Nichia Calls Seoul Semiconductor’s Spin of Infringement Verdict False Advertising

Back in January of 2006, Japanese LED manufacturer Nichia sued Seoul Semiconductor (Seoul) for infringement of four of Nichia’s design patents (design patents differ from ordinary patents in that they protect only the ornamental features or configuration of a device; a design patent generally contains only drawings and minimal written text). The asserted patents included D503,388, and the accused device was Seoul’s 902 series LED, which is used in liquid crystal display (LCD) back light units in consumer products such as cell phones. In November of last year, a jury found that the Seoul device infringed all four design patents and that the infringement was willful.

In the days immediately following the verdict, Seoul put out a series of press releases that stretched the bounds of spin. One was entitled “Seoul Semiconductor Has Substantially Prevailed at U.S. Design Case” and stated: “Seoul Semiconductor vindicated that, after almost two years of litigation, the sales of its side view LED 902 are actually non-infringing and that it has substantially prevailed in this litigation.” Two of the press releases were uploaded to the NEXIS online information service.

Last month Nichia sued Seoul for false advertising and unfair competition in connection with the press releases. The complaint, filed in Los Angeles, asks the court to stop dissemination of the press releases and any other false or misleading statements about the infringement suit or the infringing devices. Nichia also requested that the court order Seoul to put out a corrective press release admitting the prior statements were wrong and that its products are infringing. To prove false advertising, the plaintiff must show that the challenged statement is either literally false or, though literally true, is likely to mislead consumers. It’s hard to imagine the court won’t find Seoul’s statements at least misleading. 

There appears to be no end in sight to the bad blood between these two companies: Nichia has also sued Seoul for defamation in Korea for the false statements, Nichia has brought another patent suit against Seoul in Korea, alleging that Seoul’s Z-Power LED P9 Series white LED products infringe one of Nichia’s Korean patents; and Seoul has sued Nichia in the Eastern District of Texas for infringement of a patent covering a semiconductor layer.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.