Taiwan Supremes Affirm Revocation of Nichia Design Patent

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In previous posts (e.g., here, here and here) I’ve written about Nichia’s LED patent enforcement activity, including a now-settled global patent war with its Korean rival Seoul Semiconductor.

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 elane@luce.com.

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Walter’s contributions to CleanTechies over the past 4 years have been instrumental in growing the publications social media channels via his ongoing editorial and data driven strategies. He is the founder and managing director of Sunflower Tax, a renewable energy tax and finance consultancy based in San Diego, California. Active in the San Diego clean technology community, participating in events sponsored by CleanTech San Diego, EcoTopics, and Cleantech Open San Diego, Walter has also been a presenter at numerous California Center for Sustainability (CCSE) programs. He currently serves as an adjunct professor at the University of San Diego School of Law where he teaches a course on energy taxation and policy.