SSL IP news: Cree and Feit; Dow Corning; BU, Everlight, and Epistar

Cree said it had received a favorable ruling in its SSL-centric intellectual property action against Feit, while the amounts awarded to Boston University in an LED-centric action against Epistar and Everlight may be in question and Dow Corning gets positive ruling on an optical silicone patent.

Cree has announced that it received a Notice of the Initial Determination in an US International Trade Commission (ITC) investigation of patent infringement claims that Cree filed against Feit Electric Company and that the ITC judge found numerous patent infringements related to LED-based lighting products. Dow Corning has said the European Patent Office (EPO) has rejected a request to revoke a Dow patent that covers optical silicone used in solid-state lighting (SSL) applications. Boston University (BU) had scored a big LED-manufacturing-centric intellectual property (IP) win against Epistar Corporation, Everlight Electronics Co., Ltd., and Lite-On Technology Corporation in December 2015, although the amount of the award may now be called into question.

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Cree and Feit

Cree first brought IP legal action against Feit back in January of 2015. Cree went to both the ITC and US District Court with complaints that Feit and its Asian-based supplier Unity Opto Technology Company Ltd were infringing Cree patents. Cree sought to stop the sale of infringing lighting products and monetary compensation. Subsequently, Feit had fired back with a suit of its own against Cree in July of 2015.

Cree said the ITC notice included documentation of a violation of section 337 of the ITC Tariff Act by Feit and Unity due to infringement of four Cree patents:

• U.S. Patent No. 8,596,819 (LED Lighting Product Efficiency)
• U.S. Patent No. 8,628,214 (LED Lighting Product Efficiency)
• U.S. Patent No. 7,976,187 (Omni-directional LED Lighting Product)
• U.S. Patent No. 8,766,298 (LED Component Structure)

Furthermore, Cree said the ITC also found a violation of the Tariff Act based on false claims of Energy Star compliance for some products. A final ruling on the investigation is due in late November. Cree had specifically asked the ITC to ban import of offending products while the separate court filing would ultimately be the route for Cree to recover monetary damages.

Still, Cree lauded the ITC decision. "We are pleased that the Judge’s decision reaffirms Cree’s breakthroughs on more efficient and omnidirectional LED lighting products," said Brad Kohn, Cree general counsel. "We hope this decision results in an exclusion order and a cease and desist order that would protect both consumers and Cree by preventing the importation of products that improperly use Cree’s patented technology, falsely claim to meet Energy Star requirements, or both."

Dow Corning

The Dow Corning patent EP-1556443 covers high-refractive-index silicones that might be used in applications such as serving as an encapsulant in a high-power, packaged LED. The patent was initially published by the EPO in March 2013, but was subsequently challenged in the EPO Opposition Division. But the EPO has reaffirmed the validity with only minor amendments.

"We are clearly pleased with this validation of our uniquely innovative optical encapsulant technology," said Rogier Reinders, global marketing director for electronics and lighting at Dow Corning. "We believe that a strong IP portfolio supports not only Dow Corning’s interests, but those of its customers and of the LED industry as a whole. Firm patent protection fuels new innovation, fosters differentiated LED solutions, supports the reliability of LED lighting, and helps substantiate the industry’s claim that LEDs offer a legitimately competitive alternative to incumbent lighting solutions."

Dow Corning has also won similar patents in other regions of the globe. For example, the Korean Intellectual Property Office (KIPO) recognized the technology in June 2015.

Boston University

In the BU patent case, a jury had awarded the university a total of $13.7 million with the bulk of the money due from Epistar and Everlight. But the website Law360 reports that the judge in the case has decided based on arguments by Epistar and Everlight that a new trial is appropriate on the magnitude of the awards.

Presumably, BU will have the option of accepting $1 million in damages from each company or pursuing a new trial. Moreover, the judge has denied a BU request for enhanced damages. The Lite-On damages were only $365,000 and will evidently stand as is.