UK: IP Strategy Plays Key Role In LED Business Development

Last Updated: 2 October 2012
Article by Jackie Maguire and David Segal

This article was first published in the September 2012 issue of LEDs Magazine.

Companies that are developing LED lighting products need to have an awareness of the wider patent landscape to help them develop, protect and exploit their own intellectual property to its fullest.

The field of LEDs is an extremely exciting one for anyone with a flair for invention. Rapid technological change in this market has led to huge breakthroughs, and the potential seems unlimited. In business, however, opportunity normally walks hand in hand with threat, and this is true in the LED market. Successful players in the solid-state lighting (SSL) space must be aware of the competitive intellectual property (IP) landscape and be prepared to protect their proprietary technology. As a technology extends from the stage of basic research through to product development and commercial success, there is always the potential for litigation for the developer including patent infringement. The latter is a complex and potentially costly area for defendants. For example, the commercial success of mobile phone technology and social media networks has spawned an array of litigation cases brought about either by competitors or by so-called non-practicing entities (NPEs) and licensing companies. These are organizations that own patents but do not manufacture products based on them, and that base their business model on obtaining income through licensing their IP – namely their patent holdings. NPEs are sometimes referred to as "patent trolls" although when used in this way the phrase has derogatory overtones and their modus operandi is not necessarily predatory.It is vital that individual inventors and organizations ensure that they have full control over their IP – even if they decide to exclusively licence or sell it – and understand the threats from third-party IP. Most businesses and inventors are aware that they need to have some kind of IP protection. However, there is a risk, if protection in every jurisdiction in which they are planning to operate is not obtained right from the start, that they could be leaving themselves open to challenges from competitors. A good IP strategy involves understanding exactly what intangible assets both you and your competitors have and their value, and also how to commercialize as well as protect them. We will focus first on protection.

Protecting innovative developments

Obtaining protection through a granted patent is just one way to protect inventions and ideas. Having patents for your innovative developments and inventions gives you rights to stop others from making, selling, licensing, distributing or otherwise profiting from your invention for a limited period of time in exchange for a public disclosure of that invention.

When it comes to patents, novelty is key and so it is important to know if someone else has also developed something close to your invention which would prevent it from being claimed as novel. Before starting your patent application, you should therefore undertake a search for patents that have been published around the world in your area of technology/invention. It can be quite complex to submit a patent that stands a good chance of being granted and if a company has any doubts over novelty it is best to consult an IP specialist who can help with this.

Organizations sometimes forget the need to ensure that nothing is publicly disclosed before full protection is in place. It is critical that companies do not inadvertently make a public disclosure – for example, at a conference, in a research paper or article, or perhaps in a standards meeting. If a disclosure is made – and if a patent application has not already been filed – then from that point onwards the invention may not be deemed novel or inventive, and it will be difficult to obtain a commercially valuable patent. In such a case, a business runs the risk of giving away its ideas or inventions for free.

Patenting issues and LEDs

When it comes to lighting, although incandescent light bulbs and fluorescent tubes are widely-known to generations of people, LED lighting is a newer technology now spreading out across the public arena.

The advance of LED lighting is a reflection of successful interdisciplinary activities involving chemistry, materials science, engineering and physics in both basic and applied research and ultimately commercial exploitation. These disciplines are crucial to the development of features of inventions that are described in the international patent literature, including inventions in healthcare, power generation, transport, and smartphones.

LED developments may therefore incorporate inventions originally intended for alternative applications. For example, LEDs are amenable to processing by established techniques used in the semiconductor industry. Of interest here are both inorganic LEDs, such as gallium nitride (GaN)-based devices, and organic light emitting diodes (OLEDs), which are conjugated polymeric molecules. Inventions in the patent literature also relate specifically to LED lighting.

In this article we address some IP issues associated with the growing areas of LED-based SSL with attention focused on aspects of the wider patent landscape.

Common questions

Anyone with interests in LED lighting will want to know answers to one or more of the following questions:

  • §  Is this area of technical activity a growing or shrinking field?
  • §  Will my activities be susceptible to third-party patent infringement?
  • §  Is my area of technology novel, or has it been described previously by third parties?
  • §  Who are the major patent holders and what are their activities?
  • §  Are there common core technologies that players use?
  • §  How valuable is my IP?

It is possible for an organization or individual to search the publicly available information in national patent offices. It is however a time consuming process and commercially-available software is available via professional organizations that simplifies and accelerates the searching process for these databases. If an organization is trading, or planning to trade, internationally, the issue of protecting intellectual assets across the globe can be quite intricate. Each country has different processes and methods, and the pitfalls in obtaining IP protection in each country also vary, which means that professional interpretation is necessary.

