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USPTO Finds the Patent Asserted by Everlight/Emcore to be Unpatentable

On February 11, 2014, the United States Patent and Trademark Office (“USPTO”) issued a Final Written Decision in inter partes review (“IPR”) proceeding IPR2012-000005. The USPTO held that all claims of United States Patent No. 6,653,215 (the “’215 Patent”) are not patentable, and ordered them cancelled. The USPTO also denied Emcore Corporation’s Motion to Amend Claims. A copy of the Final Written Decision is attached below.

The ’215 Patent is asserted in the litigation styled Everlight Electronics Co., Ltd. and Emcore Corporation v. Nichia Corporation and Nichia America Corporation, Case No. 2-12-cv-11758 (Eastern District of Michigan), in which Emcore, the owner of the ’215 Patent, and Everlight Electronics, its exclusive licensee, assert the ’215 Patent against Nichia. In response, Nichia Corporation filed the Petition on September 16, 2012 in the USPTO requesting an inter partes review of all of the claims of the ’215 Patent. In its Final Decision, the USPTO held that Nichia had met its burden of proof in showing that all of the claims are unpatentable as “obvious” over several prior publications.

As background, an inter partes review or IPR is a legal proceeding decided by a three-judge panel of Administrative Patent Judges within the USPTO. It is a procedure to challenge the validity of patent claims based on prior patents and printed publications, on a ground that could be raised under Section 102 or Section 103 of the US Patent Law. During an IPR, both sides may provide arguments in support of their positions, provide expert declarations to support their positions, and conduct depositions of experts.

In its counterclaim in the Michigan litigation, Nichia asserts, among other things, that Everlight infringes Nichia’s United States Patents Nos. 5,998,925 and 7,531,960, both directed to white LEDs. An IPR Petition has not been filed against either of these Nichia patents by Everlight, or anyone else. The trial of the Michigan litigation is currently scheduled for October 2014.

As demonstrated throughout this ongoing litigation, Nichia seeks to protect its patents and other intellectual property rights, and takes actions against infringers in any country where appropriate and necessary. In the same time, Nichia will vigorously fight against an infringement claim if such claim is based on a patent whose validity is questionable.

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