Patent complaint targets LED makers, consumer electronics industry

March 25, 2008
The owner of a patent relating to doping processes in wide bandgap semiconductors has asked the ITC to exclude products that use LEDs and lasers that infringe the patent.
The U.S. International Trade Commission (ITC) has agreed to investigate a complaint that seeks to block the importation of a wide array of LEDs, lasers and consumer electronics products into the USA.

The action alleges that 30 major electronics manufacturers in Asia and Europe have violated a patent for producing GaN-based LEDs and laser diodes; such components are used in products such as Sony Blu-ray players, Motorola Razr phones and Hitachi camcorders.

The complainant (and patent owner) is Gertrude Rothschild, who is a Professor Emeritus at Columbia University. The full list of companies targeted by the complaint is shown at the bottom of this page. It includes major LED makers such as Avago, Everlight, Seoul Semiconductor and Stanley, as well as consumer electronics giants including Nokia, Sharp and Toshiba.

The complaint relates specifically to a process used in the production of GaN-based LED chips and laser diodes. The purpose of the complaint would appear to be to seek some form of licensing agreement from LED makers that use the patented process.

In turn, if the complaint is successful, companies (such as Nokia) that use GaN-based LEDs or lasers would either need to ensure that their components are IP-compliant, or reach separate licensing agreements.

Settlement with Philips Lumileds

Rothschild has previously filed patent infringement lawsuits against five leading LED makers; Nichia, Osram, Toyoda Gosei, Philips Lumileds and Cree. Out-of-court settlements have been reached with 4 of these companies (the exception being Cree), most recently Philips Lumileds (see press release).

In June 2005, Rothschild alleged that Lumileds had infringed US patent no. 4,904,618 entitled “Process for Doping Crystals of Wide Band Gap Semiconductors,” and US patent no. 5,252,499 entitled “Wide Band-Gap Semiconductors Having Low Bipolar Resistivity and Method of Formation.”

The press release of March 10 said that Rothschild had "settled" her patent infringement action against Philips Lumileds, and that the terms of the settlement "are undisclosed". There is no indication whether the "settlement" includes any kind of licensing arrangement.

The press release describes Rothschild as "one of the world’s foremost experts on doping wide band-gap semiconductors" and said that "through the process claimed in Rothschild's patents, it has become commercially feasible to produce such [blue and green] LEDs."

ITC complaint

The ITC complaint alleges violations of section 337 of the Tariff Act of 1930 in the importation into the USA of certain short-wavelength LEDs, laser diodes, and products containing such devices that infringe a patent owned by Rothschild. The complainant requests that the ITC issue exclusion orders and cease and desist orders.

"Rothschild made a seminal breakthrough in the production of the blue and ultraviolet LEDs that are essential to a wide variety of consumer electronics products today," said Albert Jacobs of law firm Dreier LLP. "She richly deserves both scientific as well as commercial recognition for her work."

A press release from Dreier LLP says that Rothschild conducted "ground-breaking research" in the 1980s and 1990s into "the electrical and optical properties of so-called wide band-gap semiconductors…This research has proven pivotal in the development of short-wavelength emitting (blue and violet) diodes that are now widely used in consumer electronics."

The Dreier press release refers to a US patent issued in 1993, which we assume is US patent no. 5,252,499. This claims a process in which atomic hydrogen is used to ensure the correct doping levels (carrier concentrations) in a wide-bandgap semiconductor device.

The patent focuses on the application of this process in II-VI semiconductors such as zinc selenide (ZnSe) and does not mention gallium nitride at all. Luckily for the patent owner however, the patent claims cover all wide bandgap semiconductors.

Companies targeted by ITC complaint

Avago Technologies of Singapore;
Bacol Optoelectonic Co. Ltd. of Taiwan;
Dominant Semiconductors Sdn. Bhd. of Malaysia;
Everlight Electronics Co., Ltd., of Taiwan;
Exceed Perseverance Electronic Ind. Co., Ltd., of China;
Guangzhou Hongli Opto-Electronic Co., Ltd., of China;
Harvatek Internaional Inc. of Taiwan;
Hitachi, Ltd., of Japan;
Kingbright Electronic Co., Ltd., of Taiwan;
LG Electronics of Korea;
Lite-On Technology Corp. of Taiwan;
Lucky Light Electronics Co., Ltd., of China;
Matsushita Electric Industrial Co., Ltd., of Japan;
Motorola, Inc., of Schaumburg, IL;
Nokia of Finland;
Opto Tech Corporation of Taiwan;
Pioneer Corporation of Japan;
Rohm Co., Ltd., of Japan;
Samsung Group of Korea;
Sanyo Electric Co., Ltd., of Japan;
Seoul Semiconductor Co., Ltd., of Korea;
Sharp Corporation of Japan;
Shenzhen Unilight Electronic Co., Ltd., of China;
Shinano Kenshi Co., Ltd., of Japan;
Sony Corporation of Japan;
Sony Ericsson Mobile Communications AB of Sweden;
Stanley Electric Co., Ltd., of Japan;
Toshiba Corporation of Japan;
Vishay Intertechnology, Inc., of Malvern, PA
Yellow Stone Corporation of Taiwan