The complaint concerns white LEDs featuring conversion technology which have been patented by Osram. Typical applications include, for instance, display backlighting for mobile telephones and car radios.
This technology was developed by the staff of Osram Opto Semiconductors in the mid-to-late 1990s. It permits the production of white LEDs with blue-emitting InGaN (indium gallium nitride) chips by using a suitable phosphor converter. The company says that it was the first manufacturer to launch the white single-chip LED on the market.
The situation is complicated by the fact that Citizen manufactures white LEDs using technology licensed from Nichia, under an agreement (the very first signed by Nichia) dating back to early 2002 (see Patents: Blue and white LEDs).
Later in 2002, Nichia and Osram Opto Semiconductors signed a cross-licensing agreement, allowing the companies access to each other’s technology. However, this does not allow third-party access. In June 2004, Nichia issued a statement aimed at its competitors that have signed licensing agreements with Osram Opto Semiconductors in relation to white LEDs. Nichia was keen to stress that, despite a cross-license agreement between Nichia and Osram, a license granted to a third party under Osram’s patents does not imply a license under Nichia’s patents.
Action against Citizen
In its lawsuit, Osram stresses that Citizen has infringed and is still infringing its patents by importing, selling and offering certain white LEDs in Germany. Osram intends to obtain a restraining order and is applying for compensation.
As part of the lawsuit, Osram hopes that Citizen will also be prevented from importing numerous LEDs, as well as Citizen products containing these LEDs, into Germany.
Action was similarly taken against a distributor, which has since declared that it will refrain in future from distributing Citizen products which infringe Osram's patents.
Last May, Osram had already taken proceedings against the Malaysian manufacturer of LED Dominant Semiconductors Sdn. Bhd. at the United Nations Commission on International Trade Law. Osram is currently issuing warnings to Dominant and its distributors in Germany, France and Taiwan on the basis of the patent infringements. Two German distributors have already issued a declaration of discontinuance.
"Our objective in taking legal action against Citizen and issuing warnings to Dominant is to prevent unauthorised use of our technology," stated Rüdiger Müller, CEO of Osram Opto Semiconductors. "We have a considerable number of patents which were acquired over the course of many years of intensive research and development work."