Jury Verdict for Everlight Knocks Out Nichia Patents

 

A previous post discussed the declaratory judgment complaint (Everlight-Nichia Complaint) Everlight Electronics filed against Nichia in federal court in Michigan in April 2012.

Everlight sought declaratory judgment of non-infringement, invalidity, and unenforceability due to inequitable conduct of two patents owned by Nichia:  U.S. Patent Nos. 5,998,925 entitled “Light Emitting Device Having a Nitride Compound Semiconductor and Phosphor Containing Garnet Fluorescent Material” (’925 Patent), and 7,531,960 entitled “Light Emitting Device with Blue Light LED and Phosphor Components” (’960 Patent).

Everlight suffered a setback later that year when the court granted Nichia’s motion to dismiss the inequitable conduct claims.

However, the Taiwanese company scored a big victory recently when the Michigan jury unanimously found multiple claims of the ‘925 and ‘960 Patents invalid.  More particularly, claims 2, 3 and 5 of the ‘925 Patent were found to be invalid due to obviousness, claims 2, 14 and 19 of the ‘960 Patent were found to be invalid due to obviousness, and claims 14 and 19 of the ‘960 Patent were also found invalid for lack of enablement.

The jury declined to find claims 2, 3 or 5 of the ‘925 Patent to be invalid on the additional enablement ground.

While this is an important win for Everlight, it is just one battle in a sprawling patent war between these two LED rivals.  The litigation dates back to 2005 when Nichia first targeted Everlight for patent infringement and extends to various venues around the world.

Nichia has sued an Everlight customer in a Tokyo District Court asserting the Japanese counterpart to the ‘960 Patent (Japanese Patent No. 4350094).  Nichia also filed suit against Everlight in Germany asserting the European counterpart to the ’925 Patent (European Patent No. EP 0 936 682).

In addition to this DJ action, Everlight has filed a number of reexaminations proceedings targeting Nichia’s LED 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.