Osram Opto wins patent action in USA against Dominant

Feb. 1, 2006
Dominant has been told it must no longer sell certain LEDs in the USA, and Osram has also filed another lawsuit in Germany.
German LED manufacturer Osram Opto Semiconductors has won a patent action in the USA against Dominant Semiconductors Sdn. Bhd., a rival Malaysian manufacturer. The US International Trade Commission (ITC) ruled that Dominant has violated US competition law by infringing Osram's patents.

Download the ITC ruling (PDF, 1.8 MB)

Dominant's view of the ruling is slightly different - see Dominant also claims victory in Osram patent case - and it appears both sides have secured a partial victory.

Dominant is banned from selling numerous LED products into the USA, and Osram has also filed an action for patent infringement against Dominant in Germany.

“The court clearly established that Dominant used our technology illegally and has taken the necessary action in imposing an import ban,” said Rüdiger Müller, President and CEO of Osram Opto Semiconductors. “The decision of the court also highlights Osram’s strength in patents. We are a highly innovative company.”

The patents enforced by Osram against Dominant relate to two fundamental technologies. One technology is for producing LEDs that use a phosphor to convert the blue light of a semiconductor chip into white light. The other technology is for LED structural packages that dissipate heat generated by semiconductor chips in LEDs, such as the chips used in high-power LEDs.

Osram's complaint originates from June 2004, and this was followed by a countersuit from Dominant in August of that year. In May 2005, Dominant claimed to have been cleared of infringing Osram Opto’s patents, although Osram told LEDs Magazine at the time that the decision of the ITC judge in May was a preliminary decision, and that the lawsuit was ongoing.

Following the ITC ruling, Dominant is forbidden from importing its "Power DomiLED" and "Super Small DomiLED" into the USA. Two US dealers of Dominant LEDs involved in the investigations have already signed declarations that they will no longer import or sell the relevant LEDs from Dominant.

The ITC found that all the patents enforced by Osram are valid in law and that Dominant violated nine of these patents. Osram was able to prove patent infringement by all the Dominant products listed in the complaint filed in July 2004. The "Power DomiLED" and "Super Small DomiLED" products from Dominant infringe a total of four different Osram patents.

The ITC also found that Dominant’s LEDs listed in the complaint which emit white light infringe another five Osram patents, but Dominant pointed out that the white LEDs have been modified since the action was filed and no longer infringe these patent rights. Osram however maintains that these modified white Dominant LEDs still infringe Osram patents. In addition, Osram has obtained a dismissal of Dominant's retaliatory lawsuit by the Court in California.

Osram will continue to fight patent violations by Dominant. As part of this fight, it submitted a claim against Dominant in Germany in July 2005. Two German sales partners of Dominant have already announced that they are cancelling their business relationships with Dominant. Osram has filed an action against two further German dealers of Dominant products for violation of ten different patents and utility models. In one case, a judgment by confession on all charges has been passed; in the second case, the defendant admitted violating seven of the ten patents including the white light patents. An initial hearing on the outstanding charges will be taking place soon in front of the civil court in Mannheim.

After many years of intensive R&D, Osram says that it has a large number of patents for LEDs, with numerous patents still pending. Major LED manufacturers such as Nichia and Rohm in Japan, Vishay in the USA and Germany, Everlight, Harvatek, Lite-On and Yashin in Taiwan, Samsung in Korea and Lednium in Australia make use of core Osram technology and have signed license agreements with Osram.