Although, Nichia might be losing ground in its recent patent infringement case against Everlight in Eastern Michigan Courts, the company announced winning two separate patent lawsuits including a joint lawsuit filed by Taiwanese rival Everlight and Emcore. The company has also been dismissed by Northern California Courts as in the patent infringement lawsuit filed by non-practicing entities (NPE) Bluestone Innovation. The full press releases can be found below:

Nichia company officials posing at a press conference in Taipei earlier in March 2015. Left to right: Yuto Iwasa, Assistant Research Scientist, Intellectual Property Dept., Legal & Intellectual Property Division, Administration Unit, Hinori Takagi, General Manager, Intellecutal Property Department, Legal and Intellectual Property Dept., Legal & Intellectual property Division Administration Unit, Katsuyuki Akutagawa, Chief Legal & IP Officer and Company Board Director, Dr. Takashi Sakamoto, Principal Technical Officer, Optoelectronics Products BU., and  Masaki Mukaiyama, Special Consultant and Spokesperson, Nichia Taiwan.(Photo Courtesy of Nichia)

Court Affirms USPTO Findings Emcore/Everlight 215 Patent is Unpatentable

On April 16, 2015, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the United States Patent and Trademark Office's (USPTO) determination of unpatentability of U.S. Patent No. 6,653,215 (the “'215 Patent”) owned by Emcore Corporation (“Emcore”).

The '215 Patent is asserted in the litigation styled Everlight Electronics Co., Ltd. and Emcore Corporation v. Nichia Corporation and Nichia America Corporation, Case No. 2-12-cv-11758 (Eastern District of Michigan), in which Emcore, the owner of the '215 Patent, and Everlight Electronics, its exclusive licensee, asserted the '215 Patent against Nichia. In response, Nichia Corporation filed with the USPTO a Petition for inter partes review (“IPR”) of all of the claims of the '215 Patent (IPR No. IPR2012-00005). As reported in a prior press release, in its Final Written Decision on February 11, 2014, the USPTO held that Nichia had met its burden of proof in showing that all of the claims are unpatentable as “obvious” over several prior publications.

Emcore appealed the USPTO's decision to the CAFC. Oral argument in the appeal was held on April 10, 2015. The CAFC issued a decision that affirmed the USPTO's determination of invalidity of all claims of the ‘215 Patent.

Northern District of California dismisses Nichia in patent infringement case against Bluestone Innovation

On April 20, 2015, United States District Court for the Northern District of California granted the Order Dismissing Defendants Nichia Corporation and Nichia America Corporation (collectively “Nichia”) in the Civil Case No. 3:12-cv-00059-SI. By this Order, the patent infringement case filed by Bluestone Innovation, LLC (“Bluestone”) against Nichia was dismissed with prejudice, in which Bluestone asserted the United States Patent No. 6,163,557 (the “557 Patent”). Other than the dismissal of its defenses and counterclaims without prejudice, Nichia owes no obligations in this dismissal, including any payments to Bluestone.

For nearly five years since the case was originally filed in the Eastern District of Texas by Bluestone’s predecessor and affiliate of Bluestone, Bluestone Innovations Texas, LLC, Nichia has been vigorously vindicating itself throughout the case. Bluestone refers to itself as a patent licensing and enforcement company, which is also known as non-practicing entity (“NPE”). Dismissal of the infringement claim by an NPE without any payment is a substantial victory for Nichia. This case illustrates Nichia’s uncompromising policy against the patent claims lacking merit, even through a lengthy legal battle against an NPE.

The 557 Patent was originally assigned to Xerox Corporation, which later was acquired by Bluestone. The case originally involved a number of LED companies including Epistar Corporation, Formosa Epitaxy, Huga Optotech, Showa Denko K.K., and Toyoda Gosei, among others, as the defendants. Nichia was the only remaining Defendant in the case as of the dismissal. Bluestone has also asserted the 557 Patent in a separate lawsuit against a number of end-users of LEDs, including LG Electronics, Acer, Vizio, Best Buy, among others.