against us.”

Reached for a comment, IPG Photonics Marketing Communications Specialist Beth Cohen told Photonics Media that the company does not comment on ongoing litigation.

IPG settled two patent suits in 2007 and one in 2010. Following a federal jury trial in 2011, it won a patent infringement suit filed by Imra America Inc. (See: Jury Rules IPG Did Not Infringe Upon IMRA Patent) The two companies are still engaged in patent suits in Japan and Germany.

IPG Photonics reported a 22 percent increase in revenue for the second quarter of 2013 compared with the same period last year. It posted a Q2 profit of $41.7 million, or 80 cents a share. In June, the company appeared as No. 5 on Forbes’ “Fast Tech 25” list of the fastest-growing tech companies of 2013, behind LinkedIn, Facebook, Apple and 3-D Systems, a maker of 3-D printers.

For more about IPG, visit: www.ipgphotonics.com 



GLOSSARY
coupler
1. In color development, the chemical that combines with certain by-products of the development procedure to form a dye. 2. Device for distributing optical power among two or more ports. 3. Device for coupling optical power between a waveguide and a source or detector, and thus sometimes interchangeable with a connector.
optical component
One or more optical elements – typically cemented together - in an optical system that are treated as a single group; e.g., a beamsplitter, or a cemented doublet or triplet.
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