Context: LED patent holders have been interested in the Unified Patent Court (UPC) early on, leading to an injunction that the UPC’s Dusseldorf Local Division (LD) granted a few weeks ago (October 10, 2024 ip fray article).
What’s new: Japan’s Nichia Corporation, which has a significant track record in LED patent enforcement (such as a court win over ASUS a few years ago), has filed three patent infringement lawsuits against Endrich Bauelemente Vertriebs GmbH, a Germany-based distributor of LEDs used particularly in automotive headlights and backlights, and which are made by Malaysia’s Dominant Opto Technologies (“DOT”). The UPC’s case registry shows one case, and two more cases have been filed with the Munich I Regional Court.
Direct impact: Presumably, Endrich’s supplier DOT has a hold-harmless or (at least) indemnification provision to honor and will intervene. Nichia is seeking injunctions as well as damages. Given the competitive situation between the parties, it is not a given that a license agreement can put the dispute to rest quickly.
Wider ramifications: The UPC continues to attract high-stakes, high-profile cases. Just a few days ago, German supercomputer firm ParTec filed a case with the UPC’s Munich LD, seeking an 18-country injunction against Nvidia’s DGX chips used in AI cloud clusters (October 28, 2024 ip fray article).
In the UPC case that has surfaced in the case registry, Nichia is asserting EP2323178 (“Light-emitting device, method for manufacturing same, molded body and sealing member”). EP’178 is about LED package epoxy resins that allegedly excel through superior heat and light resistance. Nichia is asserting EP’178 against DOT’s Spice Plus 2120 Multi Color SKRTB-FHG (RGB 3in1), Spice Plus 3014 SEW-WZSG and Spice Plus 3030 Multi Color S6RTB-THG (RGB 3in1) products.
Nichia asks the UPC to ban those products in Europe’s top three automaking countries – Germany, Italy and France – as well as the Netherlands, which is an important hub for many electronics components, particularly also LEDs. The patent family to which EP’178 belongs has members in those four European countries as well as in mainland China and Taiwan, India and South Korea, making further geographic escalation a possibility.
The panel consists of Presiding Judge Ronny Thomas, Judge Dr. Bérénice Thom and Judge Mojca Mlakar (Ljubljana, Slovenia). A technically qualified judge is likely to be assigned.
In addition, Nichia has filed infringement lawsuits against DOT over two other patents with the Munich I Regional Court, seeking injunctive and monetary remedies with respect to the German market:
- EP3267494 (“Light emitting device and method for manufacturing a plurality of light emitting devices”) is allegedly infringed by the above-mentioned Spice Plus 3014 product. This patent is about optimizing reliability and efficiency in the manufacturing process. As one might imagine, automotive headlights and backlights require particularly reliable LEDs.
- EP2216834 (“Light-emitting apparatus”) is key to high-luminance LEDs of the kind that are needed for automotive headlights and enabled by CSP (Chip Scale Package) products.
The patents asserted in Munich are also from global patent families.
Theoretically, Nichia could assert all those patents against car makers as well, but companies prefer not to sue their own customers. By suing Endrich, a German distributor, Nichia also saved time. Very few UPC cases show up in the public-facing registry so quickly: the filings were made only about two weeks ago (and formally received by the UPC only on October 22).
Plaintiff Nichia is represented by Taylor Wessing’s Roland Kueppers (“Küppers” in German) and defendant Endrich by Hoyng Rokh Monegier’s Dr. Martin Koehler (“Köhler” in German; the “k” in “Rokh”).