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<2013 Edition> LED Key Patent Analysis : Nichia’s soon –to-be-expired YAG Phosphor Patents

1. Patent Analysis Overview

Analysis Background and Purpose

Analysis of Nichia's YAG Patents

Patent Analysis Scope

Methodology

LED Phosphor Overview



Recently, global companies are increasingly using their patents as weapons to maintain competitiveness of their products. Similarly in the LED industry, leading companies are forming patent networks to hinder new companies from entering the market. In particular, Nichia has a patent right for a yellow phosphor (YAG), which first enabled implementation of white LEDs, facilitating the growth of the LED market. This has also made a great contribution of Nichia’s LED business. Since there will be many changes in the industry with expiration of the patent, there is growing interest. In fact, considering that the expiration of Nichia’s YAG patent is frequently in industry news articles, you can see how much interest is paid on availability of the YAG phosphor. Nevertheless, it is not easy to obtain objective information to grasp what are the effects of the expiration of the YAG phosphor patent and Nichia’s YAG patent portfolio. In this context, SNE Research has published a report, which presents an intensive analysis of the patent claims of Nichia’s YAG patent (US Patent No. 5998) set to expire soon and the claims of the family patents (US,KR,JP, and EP) and other related patents, which is expected to be a helpful guideline to comprehend what the expiration of Nichia’s YAG patent signifies and what effects it will have. (In this report, analyzed are the patent claims of Nichia’s YAG patent, US Patent No. 5998925, and 54 family patents thereof (US, KR, JP, and EP) and the above key patents and family patents thereof. Besides, it provides information of other major YAG patents filed by Nichia other than family patents of US Patent No. 5998925, other related patents filed by other companies, and the status of patent disputes over Nichia YAG. ) In this sense, this report is expected to be a great help for related businesses to conduct more effective R&D and prevent unnecessary patent disputes over LED YAG phosphors by providing this in-depth systematic analysis of the original patent, scheduled to expire. In addition, this report provides an effective approach to help comprehend Nichia’s patent portfolio for YAG-based materials more objectively, impressing on related companies the importance of making plans for the soon-to-be-expired patents and interpreting patent claims thereof.

Analysis Background and Purpose



No. Application Date

Patent No.

Expiration Date

Title Back- ward

For- ward

Family Dispute

Note

1 1997.07.29 0599**** 2017. 07. 29

2 1999.04.28 0606**** 2017. 07. 29

3 1999.12.10 0661**** 2017. 07. 29

4 2000.12.15 0660**** 2017. 07. 29

5 2003.07.01 0707**** 2017. 07. 29

6 2003.07.01 0736**** 2017. 07. 29

7 2003.10.03 0702**** 2017. 07. 29

8 2004.06.10 0712**** 2017. 07. 29

9 2005.08.23 0721**** 2017. 07. 29

Nichia's Key YAG Patents

1) List of Nichia’s U.S. issued patents on YAG

Currently, Nichia has 21 patents on YAG (U.S. issued). After a comprehensive review based on the date of filing, and the

number of citations, family patents, and disputes, US Patent No. 5998925 turned out to be the original patent and expire

soonest.



This report is composed of the analysis of Nichia Patent 925 and patent families thereof, the in-depth analysis of the claims of Patent 925,

the analysis of related patents, the analysis of patent disputes over Nichia YAG in the United States, the anticipated effects of the expiration

of the original patent, and conclusion/implication.

• Period: ~ 2013.2.1

• Target country: KR, JP, US, EP, PCT *

• Search DB : KIWEE, KIPRIS, FOCUST

Patent search/key patent selection

Analysis of effect of the patent expiration

Analysis of key and family patens

• Analysis of key patent genealogy

• Analysis of key patent citations

• Analysis of key patent claims

• Analysis of claims of patent families

Conclusion/implication

• Result of key patent analysis

• Implication of the expiration of the key patent

In-depth analysis of key patent claims

• In-depth analysis of key patent claims

• Element depth, Analysis on limitations

Anticipated effect

- Provides information for Nichia YAG patents - Establish R&D strategies - Establish strategies for patenting activities/ prevent patent disputes - Create new business opportunities

Methodology

• Analysis of the effects of the expiration of the Nichia YAG patent

- Effects on Nichia phosphor patents - Opportunities for other companies/ countermeasures

Analysis of related YAG patents

• Analysis of patent summaries

• Analysis of patent claims

Nichia YAG patent disputes (USA)

• Patent litigations and results



Significance of Patent Expiration

While proprietary rights for movable assets/real estate exist infinitely, patent rights are finite. The reason why patent rights are limited as to time is they are intended to encourage invention and promote industrial development, and the intended goal can be accomplished as long as the exclusive rights are granted for a limited period of time. In the United States, the term of patent is usually 20 years from the date of filing (the date when the patent application is filed to the U.S. patent office. As for patents filed before June 8, 1995, the term of patent is 1) 17 years from the issue date or 2) 20 years from the filing date, whichever is longer. In Korea, the term of patent is 20 years from the filing date. If a patent right expires, a third party can also utilize the invention disclosed in the claims of the patent.

