Appeals Court Halts Epistar Import Ban

Appeals Court Halts Epistar Import Ban

2009/6/1

Epistar and Philips Lumileds both claim victory after the latest US Appeals Court ruling, with the Taiwanese firm released from a US import ban.

Rival AlGaInP LED makers Epistar and Philips Lumileds each claim to have won victory in the latest round of their intellectual property saga.

On May 22, the US Court of Appeals for the Federal Circuit ruled partly in favor of both companies in a set of disputes surrounding Lumileds' US patent 5,008,718 ('718) patent.

That patent details an LED structure with an electrically conductive, transparent window layer that results in better current-spreading and a brighter emission out of the device.

While neither chip manufacturer could claim a complete victory, the US International Trade Commission (ITC) was found to have made two key errors in its previous investigation of the case.

One was that the ITC did not allow Epistar to challenge the validity of the Lumileds patent, while it also made a mistake by extending the "limited exclusion order" (LEO), which barred US imports of Epistar products, to other products made by third parties that feature Epistar's AlGaInP chips.

Responding to the decisions, San Jose-based Lumileds picked out the court's confirmation of the ITC's original ruling - that Epistar had infringed the '718 patent – as a positive result.

And although the appeals court also overturned the ITC's previous ruling that Epistar could not contest the validity of that patent, Lumileds remains confident that any such challenges brought by Epistar will be rejected.

Perhaps more worrying for Lumileds is the ruling that the LEO covering third-party products that contain Epistar devices should be scrapped, and referred back to the ITC for further investigation – the result of a change in the law made after the ITC's original decision.

Epistar highlighted this aspect of the case in its own response, pointing out that the Lumileds patent would expire later this year, on December 18.

"The ITC erred in extending the LEO to Epistar's customers, when none were named as respondents in the case," noted the Taiwanese firm.

"Epistar has notified the US Customs and Border Protection of the decision."

The Taiwan company will now proceed with its action against Lumileds in the US District Court of Northern California, in which it accused Lumileds of breaching a 2004 settlement between the two firms.

Meanwhile Lumileds is confident that it will now win a pending infringement suit against Epistar in the US District Court over three patents, including '718. It believes that the confirmation of Epistar's initial infringement will pave the way for a ruling in its favor.


Source: compoundsemiconductor.net




People watch


It is lucky for Chen Jun to began his career in the IP industry 14 years ago when the first group of IP managers for businesses appeared on the stage in China and he has been in the industry.

It was this “Whampoa Military Academy” for IP that educated China’s first batch of corporate IP management personnel. Many of these engineers left Foxconn in the years since.