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22 April 2008


Seoul and Everlight settle ITC action brought by Rothschild

LED makers Seoul Semiconductor Co Ltd of Korea and Everlight Electronics Co Ltd of Taipei, Taiwan have signed settlement agreements in the patent case brought before the US International Trade Commission (ITC) on 19 February by Gertrude Neumark Rothschild, professor emerita of Materials Science and Engineering at Columbia University, says her intellectual property attorneys Albert Jacobs and Daniel Ladow of Dreier LLP. On 20 March, the ITC agreed to institute an investigation. Seoul Semiconductor had already announced earlier this month that it had signed a license agreement.

The complaint (‘In the matter of Short-Wave Light Emitting Diodes’) alleged infringement by 34 firms of her 1993 US patent 5,252,499 ‘Wide band-gap semiconductors having low bipolar resistivity and method of formation’ (covering a method of producing gallium nitride-based semiconductors for LEDs and laser diodes emitting in the blue, green, violet and ultraviolet end of the spectrum).

It also seeks to bar importation into the USA of a wide range of consumer electronics products incorporating infringing devices. These include DVD players using Sony’s Blu-ray format, Motorola Razr phones and Hitachi camcorders, as well as instrument panels, billboards, traffic lights and data storage devices. Other firms cited include Blu-ray DVD player makers Matsushita Electric Industrial Co (Panasonic), LG Electronics Inc and Samsung Group and HD DVD player manufacturer Toshiba Corp, as well as Nokia Corp, Sony Ericsson Mobile, Pioneer, Sanyo Electric Co, and Sharp Electronics.

Rothschild began her research career in private industry, working with Sylvania Research Laboratories in Bayside, NY in the 1950s and later at Philips Laboratories in Briarcliff Manor, NY before joining Columbia as a professor of materials science in 1985. She conducted research in the 1980s and ’90s into the electrical and optical properties of wide-bandgap semiconductors that is claimed to have been pivotal in the development of short-wavelength emitting (blue, green, violet and ultraviolet) diodes now used in consumer electronics.

“The licensing agreements with Seoul Semiconductor and Everlight are an important step forward in this case, since more companies are recognizing professor Rothschild's seminal breakthroughs in the production of the blue, green, violet and ultraviolet LEDs and LDs that are essential to a host of consumer products,” says Dreier LLP’s Jacobs.

After previous patent complaints filed elsewhere starting in 2002, LED makers including Germany’s Osram Opto Semiconductors and Japan’s Nichia and Toyoda Gosei have already settled with Rothschild over alleged patent infringement. (On 7 April, LED maker Toyoda Gosei confirmed that it had agreed a patent license with Rothschild in August 2006 after settling a lawsuit filed in July 2005. So, regardless of February’s ITC complaint, its LED chips are not infringing the patent and customers are not be subject to Rothschild’s exercise of her patent rights.)

Most recently, on 10 March, an action that had been brought before the US District Court for the Southern District of New York by Rothschild was settled by LED maker Philips Lumileds of San Jose, CA, USA, giving the firm a non-exclusive license. Also, earlier this year, Philips named a Philips Electronics Chair in the Department of Applied Physics at Columbia University’s Fu Foundation School of Engineering and Applied Science in Rothschild’s honor.

A separate case against LED maker Cree Inc of Durham, NC, USA is still pending.

See related items:

Seoul Semiconductor agrees license with Rothschild

ITC investigating blue LED/laser patent infringement case

Search: GaN LEDs Seoul Semiconductor Everlight Nichia Toyoda Gosei Philips Lumileds Cree Laser diodes Matsushita Samsung Toshiba Sanyo Sharp