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
 
In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.