Div. Patent Utility model Design Trademark

Definition Inventing a new object or

method for the first time

Improving an existing

invention for more convenient

and effective use.

Right for something awakening

an esthetic sense (combination

of shape, color, etc. of an

object)

A combination of symbol, letter,

figure, color, etc., distinctive from

that of others

Example

Bell’s invention of the telephone. Integration of a transmitter and a

receiver

Shape and color of a desk

telephone Company name and trademark

Term 20 years from the filing

date

10 years from the filing

date

15 years from the date of

registration

10 years from the date of

registration

(renew every 10 years)

[Table] Types of industrial property rights and terms



3. Nichia YAG Phosphor Patent- family patent analysis

925 Patent Overview

925 Patent Genealogy

925 Patent Family- patent trend by year

925 Patent Family List (US, KR, JP, EP)

925 Patent Family - patent summary analysis

17



925 Patent Overview

US Patent 5998925 (title of invention: Light emitting device having a nitride compound semiconductor and a phosphor containing a garnet fluorescent material), selected as the key original patent among Nichia’s YAG phosphor patents, was filed on July 29, 1997 in the United States, claiming priority on JP 9-081010(filing date: 1997.03.31), JP 8-359004(filing date: 1996.12.27), JP 8-245381(filing: 1996.09.18), JP 8-244339(filing: 1996.09.17), and JP 8-198585(filing: 1996.07.29)and issued on December 7, 1999. US Patent 5998925 is scheduled to expire after 20 years from its filing date on July 29, 2017. [925 patent abstract]

Application No. Filing date Office of filing Representative drawing

[US]089***** 1997.07.29 US

Patent No. Issue date Expiration date

[US]059***** 1999.12.07 2017.07.29

Title Light emitting device having a nitride compound semiconductor and a phosphor containing a garnet fluorescent material

[abstract] A light emitting device, …..



As mentioned earlier, US Patent 599**** claims priority on five patents filed in Japan in 1996, but the one of the Japanese patent families of US Patent 59**** is set to expire on July 28, 2017 and the remaining patents on July 29, 2017. Thus, the Japanese original patents of US Patent 599**** are scheduled to expire in 2017. Besides, the Korean and European patent families of US Patent 599**** are set to expire on July 29, 2017 along with US Patent 599****. US Patent 599**** is selected as one of key patents with 4 forward citations, 504 backward citations, and 136 patent families across the world. Considering that Nichia filed five patent infringement lawsuits over YAG phosphors in the United States, and all of them were regarding this patent (US Patent 599****), it has contributed to strengthening competitiveness of the company’s LED business. US Patent 599**** has total 23 claims including 3 independent claims and 20 dependent claims. [Patent description and claim analysis]

Patent description Analysis of patent claims

Characterized by a light emitting device comprising a semi-conductor light-emitting layer composed of a nitride compound semiconductor and a photoluminescence phosphor containing a garnet fluorescent material comprising at least one element selected from the group consisting of Y, Lu, Se, La, Gd and Sm, and at least one element selected from the group consisting of Al, Ga and In, and being activated with cerium.

• The phosphor presented in this invention is limited to a garnet fluorescent material comprising at least one element from ① Group : ② Group : ③ cerium, and the scope of the patent right is wide in that a YAG phosphor is applied to an LED. •This patent has total 23 claims, among which Claim 1, 14, and 23 are independent claims.

Importance of the technological element Original technology (○), element technology ( )，application technology ( ), Reference Technology( )

Range of patent rights Basic ( ), distinctive ( ), specific (○)



925 Patent Genealogy 925 Patent’s position can be estimated through its patent genealogy. As shown in the genealogy, 925 Patent claims priority on the five Japanese patents and has 136 patent families, 4 forward citations, and 504 backward citations. Considering its patent families are distributed across the world and the number of backward citations outnumbers forward citations, it is highly likely to be an original patent.



925 Patent Citation Analysis

Backward Citation (4 Patents)

Assignees

2

1

1

Forward Citation (504 Patents)

Assignees

13

12

11

10

9

8

8

7

6

6

6

6

5

5

Forward Citation (504 Patents)

Assignees

38

36

32

25

21

19

17

16

14



Forward Citation Assignee Title of Invention Legal Status

US614**** Valid

US615**** Valid

US616**** Valid

US620**** Valid

US624**** Valid

US625**** Valid

US627**** Valid

US627**** Valid

US629**** Valid

US629**** Valid

US629**** Valid

US631**** Valid

Valid

Description of forward citations

925 Patent Citation Analysis



As for the patent trend of the 54 patent families for 925 Patent filed in the United States, Europe, Korea, and Japan, the U.S. has 22 filings, Europe 14 filings, Japan 10 filings, and Korean 8 filings. While the United States and Japan have recently had patent applications at a relatively steady level, Europe reached a peak in patent filings in 1997 and Korea in the early 2000s.

