After an earlier complaint against Nichia was rejected, Everlight has uncovered additional details to bolster its claim that fictitious results were included in a Nichia patent application. Further activity has taken place in the patent dispute between Nichia and Everlight. As we reported in June 2012, Everlight filed a lawsuit against Nichia accusing the Japanese company of using fictitious experimental results in an attempt to deliberately mislead the US Patent Trademark Office (PTO).
These accusations related primarily to US patent no. 5,998,925. However, in November 2012, a Michigan federal court granted Nichia’s motion to dismiss the claims of inequitable conduct that had been alleged by Everlight.
The court found that the claims made by Everlight were not specific enough, and that the Taiwanese company had failed to identify the specific inventors (or other persons) that had deliberately made the misleading statements to the USPTO. The specific element of being able to demonstrate intent was also missing from Everlight’s complaint.
Now, Everlight has submitted another complaint (in fact the second amended complaint), which was filed last month. This complaint addresses the shortcomings identified by the court in the earlier complaint, while also providing “new and expanded support for the inequitable conduct claims.”
Everlight has now named three specific Nichia inventors that, says the complaint, were responsible for the fictitious results included in the ‘925 patent application.
The complaint also gives specific examples of misleading statements. For example, the ‘925 patent includes claims that cover an LED with a YAG-type phosphor in which yttrium (Y) is fully replaced by gadolinium (Gd).
However, Everlight contends that the inventors knew this claim to be false. In fact, the complaint quotes a patent application in Japan by the same inventors which concludes that full replacement of yttrium by gadolinium would result in zero light emission.
Other similar allegations are made by Everlight with respect to the substitution of aluminum (Al) by indium (In).
Also, the ‘925 patent claims that various samples of LEDs were made using the new phosphors described, and gave good results in terms of light emission and stability. However, Everlight claims this must be false, since several of the phosphor structures are either unstable or were known to result in zero light emission.
The main goal of the complaint is to have US patent nos. 5,998,925 and 7,531,960 declared invalid and unenforceable.
