ITC Ends Rothschild LED Patent Infringement Investigation Against Xiamen

usitc_banner2.jpg 

In a previous post, I wrote about the U.S. International Trade Commission’s (ITC) investigation of six companies based in China and Taiwan, prompted by a complaint by retired Columbia University Professor and LED innovator Gertrude Neumark Rothschild.  In the complaint, Rothschild asserted infringement of U.S. Patent No. 5,252,499 (‘499 patent) relating to LED manufacturing methods.

The Notice of Investigation named Chi Mei Lighting Technology Corp., Tekcore Co. Ltd., Toyolite Technologies Corp., Tyntek Corp., Visual Photonics Epitaxy Co. and Xiamen Sanan Optoelectronics Technology (“Xiamen”).

The ITC recently let the investigation against Xiamen come to end when it ruled that it would not review the decision of an adminstrative law judge (ALJ) to end the investigation (xiamen_order.pdf).   The ALJ’s decision followed Xiamen’s request to terminate the investigation in view of a proposed consent order.

In the consent order, Xiamen, without admitting infringement or validity of the ‘499 patent, agreed not to import LED and laser diode chips that allegedly infringe the ‘499 patent.  The consent order also provided that it would be nullified if the ‘499 patent were to be held invalid or unenforceable in a final decision by any administrative or judicial body.

The ‘499 patent is directed to methods of making LEDs capable of emitting short wavelength (green or blue) light.  The patent addresses 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.

Rothschild has aggressively asserted the ‘499 patent and U.S. Patent No. 4,904,618 in recent years.  Last year Rothschild filed a complaint in the ITC naming more than 25 respondents, including electronics giants Hitachi, LG, Matsushita, Motorola, Nokia, Samsung, Sony and Toshiba.  At least eight companies have taken licenses to her patents.

Eric Lane Avatar

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.