News: Microelectronics
11 November 2024
US ITC confirms Innoscience’s infringement of EPC’s patent
Efficient Power Conversion Corp (EPC) of El Segundo, CA, USA — which makes enhancement-mode gallium nitride on silicon (eGaN) power field-effect transistors (FETs) and integrated circuits for power management applications — says that the US International Trade Commission (ITC) has affirmed its initial determination that gallium nitride-on-silicon (GaN-on-Si) power solutions firm Innoscience of Suzhou, China infringed EPC’s foundational patent for GaN technology, which is core to applications involving artificial intelligence, satellites, rapid chargers, humanoid robots and autonomous driving, among others.
The decision imposes a ban on Innoscience (Zhuhai) Technology Co Ltd and its affiliates from importing GaN-related products into the USA without a license from EPC.
EPC says that the decision marks the first successfully litigated US patent dispute involving GaN-based wide-bandgap semiconductors. The decision also paves the way for EPC to expand access to its IP through licensing agreements with potential partners and customers around the world.
“After pouring nearly two decades and immense resources into developing our uniquely valuable intellectual property portfolio, this is a tremendous victory for EPC and a major win for fair competition globally, which is critical to the success of next-generation technological advances,” comments EPC’s CEO & co-founder Alex Lidow.
This is the fourth time that EPC’s IP rights have been affirmed against Innoscience in the past six months. EPC initially filed the lawsuit against Innoscience in the ITC in May 2023, alleging infringement of its 8,404,508 and 8,350,294 patents. In response, Innoscience challenged the validity of the EPC patents at issue in the USA, as well as EPC’s counterpart patents in China. The China National Intellectual Property Administration upheld the validity of EPC’s counterpart patents in April and May 2024. The ITC’s initial determination by the administrative law judge in July similarly confirmed the validity of the challenged patents, and also found that Innoscience infringed EPC’s foundational patent, US Patent No. 8,350,294. The ITC’s final determination is subject to a 60-day Presidential review period, expiring on 6 January 2025.
ITC finds no infringement of '508 patent; violation of '294 patent to be resolved by design-arounds
In response, Innoscience notes that the ITC’s final determination affirms no infringement of claim 1 (the only asserted claim) of the ’508 patent.
However, the final determination affirmed the part of the judge’s initial determination that found violation as to claims 2 and 3 the ’294 patent. The ITC’s exclusion order is therefore limited, prohibiting importation of certain accused Innoscience chips.
Innoscience says that it disagrees with and will appeal this ruling, at least because the ‘294 patent is invalid, it asserts. The US Patent and Trademark Office (USPTO) instituted an inter partes review (IPR) challenging all claims of the ’294 patent under four different grounds and has agreed with Innoscience’s invalidity arguments, the firm claims. The ’294 IPR decision will be issued in March 2025.
Innoscience also notes it is established US law that the limited exclusion order does not prohibit its customers from importing end products that use the accused chips. Moreover, since the final decision clarified the meaning of the claim term “compensated GaN layer,” which is at the center of the dispute surrounding the ’294 patent, it has provided clear guidance for Innoscience to design around the ’294 patent by avoiding use of the “compensated GaN layer.” Innoscience already has the design-around in place and will release the new products soon.
Accordingly, Innoscience expects that EPC’s litigation will have no impact on its customers. Moreover, it says that it will continue to resolve the dispute with EPC through appeals in court and invalidity challenges at the USPTO.
Innoscience claims victory over EPC’s ’508 patent in ITC’s initial decision
US ITC finds key EPC patents valid and foundational patent infringed by Innoscience
US Patent Office reviewing validity of two EPC patents asserted against Innoscience
Innoscience responds to EPC’s lawsuits filed at US ITC and federal courts