In Europe, a system operates to provide a method of protection across the EU states, thereby making it more streamlined to obtain patent protection. In the EU, different trade restraints apply, and it is especially important to consider competition law – which covers the free movement of goods around the EU and the avoidance of the abuse of a dominant position in the market – when planning your IP strategy.

Because patent protection overseas can be complex, we recommend taking advice at an early stage to ensure pitfalls are avoided, opportunities maximized and costs are kept to a minimum. It can be time-consuming and costly to sort out errors later. In addition, patent portfolios need to be reviewed on a regular basis to ensure that as organizations and legislation change, full protection remains in place.

LED and OLED lighting

Patent searches on LED lighting based on representative inorganic materials, namely GaN and Indium GaN (InGaN), show approximately 3800 patent families that have been filed over the past 20 years. A breakdown of the published patent filing dates shows that the LED lighting area based on GaN is one of expanding activity (Fig. 1).

Studies of the patent literature highlight many active players in GaN/InGaN-based LEDs, including Sumitomo, Toyoda Gosei, Cree, Showa Denko, Toshiba, Sony, Sharp, Rohm, LG Innotek, Osram, Matsushita, Philips and Seoul Opto Device.

Patent searches on OLEDs show approximately 12,000 patent families that have been filed over the past 20 years. Fig. 2 shows the rapid ramp in patent filing in OLED technology over the last decade. OLED players include Samsung, Eastman Kodak, Philips, Merck, AU Optronics, Osram, Global OLED Technology, DuPont, Cambridge Display Technology, LG and GE.

Infringement

A primary source of patent infringement cases in the US Federal District Courts in the USA is the Justia website (www.justia.com). This can be freely accessed, and we recommend continual review of this site to keep up-to-date with lawsuits in LED technology.

To illustrate the IP landscape, we will highlight three recent cases involving LED technology. The cases show the complexity and breadth of IP claims and how some patents become cornerstones of subsequent IP claims.

Philips vs. Nexxus

Koninklijke Philips Electronics NV and Philips Solid State Lighting Solutions Inc. vs. Nexxus Lighting Inc. (case number 1:2012cv10549) was filed on March 26, 2012 at Massachusetts District Court. The plaintiff Philips has asserted six patents in this case, listed in Table 1. For clarity we have shown the extended DWPI (Derwent World Patents Index) title for the patents (from Thomson Innovation).

Table 1 helps to demonstrate that if there is a range of core technologies common to a product then infringement action can arise from patents relating to any of these core technologies. Here, control circuitry and sensors form part of the infringement action.

Everlight and Emcore vs. Nichia

Everlight Electronics Co., Ltd and Emcore Corporation vs. Nichia Corporation and Nichia America Corporation (case number 2:2012cv11758) was filed on April 19, 2012 at Michigan Eastern District Court.

In this case, Everlight is seeking enforcement of a patent US 6,653,215 (contact to n-GaN with Au termination, filed in October 2001, granted in November 2003 and assigned to Emcore). This patent relates to metallization technology and illustrates, when compared to the case between Philips and Nexxus Lighting, how infringement cases in a general area of technology – here LED lighting – can involve patents that describe a wide range of different features of the technology.

Everlight is also asking the US court to declare that two Nichia patents are invalid: US 5,998,925, which was filed in July 1997 and granted in December 1999, and US 7,531,960, which was filed in March 2007 and granted in May 2009. These two patents relate to the use of phosphors in producing white light in LEDs. For a recent update to the Everlight vs. Nichia case, see www.ledsmagazine.com/news/9/6/18.

We also find it useful to identify which patents have been highly cited when considering a set of documents pertaining to a field of technology, since documents that are highly cited (i.e. referenced by later documents) may represent critical technology. One of Nichia's patents that Everlight is attacking (US 5,998,925) is a highly cited document with about 500 citations, and has been extensively cited by GE, Cree, Nichia, Osram and Toshiba (See the online version of this article for an illustration of theses citations).

Lektron vs. Philips

Lektron, Inc. vs. Philips Solid-State Lighting Solutions, Inc. (case number 4:2012cv00205) was filed on April 6, 2012 at Oklahoma Northern District Court.

Lektron produces a modular Leon-simulated neon lighting product described by US patent no. 6,361,186, which was filed in August 2000 and granted in March 2002. In this case, US 6,361,186 is asserted against Philips in relation to a product offering from that company. This case illustrates that a discrete product can be subject to infringement action in the LED field in addition to common technologies such as metallization, phosphors and electronic circuitry.

Lektron produces a modular Leon-simulated neon lighting product described by US patent no. 6,361,186, which was filed in August 2000 and granted in March 2002. In this case, US 6,361,186 is asserted against Philips in relation to a product offering from that company. This case illustrates that a discrete product can be subject to infringement action in the LED field in addition to common technologies such as metallization, phosphors and electronic circuitry.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions