The ruling

In a memorandum order in CHM Industries, Inc. v. Current Lighting Solutions, LLC, No. 1:25-cv-01545-GBW (D. Del. Oct. 27, 2026), the court granted Current's motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) (D.I. 11). CHM filed the complaint on December 19, 2025, alleging infringement of U.S. Patents 9,677,754, 9,903,581, 10,571,112, and 11,473,767.

The allegations

As the order summarizes the complaint, CHM alleges that it obtained patents for innovations related to its high mast luminaires and that Current is a direct competitor that also produces high mast lighting systems for roadways, parking lots, prisons, and similar uses. The accused product is Current's Evolve LED Roadway Light High Mast Luminaire (ERHM) and later generations, which CHM alleges Current has offered for sale since at least July 2017. CHM alleges that Current "misappropriated the technology embodied in [CHM's] sample Condor CLED product," that CHM told Current about the '754 patent and its infringement allegation on or about July 21, 2017, and that on November 1, 2018 the parties entered a Settlement and License Agreement that "obligated [Current] to pay royalties to CHM for each sale of a Licensed Product." According to the complaint, CHM told Current in August 2019 that it had not received royalties for sales of the Evolve High Mast with Type V optics, and Current responded in September 2019 that it would not pay royalties on ERHM products with certain optical distributions that it says the agreement does not cover.

Why unpaid royalties did not state an infringement claim

The court noted that CHM's position was that the ERHM was a Licensed Product and that Current's failure to pay royalties on it "constituted unauthorized sale[s]." Current responded that a refusal to pay royalties is not patent infringement. The court agreed with Current. It quoted 35 U.S.C. 271(a), which reaches whoever "without authority" makes, uses, offers to sell, or sells a patented invention, and wrote that "[w]hen a product is covered by a license to the patent, that use is unequivocally an authorized one," citing Intel Corp. v. Broadcom Corp., 173 F. Supp. 2d 201, 228 (D. Del. 2001). If a license has been terminated, the court explained, later use would be unauthorized and actionable as infringement, citing Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191, 197 (2014).

The license gives CHM "the right" to terminate immediately by written notice if Current fails to pay any amount due or breaches the agreement. The court held that termination for cause "is not automatic" and found that CHM's pleaded notice told Current only that it was infringing the '754 patent, not that CHM was terminating the agreement. Viewing the facts as pleaded, the court concluded that the ERHM products were Licensed Products, so their sales were not an unauthorized use of CHM's patents and the action did not meet the requirements of section 271.

A contract question

The court described "[t]he real crux of the dispute" as whether the ERHM products qualify as Licensed Products, which it called "one of contract interpretation, not patent infringement." It said CHM's recourse to recover unpaid royalties "would be to bring a breach of contract claim." The court said that because CHM had not brought or briefed a contract claim, it would not opine on Current's argument that such a claim would be barred by the statute of limitations. It dismissed without prejudice because it could not conclude that amendment would be futile, and it granted CHM leave to file an amended complaint within 14 days.

What to watch next

Watch for an amended complaint within 14 days of the October 27, 2026 order and for any renewed motion to dismiss.