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13 July 2007


ITC’s US exclusion order comes into force on Epistar’s MB, GB and OMA LEDs, just as new Phoenix and Aquarius LEDs launched …

The US International Trade Commission’s exclusion order has come into force barring importation into the USA of the AlGaInP-based MB, GB and OMA LEDs (and next-generation OMA II, MB II and GB II LEDs) of Epistar Corp of Hsinchu, Taiwan, as well as packaged lamps containing the LEDs and boards consisting primarily of arrays of such lamps. This follows the end of a 60-day period of US Presidential review after the ITC’s final determination on 9 May that the LEDs infringe US Patent no. 5,008,718 owned by Philips Lumileds Lighting Co LLC of San Jose, CA, USA.

As a result of the exclusion order, Lumileds says it is notifying LED chip packagers, downstream customers and distributors of the following:

1. The manufacture, use, sale, offer for sale, or importation into the USA of Epistar’s metal-bond (MB), glue-bond (GB) and omni-directional mirror adhesion (OMA) LEDs or products incorporating those LEDs is an infringement of Lumileds’ patent rights.

2. Unlicensed manufacturers should not rely on indemnity agreements to excuse their infringement. A promise by a manufacturer to ‘indemnify’ its customer against legal action will not prevent Lumileds from asserting its patents and seeking damages directly from that customer. Likewise, indemnification will have no effect on exclusion of the infringing products by customs officials.

3. Companies that use, import, or sell unlicensed infringing products, even unknowingly, are direct infringers of the patent.

4. During the ITC investigation, Epistar was required to disclose all of its available AlInGaP LED products and its ‘next generation’ products, and these were all found to infringe the 5,008,718 patent. Given the broad scope and critical importance of this patent to making commercially viable AlInGaP LEDs, Lumileds does not believe that Epistar will be able to suddenly devise a non-infringing alternative after having been unable to do so for the last decade or more.

Lumileds says that buyers have several other options for sourcing AlInGaP LED products, including working through chip packagers, such as Avago, or distributors (such as Lastertech, Marubeni, Promate and Future Electronics) that offer AlInGaP products licensed under its patents.

Lumileds also has a pending action in the US District Court for the Northern District of California, in which it is asserting its patent rights against Epistar’s OMA, MB, and GB products and seeking both damages and an injunction.

*Epistar launches new Phoenix and Aquarius AlGaInP LEDs

Epistar has since responded to the exclusion order coming into force by announcing its new Phoenix and Aquarius lines of ultra-bright AlGaInP LEDs, which have been designed so that they are not subject to the ITC’s exclusion order, it is claimed.

“Epistar has always been committed to ensuring that its customers can buy its products with confidence,” says president B.J. Lee. “In light of the ITC’s ruling we accelerated our development program and are now manufacturing the Phoenix and Aquarius products in volume. Those products remove entirely the feature Lumileds claims is the basis for its patent, and also provide significantly improved performance over the previous [MB, OMA and GB] designs,” he claims.

In light of these developments, Epistar is urging LED packagers, downstream customers and distributors to be aware of the following:

  • Epistar is working with the Department of Homeland Security - US Customs and Border Protection to assure that customers importing, selling or using Phoenix and Aquarius products will not be subject to the exclusion order. Epistar expects a favorable determination soon.
  • Epistar is confident that Lumileds has no basis to claim that those products infringe its patent.
  • The ITC’s decision that the OMA, GB and MB product designs infringe Lumileds’ patent claims is not binding on any US court that would decide whether the sale or use of those products infringes. Epistar continues to believe that the ITC’s decision is contrary to the facts and the law. Epistar will appeal that determination, and is confident that Court of Appeals for the Federal Circuit will reverse the ITC decision. “In the meantime, we can offer our customers these new, improved and clearly non-infringing products [Phoenix and Aquarius],” says Lee.
  • Epistar has assured its customers that it will stand behind their decisions to purchase Epistar products.

Given Lumileds’ statement that it “does not believe that Epistar will be able to suddenly devise a non-infringing alternative after having been unable to do so for the last decade or more”, it seems certain that Lumileds will respond to Epistar’s latest product launch. The spotlight now falls on the Department of Homeland Security - US Customs and Border Protection regarding a determination on whether the Phoenix and Aquarius LEDs should be subject to the exclusion order.

See related items:

ITC adopts exclusion order against Epistar's MB LEDs; will review whether OMA and GB LEDs also infringe Lumileds patent

Round two: Epistar responds to Philips Lumileds

Judge's Initial Determination favours Philips Lumileds in patent infringement battle

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