German Federal Patent Court Rejects Everlight Nullity Action Against Nichia; Ruling Appealable

German Federal Patent Court ruled on July 19, 2018 (docket number 2 Ni 55/16 (EP)), that the German part of Nichia’s YAG patent EP 936 682 (DE 697 02 929) is valid. As a result, the court effectively rejected the nullity action of Everlight Electronics Europe GmbH (Everlight Europe), the German subsidiary of Taiwanese LED manufacturer Everlight Electronics Co., Ltd. (Everlight Taiwan). However, Nichia’s announcement about the ruling indicated that the judgment of the Federal Patent Court is not final and can be appealed.

Nichia noted that previously Everlight Taiwan attacked Nichia and its YAG patent without success in a first attempt to nullify the German part of Nichia’s YAG patent. In the previous case the German Federal Court of Justice fully dismissed this action with final judgment of August 16, 2016 (docket number X ZR 96/14). Thus, Nichia contends that with the new judgment of the Federal Patent Court on July 19, 2018, now, the validity of the German part of Nichia’s YAG patent was confirmed for the second time.

Value of the Dispute Set to 7.3 Million EUR

The value in the dispute for the nullity action was set by the Federal Patent Court to 7.3 million EUR, significantly raising the value in dispute that Everlight requested of 2.5 million EUR. Again, Nichia noted that this determination of the value of dispute is not final and can be appealed.

The court estimated the determination of the value in dispute by examining the importance of the validity of Nichia’s YAG patent for the respective, and currently still pending infringement actions in Germany, and the total amount of the individual values in dispute of those infringement proceedings including: Nichia vs Everlight Taiwan and Everlight Europe at the Federal Court of Justice (docket number X ZR 5/17), Nichia vs Everlight Taiwan and Everlight Europe at the Düsseldorf District Court (docket number 4b O 161/17), Nichia vs distributor EBV Elektronik GmbH & Co. KG and EBV Management GmbH at the Düsseldorf District Court (docket number 4b O 20/17), and Nichia vs WOFI Leuchten Wortmann & Filz GmbH, another German subsidiary of Everlight Taiwan, at the Düsseldorf Court of Appeal (docket number I-2 U 33/17).

So, both parts of the ruling including the patent validity and the value of the dispute can be appealed.

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