News

26 May 2009

 

Court rejects Epistar appeal against ITC ruling on Lumileds patent

On 22 May, the US Court of Appeals for the Federal Circuit issued a ruling that rejected the appeal by Epistar Corp (Taiwan’s biggest LED chip maker) concerning the Washington DC-based International Trade Commission's interpretation of the claims in US Patent 5,008,718, which is owned by Philips Lumileds Lighting Co of San Jose, CA, USA (the world’s biggest maker of power LEDs used in cars, cameras and general lighting).

Last May, the ITC determined that Epistar’s AlGaInP-based omni-directional mirror adhesion (OMA), metal-bonded (MB) and glue-bonded (GB) LEDs (and next-generation OMA II, MB II and GB II LEDs), as well as other, third-party products (packaged lamps containing the LEDs and boards consisting primarily of arrays of such packaged lamps), infringe patent 5,008,718, concerning Lumileds' invention of a transparent semiconductor window layer within the chip structure that laterally spreads current away from the metal contact, yielding brighter light emission (used in Lumileds’ AlInGaP LEDs since the early 1990).

In September, the appeal court denied Epistar’s request to stay enforcement of the ITC’s limited exclusion order (which came into effect last July) prohibiting import of the LED products into the USA.

The appeal court has now confirmed the ITC’s ruling that Epistar infringes the patent, says Lumileds.

The appeal court also upheld the ITC's decision that “Epistar (as a successor to UEC) may not contest validity of the ’718 patent with respect to the UEC products that it inherited in the merger” between Epistar and UEC (in 2005).

However, the court overturned the ITC’s ruling that Epistar could not contest validity of the patent with respect to other products made by third parties (i.e. Epistar’s customers), when none were named as respondents in the patent lawsuit .

Lumileds says that a change in the law after the ITC’s decision called into question its long-standing practice of issuing limited exclusion orders that bar importation into the USA of downstream products manufactured by third parties not named in the case. The appeal court has therefore vacated the LEO and remanded the case back to the ITC for further proceedings.

Lumileds had earlier filed a petition with the ITC requesting that the LEO be converted into a general exclusion order that, even after recent changes in the law, would still bar importation of the downstream products.

Epistar claims that the appeal court’s decision now opens the way for it to invalidate the ’718 patent (which, in any case, is due to expire on 18 December). The firm says that it has notified the US Customs and Border Protection of the appeal court’s decision and order vacating the LEO.

Epistar adds that it now aims to proceed with its action against Lumileds in the US District Court for the Northern District of California for breaching the terms of an agreement between Epistar and Lumileds in July 2004 to settle a dispute over whether certain OMA products infringed Lumileds’ patent, whereby Lumileds agreed not to sue Epistar for infringement based on the OMA products and granted a license to Epistar to make, sell, use, offer to sell and import AlGaInP absorbing-substrate LEDs. However, during last year’s ITC investigation, Lumileds alleged that Epistar’s OMA products infringed the patent. Epistar’s complaint to the appeal court therefore claimed that the assertion of the patent against the OMA LED products was a violation of the terms of the 2004 settlement agreement.

Nevertheless, Lumileds says it remains confident that any further invalidity challenges by Epistar to the ’718 patent will be rejected, on the basis of rulings of US District Court judge Claudia Wilken of the Northern District of California in an earlier case against UEC granting Philips Lumileds summary judgment on multiple different validity challenges to the patent claims.

Lumileds reckons that the appeal court’s confirmation of Epistar’s infringement of patent 5,008,718 paves the way for success in a further pending lawsuit against Epistar (before judge Wilken in the US District Court) asserting infringement of not only the '718 patent but also two other patents.

See related items:

Epistar sues Lumileds for breach of settlement agreement

Lumileds refutes Epistar’s claims of US Customs clearance for Phoenix and Aquarius LEDs

Appeals court denies Epistar’s request for stay of ITC exclusion order

Search: Epistar Philips Lumileds LEDs AlInGaP

Visit: www.cafc.uscourts.gov/opinions/07-1457.pdf

Visit: www.philipslumileds.com

Visit: www.epistar.com.tw