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11 May 2007


ITC extends Lumileds’ patent ruling and exclusion order from Epistar's MB LED products to OMA and GB LED products

The US International Trade Commission has issued a final determination stating that all of the omni-directional mirror adhesion (OMA), metal-bond (MB), and glue-bond (GB) AlGaInP LED products made by Epistar Corp of Hsinchu Science-based Industrial Park, Taiwan infringe US Patent no. 5,008,718 owned by Philips Lumileds of San Jose, CA, USA.

Lumileds filed its complaint with the ITC in November 2005, alleging that the OMA, GB and MB LEDs of Hsinchu-based United Epitaxy Corp (UEC) infringed its US patent nos 5,376,580, 5,502,316 and 5,008,718. At the end of 2005 the merger between Epistar and UEC was completed, and Epistar became the only respondent.

On 22 February the ITC said that it had adopted portions of the 8 January initial determination by administrative law judge Sidney Harris that Epistar’s MB I and MB II products infringe Philips Lumileds’ US Patent no. 5,008,718, that its 5,008,718, 5,376,580 and 5,502,316 patents are valid and enforceable, that Epistar’s OMA, MB, and GB products are not licensed under those patents, and that a limited exclusion order should prevent import of the MB LED chips, packaged lamps, and boards containing them into the USA . Epistar subsequently filed a petition asking the ITC to reject the initial determination . However, the ITC decided to act on a petition by Philips Lumileds for it to review the initial determination and to consider if the OMA and GB LED products, too, infringe the 5,008,718 patent and if they should also be included in the exclusion order.

The ITC’s final determination affirms that none of the OMA, GB and MB products infringe the 5,376,580 and 5,502,316 patents (relating to a ‘wafer bonding’ LED manufacturing process). However, it reverses the initial determination regarding the 5,008,718 patent (relating to LEDs with a ‘transparent semiconductor window layer’ within the chip structures that laterally spreads current away from the metal contact), instead finding infringement not only by the MB products but by the OMA and GB products too.

As a result, the ITC is expanding its limited exclusion order prohibiting the import into the USA of the MB LED chips, packaged lamps containing them, and boards primarily consisting of arrays of such packaged LEDs to the OMA and GB products too.

The limited exclusion order does not become final for 60 days during a period of review of the ITC’s decision by the office of the US Trade Representative on behalf of the President. In the meantime, the ITC has ordered that the bond required to permit temporary importation will be 100% of the value of the LEDs, lamps or boards.

“Philips Lumileds will continue to enforce its intellectual property rights,” says the firm’s CEO Michael Holt. Philips Lumileds also has a pending action in the US District Court for the Northern District of California in which it asserts its patent rights against Epistar’s OMA, MB, and GB products, seeking both damages and an injunction.

“We are obviously disappointed with the decision of the USITC,” says Epistar’s president Dr Biing-jye Lee. “Epistar believes that the USITC has interpreted these patents erroneously to grant exclusive rights to Lumileds to technology that it did not invent and has never used,” he adds. “Epistar believes that the USITC’s ruling is neither legally nor factually supportable. For this reason, Epistar is considering an appeal of the USITC’s ruling, and will ask for a stay of enforcement of the limited exclusion order until the appeal is decided.”

However, Epistar claims that the ITC’s exclusion order does not bar the import of completed ‘downstream’ products (i.e. systems) that may include the LED products.

In addition, Epistar says it expects the impact of the ruling on its customers to be minimal. The firm has developed next-generation MB products (the PE and PN series, already shipping to customers) as well as next-generation OMA and GB products (the Phoenix series, ready for customers’ qualification or shipping), neither of which have any infringement issues related to the ’718 patent, the firm claims. Epistar says it will work with its customers to protect their interest and minimize any effect of 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

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See ITC's ruling in full