Onlookers: why should yiguang electronics invalidate an expired patent?

A few days ago, the Beijing Intellectual Property Court publicly heard the case of Yiguang Electronics (China) Co., Ltd. and its affiliated companies (hereinafter collectively referred to as Yiguang Electronics) v. the Patent Reexamination Board of the State intellectual property Office and the third party, Japan-Asia Chemical Industry Co., Ltd. (hereinafter referred to as Japan-Asia Chemical) on the administrative case of patent invalidation of "light-emitting devices and display devices" (patent number: ZL 97196762.8). The application date of the invention patent in China is July 29, 1997, and the patent right has expired on July 29, 2017. Due to the complexity and significant impact of the patented technology involved in the case, the Beijing Intellectual Property Court established a 7-member collegial panel composed of 3 judges and 4 jurors. In addition, there are technical investigators, expert assistants and other court appearances to provide corresponding technical assistance. Because Japan and Asia Chemical filed an infringement lawsuit with Yi Optoelectronics in Beijing Intellectual Property Court in March 2016, the invalidity of the patent involved will affect the approval progress of the infringement lawsuit.

LED(Light-Emitting Diode, light-emitting diode) is a kind of semiconductor components that can convert electrical energy into light energy. Compared with traditional incandescent lamps, LED has many advantages such as low working voltage, less heat generation, high power conversion rate, high brightness and easy dimming. The preparation of blue LED is a recognized technical problem in the industry. It is considered to be an impossible task in the 20th century. No one can predict when blue LED will be realized. However, Xiuji Nakamura, with his persistent spirit, has broken through the difficulties one by one. In 1993, Japan and Asia Chemical developed blue LED, enabling LED manufacturers to start mass production of three primary colors (red, green and blue) LED. And Riya Chemical has grown from a small company with less than 200 people to a world-renowned LED leader. Because of the invention of blue LED, Nakamura and early scholars Akasaki and Amano won the 2014 Nobel Prize in Physics ".

On this basis, Nikko Chemical obtained a white light emitting device in 1996 by mixing a blue LED chip with a cerium-activated yttrium aluminum garnet phosphor (YAG:Ce) that can convert blue light into longer wavelength color light, and filed a patent application for "light emitting device and display device" based on this technology worldwide in 1996. The technical problems actually solved by this patent application are: in the existing light-emitting diode that emits white light by color mixing, there is a color deviation of the light-emitting diode as the phosphor deteriorates, or the external removal efficiency of the phosphor emitting black light is low, and the weather resistance is poor.

In the view of Riya Chemical, the patent involved is the basic patent in the field of white LED, and it is another upgrade from blue LED to white LED, because the invention of this technology will speed up the marketization of white LED and reduce the cost of producing LED, and expand the application field of LED.

However, Yiguang Electronics does not think so. Yiguang Electronics agrees with Shuji Nakamura's breakthrough in the field of blue LED because it has made outstanding contributions to promoting the mass production of blue LED. However, in terms of white LED, Japan and Asia Chemical has not made great contributions, especially does not recognize the contribution of the patent involved in the development of white LED.

In March 2016, the Beijing Intellectual Property Court filed an infringement lawsuit against Yiguang. In April of the same year, Yiguang filed an invalidation request with the Patent Reexamination Board against the patent involved in the case. It believed that the patent was not creative and the claim was not available. The support of the specification should be declared invalid. However, the invalidation decision of the Patent Reexamination Board maintains the validity of the patent right. Yiguang Electronics refused to accept the invalidation decision and filed an administrative lawsuit with the Beijing Intellectual Property Court.

It is worth mentioning that this is not the first time the two companies have faced each other head-to-head. Since 2011, the two sides have had disputes in the United States, Germany, Japan, Australia and Taiwan around the patent, and each has its own victory or defeat. The judgments made by the U.S. Michigan Court, the Federal Circuit Court of Appeals and the Federal Supreme Court all ruled that the U.S. patent of "light emitting device and display device" was invalid; the German Federal Patent Court held that the German patent of "light emitting device and display device" was invalid in the first instance, but the German Federal Supreme Court of second instance revoked the above judgment and maintained the validity of the patent. At the same time, in the infringement lawsuit related to the patent, yiguang Electronics has been found to have infringed. In March 2013, the Japan Patent Office recognized a Japanese patent of the patent involved as valid. For another Japanese patent of the patent, the Japan Patent Office issued an invalid decision in May 2012, declaring the patent invalid. However, after Japan and Asia Chemical appealed and amended the claim, the Japan Patent Office decided to maintain the patent valid on the basis of the amended claim.

In the open trial a few days ago, the two sides had a heated debate, and the main point of contention was whether it was obvious to those skilled in the art to adopt cerium-activated yttrium-aluminum pomegranate-based phosphors, that is, whether the patent was inventive.

Japan and Asia believe that in 1993, Japan and Asia Chemical announced the invention of the world's first blue LED, which only solved a major obstacle to the invention of commercial white LEDs, and does not mean that white LEDs are easily available. In 1993-1996, many companies in the industry have invested a lot of energy to explore how to obtain commercial LED, but there is not much harvest. It was not until 1996 that Nikai Chemical really obtained a commercial white LED through the patent involved.

However, Yiguang Fang believes that the blue LED gallium nitride chip cerium activated yttrium aluminum pomegranate phosphor used in the patent involved is a white light production scheme. The blue gallium nitride LED chip and the yttrium aluminum pomegranate phosphor activated by cerium are both existing technologies, and the combination of the two is relatively easy to think of, so it is not creative. The concept of complementary color mixing of light was discovered by scientist Newton in the 1660 s and is a well-known physical concept. After the industrialization of blue LED gallium nitride chips, there is a natural demand in the industry to find suitable phosphors to make white LEDs. Cerium-activated yttrium aluminum garnet-based phosphor is not a new material, but an optical material that has existed since the 1970 s, and is a "star" phosphor that is widely used in different light sources. Therefore, it is not difficult to find cerium-activated yttrium aluminum garnet-based phosphor. When those skilled in the art understand that blue LED has been successfully developed, it is natural to choose the well-known cerium activated yttrium aluminum garnet phosphor, therefore, the patent involved should be declared invalid.

In the view of Riya Chemical, white LED is a subversive creation in the field of lighting since Edison invented incandescent lamp, and the patent involved is one of the basic patents of white LED invention. Without technological breakthroughs, such a major lighting revolution would not have happened. The patent in question is a commercial white LED, which is composed of a blue LED chip and a yellow-emitting cerium-activated yttrium aluminum garnet phosphor, and has high performance, high stability and good color rendering index. The white LED is not only suitable for LCD displays and indicators, but also can be used for general lighting like incandescent lamps and fluorescent lamps, thus opening a new era in which the white LED is widely used for general lighting. In particular, we should avoid the 'hind' way of thinking about technological inventions 20 years ago. Perhaps now it seems that the white LED technology has been very mature, and the patent involved may be considered to be nothing special, but at that time, in the face of the new LED environment of gallium nitride LED chips, which are only encapsulated by resin and contain bright blue light tens of times stronger than sunlight, technicians could not predict whether they could successfully select suitable fluorescent materials from a large number of candidates, the prior art does not provide any enlightenment, and this invention is undoubtedly very creative.

Regarding the creativity of the patent, both parties hold their own opinions, and the case is still under trial. The invalidity of the patent involved is related to the trial progress of the infringement lawsuit. The civil infringement case between the two parties is still in the appraisal process due to the design to the technical appraisal, and the case has not yet been formally heard.