Everlight vs. Nichia -- Everlight won the design patent litigation
The leading LED company, Nichia Corporation (“Nichia”), filed a litigation with respect to a Taiwan design patent dispute (Taiwanese Design Patent No. 089036) against Everlight Electronics Co. Ltd (“Everlight”) which is one of the largest LED packaging manufacturers in Taiwan, with Taiwan Panchiao District Court 4 years ago. The decision of Panchiao District Court was in favor of Nichia. The Everlight appealed, and the Taiwan High Court has affirmed the Panchiao District Court’s decision and ordered Everlight to pay damages of NT$80 million (about US$2.4 million) to Nichia last year. However, Everlight appealed again, and recently the Taiwan Intellectual Property Court reversed the original decision and recognized the revocation of the Taiwan design patent (Patent No.:089036), which was owned by Nichia, as well as ruled in Everlight’s favor.
The Taiwan Intellectual Property Court collated the arguments, materials and evidences submitted by both parties, and ascertained the following issues:
- Whether the revocation of the Taiwan design patent right (Taiwan Design Patent No. 089036) owned by Nichia shall be decided?
- Whether Nichia shall ask Everlight to pay damages according to the Article 129, paragraph 1 of Article 84, paragraph 1-2 of Article 85 in Taiwan’s Patent Act, and Article 184 (intentionally or negligently, has wrongfully damaged the rights of another) of Taiwan’s Civil Law?
- Whether Nichia shall ask Everlight’s legal representative to be liable, jointly and severally, for the damage caused by the Everlight according to Taiwan’s Corporation Act?
Design" shall refer to any creation made in respect of the shape, pattern, color, or combination thereof of an article through eye appeal, which any design with eye-appeal can be protected. However, whether the term of “eye-appeal” means observing through naked eyes or through supplement equipment is not concerned. In this case, the court asserted that when the ordinary skilled person (purchaser) in the field of Light Emitting Diode (LED) purchases LED, it is took for granted to apply the supplement equipment or enlarged drawings to perform the eye appeal observation since the LED is categorized as micro electronic components. The Taiwan’s Intellectual Property Court finally upheld that even the design patent at issue differs from the prior art, it can be easily be accomplished by any ordinary skilled person in the field of Light Emitting Diode (LED). Hence, the design patent at issue is revoked by having no creativity.
According to the Article 16 of Taiwan’s Intellectual Property Case Adjudication Act, t when a party claims or defends that an intellectual property right shall be cancelled or revoked, the court shall decide based on the merit of the case, and the Code of Civil Procedure, Code of Administrative Litigation Procedure, Trademark Act, Patent Act, Species of Plants and Seedling Act, or other applicable laws concerning the stay of an action shall not apply. Under such circumstances, the holder of the intellectual property right shall not claim any rights during the civil action against the opposing party where the court has recognized the grounds for cancellation or revocation of the intellectual property right.
Here, since the right of Taiwanese Design Patent No. 089036 at issue was recognized for revocation, the LED products (99-215UWC/TR8, 99-115UWC/XXX/TR8 and 99-115UTC/710/TR8) supplied by Everlight do not infringe Nichia’s design patent. As a consequence, the Everlight will NOT be liable to pay damages of NT$80 million (about US$2.4 million) to Nichia as well as the legal representative of Everlight will NOT be liable, jointly and severally for the damages caused by Everlight.
As we know, filing a design patent application in Taiwan dose not cost much, but the obtained patent right could protect the relevant products out of infringing other people’s right. In this litigation case between Everlight (Taiwan) and Nichia (Japan), the Everlight alleged certain his LED products (99-215UWC/TR8, 99-115UWC/XXX/TR8 and 99-115UTC/710/TR8) do not infringe Nichia’s patent, due to not only the design patent at issue was revoked but also their products have been protected under the issued Taiwan new design patent no. D104147 filed them. This patent litigation can be said as the first victory for Taiwan-based LED maker against international LED manufactures.
--by Asling TSAI