LED innovator and Columbia University Professor Emeritus Gertrude Neumark Rothschild is the sole named inventor on U.S. Patent Nos. 4,904,618 and 5,252,499, directed to methods of making LEDs capable of emitting shorter wavelength (green or blue) light.  Rothschild’s technology has had a major impact on LEDs by making production of green, blue and other short wavelength LEDs more economically viable.  In 2005, she sued San Jose LED manufacturer Philips Lumileds in federal court in White Plains, New York for patent infringement.

Her patents address the problem of “doping” wide band gap semiconductor materials, an essential step in creating adequate conductance for the materials to function as LEDs.  Doping means adding impurities to a semiconductor to increase the number of free charge carriers.  When extra positive charge is added, the resulting semiconductor is called a p-type semiconductor; when negative charge is added, the result is an n-type semiconductor.  In LEDs, a junction is formed between p-type and n-type semiconductors, and voltage is applied across the junction to cause movement of electrons from the negative to the positive material.  As the electrons move from the “conduction band” to the “valence band” (electrons are confined to certain spaces called bands and can be made to travel from one band to another through a gap), the energy they lose is released in the form of light.  The wavelength, or color, of the light depends on the width of the band gap.

Semiconductors with wide band gaps are more difficult to dope because they are more likely to become “compensated,” meaning that the added charge carriers are not accepted and semiconductor resistivity increases.  Rothschild’s patents are directed to methods of doping wide band semiconductors and reducing compensation by introducing extra dopant in concentration with extra compensating species, in some cases atomic hydrogen, and subsequently removing the compensating species.  This technique leaves a greater level of dopant in the host crystal, resulting in high conductivity.

Rothschild recently reached a settlement agreement with Philips.  The terms of the settlement have not been made public, so we don’t know how favorable it is to either side.  But one interesting tidbit about the case suggests that Rothschild may have done well.  In July of last year, the court granted in part Rothschild’s motion for reconsideration of its claim construction opinion (claim construction is where the court interprets the legal scope of the patent terms; this step is critical in infringement cases and can spur settlement).  In the court’s original claim construction opinion, it construed the term “doping . . . with . . . atomic hydrogen” to mean “incorporating atomic hydrogen not produced by disintegration of ambient gases.”  However, during the court hearing on the subject, Judge William C. Conner’s initial reaction to the term was that it didn’t matter how the atomic hydrogen was produced.  Judge Conner found that his limiting construction of the term, based on statements by the patentee during the application process, was in error and revised it to mean “doping with atomic hydrogen (from any source).”  This broadening of the claim term may have helped Rothschild’s infringement case and encouraged Philips to settle.  

IP consultant Nancy Edwards Cronin has an interesting suggestion for the Eco-Patent Commons (see my previous post on this new initiative to share patents having environmental benefits).  In her Strategic Thinking column on Greenbiz.com (which the editors at Blawg Review brought to my attention through this post on Securing Innovation), she recommends expanding the Commons beyond donated patents to include “enabled invention disclosures,” written descriptions of inventions having the same level of detail as patents, inventions which companies wish to practice but do not want to patent because of the expense of the procurement process.  In her article, Cronin explains enabled invention disclosures this way:

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

Adding these disclosures to the mix, she says, would address what she sees as a critical shortcoming of the Commons, i.e., patented technology is no longer “cutting edge” by the time a patent issues because of the lengthy application process in the U.S. Patent & Trademark Office (PTO).  Of course, this observation has ramifications for all patents, not just those in the Commons repository, and she has a point that much patented technology becomes less relevant over time.  But I’m not sure I buy the premise that issued patents become substantially de-valued during the admittedly long journey through the PTO.  Patents often retain their value throughout the patent term and beyond.  Indeed, many patents are successfully enforced against infringers at the tail end of the patent term. 

Whether or not you agree with her argument about issued patents, her idea of adding invention disclosures to the Commons would almost certainly benefit the initiative and its participants by increasing the value and utility of the available green technology.  Of course, no independent or targeted donations to the Commons would be necessary because enabled invention disclosures are by definition in the public domain and available to everyone.  Instead, to make the technology available to greentech firms, it would just need to be made accessible via the Commons.  Broadly, Cronin’s idea could be implemented in one of three ways.  Either companies who publish environmentally-beneficial technology in these disclosures could provide the publication information or citations to the Commons, the Commons itself could monitor the disclosure publications, or the publications could alert the Commons of relevant published disclosures.  However it’s done, I can’t argue with increasing green idea and technology sharing.

