A previous post discussed Everlight Electronics’ patent suit against Nichia in which the Taiwanese company is seeking a declaratory judgment that two LED patents owned by its Japanese rival are not infringed, invalid, and unenforceable due to alleged inequitable conduct by Nichia before the U.S. Patent and Trademark Office (PTO).
In a recent decision, a Michigan federal court granted Nichia’s motion to dismiss the inequitable conduct claims.
The two patents at issue relate to high brightness LED technology. They are U.S. Patent No. 5,998,925, entitled “Light emitting device having a nitride compound semiconductor and phosphor containing garnet fluorescent material” (’925 Patent), and U.S. Patent No. 7,531,960, entitled “Light emitting device with blue light LED and phosphor components” (’960 Patent) (Patents-in-suit).
Everlight’s inequitable conduct allegations centered on statements in the Patents-in-suit regarding certain phosphor compositions used in the described and claimed LEDs.
According to Everlight’s complaint, the experiments in examples 8 and 12 of the ’925 Patent constitued fraud on the PTO because they were not actually conducted and described “fictitious phosphors.” More particularly, Everlight contended that it was not possible to make such phosphors:
Nichia never could have made such phosphors because they are chemically unstable using the type of fabrication methods Nichia described in the ’925 Patent.
In response Nichia argued that Everlight failed to meet the pleading standard for inequitable conduct in light of recent case law on the doctrine, particularly the Federal Circuit’s Therasense decision. That case held that both materiality and intent to deceive must be established by clear and convincing evidence.
More particularly, Nichia contended that the pleadings are deficient because they fail to identify who committed the inequitable conduct, they fail to identify why the alleged misrepresentations were material to patentability, and they do not allege sufficient facts to support an inference of specific intent to deceive the PTO.
The court agreed with all of Nichia’s arguments. Specifically, the court found Everlight’s identification of the inventors and/or “other persons who were substantially involved” in preparing the patent application that led to the ’925 Patent to be deficient, and held that Everlight cannot simply rely on a signed inventor declaration to support its ID of individuals:
The Court is not persuaded that Everlight has identified the “who” of the material misrepresentations because they have not identified “the specific individual associated with the filing or prosecution of [Nichia’s patents-in-suit] who both knew of the material information and deliberately withheld or misrepresented it.” Everlight’s reliance on the inventors’ declaration does not provide sufficient facts for this Court to infer that a specific inventor had the requisite knowledge of the alleged falsity set forth in examples 8 and 12 of hte ’925 Patent.
While the court found Everlight sufficiently pled the materiality element of inequitable conduct, it held the specific intent element lacking because Everlight failed to allege that any individuals knew the experiments at issue had not actually been conducted:
Everlight fails to offer any facts to support the inference that any particular individual knew that the experiments set forth in examples 8 and 12 had not been conducted because the phosphors represented by the formulas are chemically unstable. Even if Everlight is correct that examples 8 and 12 are necessary to enable the full scope of the claims in the ’925 Patent, Everlight has not alleged that any of the named inventors or employees in Nichia’s patent department knew this to be the case. Without such allegations, the Court cannot infer that the alleged misrepresentations were made with the specific intent to deceive the PTO.
This case is just one of many between Nichia and Everlight. The two LED rivals also have patent infringement suits pending in Japan, Germany, and Taiwan.
Eric Lane is a patent attorney at McKenna Long & Aldridge LLP in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at firstname.lastname@example.org