Nichia announced that the Intellectual Property High Court in Japan has completely dismissed Everlight’s claims against Nichia from a complaint filed on January 18, 2017, alleging unfair trade practices.
Nichia also reported that the Düsseldorf Court ordered a fine against Mouser for Contempt of Preliminary Injunction regarding Everlight’s products that Nichia claims use Nichia’s YAG phosphor patent.
In a third announcement, Nichia demanded that Everlight complies with the judgment of the Düsseldorf Court of Appeal and give up its attempts to enable further appeals against its the appeals court’s previous decision finding that Everlight infringed Nichia’s YAG patent.
Back in August 2011, Nichia filed a lawsuit against Chip One Stop, Inc., asserting that its activities including the importation and sale of white LEDs that Everlight (series number: GT3528) produced, constituted an infringement of Japanese Patent No. 4530094 (’094 patent) owned by Nichia.
Then, in October 2011, Nichia filed a lawsuit against Tachibana Eletech Co., Ltd., alleging that its activities including the importation and sale of white LEDs, which Everlight produced (series numbers: GT3528 and 61-238, hereinafter collectively “Everlight’s white LEDs”), constituted an infringement of Nichia’s ’094 patent.
Subsequently, Nichia uploaded press releases on its website regarding these two 2011 Lawsuits.
Afterwards, Everlight made a claim in a tokyo district court that the Nichia’s uploading of the two press releases constituted unfair competitive activities, and sought an injunction against Nichia’s future uploading of similar press releases.
The primary issue of the Everlight complaint was whether the uploading the press releases fell within the scope of unfair competition activities, and whether injunctions against the uploading of similar press releases should be granted.
On January 30, 2014, the Tokyo District Court in the first instance found that the uploading of the press releases did not constitute unfair competition activities, etc., and dismissed Everlight’s claims. Everlight, appealed the decision.
Then, in the most recent decision, Intellectual Property High Court, found that Everlight’s white LEDs fell within the scope of the right of the ’094 patent, and ruled that the uploading the press releases, did not fall within the scope of unfair competition activities, and dismissed Everlight’s appeal completely.
Düsseldorf District Court Orders Fine Against Mouser
As previously reported, on September 29, 2016, the Düsseldorf District Court in Germany granted a preliminary injunction against Mouser Electronics Inc. (Mouser) based on a request of Nichia Corporation (Nichia).
The court admitted Nichia’s arguments that the white LED product “334-15/X1C5-1QSA” that Everlight Electronics Co., Ltd. manufactured and Mouser distributed in Germany infringes Nichia’s YAG patent EP 936 682 (DE 697 02 929). And the court granted a preliminary injunction against Mouser selling the accused white LEd product.
Despite this preliminary injunction, Mouser continued to offer the accused white LED product until 19 October 2016. As a consequence, Nichia filed a request that the Düsseldorf District Court order a fine against Mouser for contempt of the preliminary injunction.
The Düsseldorf District Court has now admitted Nichia’s argument and ordered on January 11, 2017, that Mouser pays the court a fine of EUR 2,000.00 for culpable non-compliance with the preliminary injunction. The fine order is not final and can still be remedied by Mouser.
Nichia Demands that Everlight Complies with Düsseldorf Court of Appeal
As previously reported, in its judgment on December 22, 2016 (docket number I-15 U 31/14), the Düsseldorf Court of Appeal in Germany confirmed the Everlight and its subsidiary’s infringement in first instance of Nichia’s YAG Patent EP 0 936 682 (DE 697 02 929) related to six accused white LED products.
The Düsseldorf Court of Appeal ruled not to allow a further appeal of the Everlight judgment.
Despite this ruling, Everlight later filed a request with the Federal Court of Justice (docket number X ZR 5/17) to allow such further appeal.
Nichi points out that the request of Everlight to allow a further appeal does not have any suspensive effect.
Therefore, Everlight is still not entitled to distribute in Germany the accused white LED products (SL-PAR38/B/P17/30/E30/ND, 67-21/QK2C-B56702C4CB2/2T, 67-21/QK2C-B45562C4CB2/2T, 45-21/LK2C-B56702C4CB2/2T, 45-21/QK2C-B45562C4CB2/2T, SMD Low Power LED 61-238/LK2C-B56706F4GB2/ET).
For this reason, Nichia demands that Everlight respects the cease and desist order from the Düsseldorf Court of Appeal.
Nichia also noted that the Düsseldorf Court of Appeal confirmed with its judgment against Everlight when it ordered a recall of the accused Everlight products from the commercial customers and the destruction of the accused Everlight products that Everlight Electronics Europe GmbH owns. Therefore, Nichia has now also demanded that Everlight Electronics Europe GmbH immediately recalls the accused white LED products from its commercial customers and destroys the respective accused products.