In a patent suit I’ve written about before involving LED designs, a judge has denied Seoul Semiconductor‘s motion for a new trial and for judgment as a matter of law to overturn a jury verdict that the Korean company infringed four of Nichia’s design patents (see the patents at issue here, here, here and here).  Seoul had argued (1) that Nichia didn’t prove its infringement case because it failed to show that the similarities between Seoul’s products and Nichia’s patented designs lay in the ornamental elements rather than the functional aspects of the LEDs (design patents only protect the ornamental features of a device), and (2) that Nichia’s patents are invalid because the devices are too small for the design features to be of any concern to consumers. 

In a perfunctory opinion, Judge Maxine Chesney of the U.S. District Court in San Francisco rejected Seoul’s arguments and found that Nichia had submitted sufficient evidence to support the jury’s infringement verdict.  The opinion simply based its findings on “the reasons stated by plaintiff,” which included Nichia’s citations to exhibits and deposition and trial transcripts to support its assertions that it had introduced enough evidence to show that its patented designs are not governed solely by function and that the overall design of Seoul’s products is substantially similar to the patented designs.  Nichia also cited testimony of the inventor and purchasers that they considered the appearance and attractiveness of the LED designs to be important.

Presumably, the next step for Seoul will be an appeal to the U.S. Court of Appeals for the Federal Circuit (the court that hears all patent appeals).  Indeed, one of Seoul’s attorneys described the rejected motion as “an intermediate step between the trial and the appeal” because district court judges rarely alter the trial results.

Compact fluorescent light bulbs (CFLs) use between 60% and 80% less energy than traditional incandescent bulbs and last much longer than incandescents.  Significantly, they can be plugged into ordinary light sockets, so they are an easy way for consumers to reduce energy consumption.  CFLs generally include two main components – a gas-filled tube and an electronic or magnetic ballast.  Electronic ballasts convert low frequency AC power to higher frequencies.  The current then flows through the gas, causing it to emit ultraviolet light.

Ole K. Nilssen is the named inventor on over 200 patents relating to electronic lighting products.  Nilssen sued several defendants, including Wal-Mart, Costco, Home Depot, Ikea and Ace Hardware in U.S. District Court in Chicago for allegedly infringing seven patents relating to CFL electronic ballast technology.  Unfortunately for Mr. Nilssen, who obtained his patents pro se (without the assistance of a professional patent practitioner), he was less than forthright in disclosing relevant information to the U.S. Patent & Trademark Office (PTO) during the prosecution process. 

In particular, Nilssen claimed the right to pay reduced fees reserved for small entities when, in fact, he had entered an agreement to license the technology to Philips Electronics (an undisputed large entity) and had actually licensed some of the applications to Philips.  When a large entity is a licensee, the patent applicant does not qualify for the reduced fees.  Nilssen also failed to disclose to the PTO then-pending litigation with Motorola on related subject matter.  Patent rule 1.56 imposes a duty of candor on the applicant, and patent case law deems such deception and incomplete disclosure of material information during the patent application process “inequitable conduct” that renders any resulting patents unenforceable. 

In a prior lawsuit brought by Nilssen against Osram Sylvania involving the same patents, the district court held a six-day bench trial on inequitable conduct and ruled five of the patents unenforceable.  The U.S. Court of Appeals for the Federal Circuit (the court having jurisdiction over all appeals of patent decisions by the trial courts and the PTO) affirmed.  Last month, in the Wal-Mart suit, the district court granted summary judgment of unenforceability based on the prior inequitable conduct ruling on the ground of collateral estoppel, or issue preclusion, which prevents re-litigation of an issue that has been fully litigated before.  The court confirmed that the remaining two patents (U.S. Patent Nos. 5,341,067 and 6,172,464) were unenforceable because Nilssen’s failure to disclose the litigation and to pay the proper fees had been fully litigated in the Osram case. 

Nilssen shed his patent attorneys because he felt that, knowing his technology better than anyone, he could best draft and prosecute his applications.  However, while he drafted his applications himself, on filing and disclosure issues he should have at least consulted a patent attorney, who would have known to disclose the litigation and pay the full fees.

In a previous post, I wrote about Nichia‘s false advertising claims against Seoul Semiconductor after Seoul was found liable for infringing Nichia’s patented LED designs.  In February, Judge Maxine Chesney of the U.S. District Court in San Francisco denied Nichia’s motion for a permanent injunction, refusing to order Seoul to stop production and sale of the infringing LEDs. 

