24 Apr 2012
After Nichia launches a lawsuit against its Taiwanese rival in Germany, Everlight seeks damages from Michigan court.
Nichia, regarded as the world’s largest maker of white LEDs by sales, kicked off the new round of litigation after a recent court victory in Germany. On March 29, a Düsseldorf court ruled that Harvatek, another Taiwanese LED maker, had infringed the European counterpart of Nichia’s US patent 5,998,925 (the ‘925 patent).
Issued in 1999, that patent covers the use of fluorescent YAG phosphors to convert blue light from a gallium nitride (GaN) chip into white light suitable for lighting applications, and has formed the basis for a large number of Nichia’s previous lawsuits.
Having prevailed against Harvatek, Nichia then filed a similar suit in the same court against Everlight on April 18. But Everlight has immediately responded with its own suit, in collaboration with the US-based optoelectronic component maker Emcore.
These days, Emcore is best known for its fiber-optic modules and solar cells, but the company has a long history in developing compound semiconductor devices and manufacturing equipment. It owns US patent 6,653,215 (the ‘215 patent), which relates to a metallization step that produces an n-GaN contact with a gold termination.
Everlight is the exclusive licensee of that ‘215 patent, and along with Emcore it is now asking the Michigan District Court (the local jurisdiction for Nichia’s US subsidiary) for judgments in its favor, including an infringement ruling, and the award of damages.
“Systematic and aggressive”
“Nichia has been aggressively pursuing Everlight and Everlight’s customers through litigation in various forums around the world, including Japan, Germany and Taiwan,” stated Everlight in its court filing. “For example, in October 2011, Nichia initiated an action against an Everlight customer, Tachibana Eletech Co., Ltd, in the Tokyo District Court.”
The company adds that its Japanese rival – which has a long-standing reputation as a highly litigious operator – has threatened further action over several patents against other customers, but also points out that a Taiwanese court ruled in Everlight’s favor against Nichia last November.
“Nichia’s systematic and aggressive pursuit of Everlight, Everlight’s customers, and other third parties in the LED industry through litigation has created a substantial and immediate dispute,” continues the Everlight lawsuit.
The ongoing spat between the two manufacturers is certainly keeping its respective lawyers and various patent offices busy. According to Everlight, more than 20 patent re-examination or opposition proceedings are pending in a variety of jurisdictions. As well as the ‘925 patent, these cases typically relate to Nichia’s US patent 7,531,960 (the ‘960 patent), which also relates to phosphor conversion.
Everlight says that Nichia infringes Emcore's ‘215 patent in a number of products that it sells in the US, for example in residential lighting, street light and spotlight applications. It wants the Michigan court to declare that Nichia is infringing the ‘215 patent while also declaring both the ‘925 and ‘960 patents invalid.
“Everlight is entitled to a declaratory judgment that the ‘960 patent [and the ‘925] patent is unenforceable due to Nichia’s fraud and inequitable conduct before the US Patent and Trademark Office,” it says.
The tit-for-tat actions are a throwback to the early days of white LED commercialization, when virtually all of the major manufacturers were at legal loggerheads. Following widespread licensing, an uneasy peace has broken out, although recent precipitous drops in the average selling prices of LEDs have eroded the margins previously enjoyed by most manufacturers – but particularly those in Japan, the US and Germany.
The new actions suggest that at least some of those manufacturers may be seeking to protect their profit margins and support prices, just at a time when the solid-state lighting market is expected to take off.