Another long-standing dispute with Taiwanese LED packaging manufacturer Everlight Electronics (Everlight) recently reached its ultimate resolution when Taiwan’s Supreme Administrative Court (TSAC) dismissed Nichia’s appeal of a lower court decision holding Nichia’s Taiwanese Design Patent No. 089036 (’036 Patent) invalid.
The TSAC decision is reported in this Taiwan Economic News article, and a case study by the Transworld IP firm provides a good discussion of the ruling below by the Taiwan Intellectual Property Court (IP Court).
The TSAC upheld the IP Court’s decision recognizing the revocation of the ’036 Patent on the ground that the claimed design lacked creativity.
According to the Transworld piece, in Taiwan any design, including a shape, pattern, color, or combination thereof, with “eye-appeal” is eligible for design patent protection. However, a certain level of creativity beyond that of the person of ordinary skill in the art is required for the design patent to be valid.
The Transworld article says the IP Court found that creativity lacking in Nichia’s ’036 Patent and revoked the patent:
Taiwan’s Intellectual Property Court finally upheld that even [though]the design patent at issue differs from the prior art, it can . . . easily be accomplished by any ordinary skilled person in the field of Light Emitting Diode (LED). Hence, the design patent issue is revoked by having no creativity.
With the ’036 Patent revoked, the accused Everlight products obviously were not found to infringe the patent.
Nichia has asserted LED design patents before. The U.S. litigation with Seoul centered on four design patents.
Although the patents were held to be infringed, the U.S. District Court for the Northern District of California denied Nichia’s motion for an injunction because there were only de minimis sales of what had become an obsolete accused product.
Eric Lane is a patent attorney at Luce, Forward, Hamilton & Scripps in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at firstname.lastname@example.org.