The court layed out the four-factor test for a permanent injunction (irreparable injury suffered by the patentee, whether monetary damages would adequately compensate for the injury, the balance of hardships of an injunction, and whether an injunction would harm the public interest) but found the first factor effectively dispositive because the lack of harm tipped the other factors against an injunction.  She rejected Nichia’s arguments that its reputation and brand were irreparably harmed and that it lost market share as a result of the infringing activity, noting that Seoul made only two infringing sales in the U.S., and those were made nearly three years ago.  The court found that the purpose of an injunction – to prevent future infringements – would not be served here because the evidence showed that Seoul has no U.S. customers for the infringing LEDS and has ceased production of the products, which are essentially obsolete.

Seoul also filed a motion for judgment as a matter of law, which asks the court to reverse the jury’s infringement verdict, and has requested a new trial.  Because a design patent only protects the ornamental features of a device, the protected features must be primarily ornamental to be patentable, and the patentee has to show that the ornamental (as opposed to functional) aspects of the patented design are infringed.  Seoul is arguing that Nichia did not prove infringement because it failed to demonstrate which features of its LED design were ornamental.  According to Seoul, the features of Nichia’s LEDs are primarily functional – window shape affects light output and the overall shape is dictated by the need to maximize light going into the waveguide - and any similarities with its products are based on those functional aspects, not ornamental features. 

Seoul also asserts that Nichia’s patents are invalid because the LEDs are too small to see and concealed from the consumer throughout the life of the products so that any ornamental features they may have are of no concern to consumers.  According to Seoul, the LEDs are “smaller than a rice grain” and travel from the factory in reels of thousands of units, get installed on a circuit board, and ultimately get buried in a back light unit deep inside a cell phone. 

Although we don’t know what kind of payments Nichia got from two defendants who previously settled or how much it stood to gain from two other LED manufacturers who won on summary judgment, the stark punchline of this case nevertheless points up the futility of patent litigation:  after what must have been an expensive fight, at the end of the day Seoul was ordered to pay Nichia a mere $250 in damages for making just two sales of a now-obsolete product. 

When I mention to other trademark practitioners the concern I discussed in my previous post about the potential descriptiveness of eco-marks passing below the radar of the U.S. Patent & Trademark Office (PTO), they often respond with a shrug that this is standard practice.  That is, if there is an actual or potential descriptiveness problem with a trademark application, it is common to craft the identification of goods or services to make it sound as unlike the mark as possible while still accurately listing the goods or services.

I don’t think this explanation quite captures it though.  If you compare the listings of goods for some eco-marks with those of ordinary marks that were artfully drafted to gain allowance based on being permissibly “suggestive” rather than merely descriptive, it seems like the omission of the “green” component is more than just a matter of zealous advocacy or creative drafting.

For example, here is the listing of goods for the mark LOC-TOP, which got a federal trademark registration (since abandoned) for bottle closure caps:

CONTAINER CLOSURES IN THE NATURE FO (sic) BOTTLE CAPS HAVING A CAP PORTION ADAPTED TO BE SECURED TO A CONTAINER AND A SPOUT MOUNTED ON THE CAP PORTION SO AS TO BE CAPABLE OF BEING ROTATED BETWEEN OPEN AND CLOSED POSITIONS.

A glance at the mark and the identification of goods reveals the fairly simple strategy of the applicant.  The mark consists of two words put together:  LOC (lock) and TOP.  Therefore, the drafter purposely omitted those words from the listing of goods, instead choosing different terminology to communicate the nature of the goods.  Thus, the use of the term “closures” and “caps” instead of “tops” and “adapted to be secured” instead of “locked.”  So it’s clearly a bit of spin or a disguise, possibly even manipulation.  But it nevertheless accurately communicates the nature of the goods without concealing important aspects of the products.

By contrast, here is Clorox’s identification of goods for GREEN WORKS for environmentally-friendly cleaning products (see my previous post here):

Personal care products, namely, hand soap, body skin soap, toothpaste, personal deodorant, mouthwash, essential oils for personal use; non-medicated skin care preparations, skin creams, skin lotions and skin moisturizing creams, bath gel, shower gel, deodorants for personal use and antiperspirant soaps; detergents, namely, dish detergents, dishwashing detergents, dishwasher detergents, laundry detergents, toilet bowl detergents; non chlorine bleach for household use, namely, household and laundry bleach

Here, the drafter hasn’t simply finessed the terminology to de-emphasize that the goods are all natural, environmentally-friendly products.  Rather, the green component, surely an important feature of the products, has been left out entirely.  Apparently, such an omission is permitted by trademark prosecution rules, but I believe it is fundamentally different from the common practice of artful drafting of goods listings to avoid descriptiveness rejections.