925 Patent Family - patent trend by year



No. Country Application

No. Application

Date Patent

No. Title Expiration

Date

1 US 08902*** 1997.07.29 0599****

2 US 09300*** 1999.04.28 0606****

3 US 09458*** 1999.12.10 0661****

4 US 09736*** 2000.12.15 0660****

5 US 10609*** 2003.07.01 0707****

6 US 10609*** 2003.07.01 0736****

7 US 10677*** 2003.10.03 0702****

8 US 10864*** 2004.06.10 0712****

9 US 11208*** 2005.08.23 0721****

10 US 11653*** 2007.01.16 0732****

925 Patent Family List



925 Patent Family - patent summary analysis

Title Light emitting device having a nitride compound semiconductor

and a phosphor containing a garnet fluorescent material

Assignee Nichia Kagaku Kogyo Kabushiki Kaisha Country US

Inventor Shimizu; Yoshinori / Sakano; Kensho

Noguchi; Yasunobu / Moriguchi; Toshio Legal Status Patented

Application No. US0890**** Publication NO. Patent No. US0599****

Application Date 1997.07.29 Publication Date Patent Date 1999.12.07

Abstract

The white light emitting diode comprising ……



4. Nichia YAG Phosphor Patent Families- patent claim

analysis(US, KR)

Significance of Claim Structure

925 Family US Claim Analysis

925 Family KR Claim Analysis

128



US5998925 Claim Analysis

Claim Structure

* Depth에 나와 있는 숫자는 특허 원문상에 나와 있는 종속항의 숫자임.



INDEPENDENT CLAIM

1

A light emitting device, ……

14

A light emitting diode comprising: ……

23

A white light emitting diode comprising ……



5. Nichia YAG Phosphor Patent- in-depth analysis

of patent claims

925 Patent: in-depth analysis

Claim 1: in-depth analysis

Claim 14 : in-depth analysis

Claim 23 : in-depth analysis

186



925 Patent: in-depth analysis

The following is the in-depth analysis of the independent claims of Nichia’s 925 patent. 925 Patent has three dependent claims (Claim 1, 14, and 23). We have analyzed elements of each claim from high level to detailed level, with an emphasis on the limitation factors of the claim. •According to the analysis of each element specified in Independent Claim 1, 1) 2)

• According to the analysis of each element specified in Independent Claim 14, the light emitting diode comprises a mount lead, a LED Chip, a coating material, and a molding material, wherein 1) 2)

• According to the analysis of each element specified in Independent Claim 23, in the white light emitting diode 1) 2)



INDEPENDENT CLAIM

1

A light emitting device, ……

Element Light emitting device

Light emitting component

Nitride compound semiconductor

phosphor Garnet fluorescent material

CLAIM 1 in-depth analysis



Title Light-radiating semiconductor component with a luminescence conversion element

Assignee Osram Opto Semiconductors GmbH. Country US

Inventor Ulrike Reeh, Klaus Hhn, Norbert Stath, Gnter Waitl, Peter Schlotter, Jrgen Schneider, Ralf Schmidt Legal Status Patented

Application No. 0973**** Publication NO. 2001000**** Patent No. 0657****

Application Date 2000.12.07 Publication Date 2001.05.31 Patent Date 2003.06.10

Abstract

The light-radiating semiconductor component has ……

Drawing No.

주변특허 요지분석 - US6576930



7. Nichia YAG Phosphor- patent infringement lawsuits (US)

Nichia YAG Phosphor US Patent lawsuit List

Case1 NICHIA CORPORATION v. SHARPER IMAGE CORPORATION

Case2 NICHIA CORPORATION v. JM GROUP INC

Case3 NICHIA CORPORATION v. INTERMATIC INC.

Case4 NICHIA CORPORATION v. JIAWEI NORTH AMERICA, INC. ET AL

Case5 NICHIA CORPORATION v. WILMAR CORPORATION

Case6 EVERLIGHT ELECTRONICS CO., LTD ET AL v. NICHIA CORPORATION ET AL



No. Docket No. Title Plaintiff Defendant Date Filed

1 3:04CV***** NICHIA CORPORATION vs.

SHARPER IMAGE CORPORATION NICHIA SHARPER 2004-04-07

2 2:05CV***** NICHIA CORPORATION vs. JM

GROUP INC NICHIA JM GROUP 2005-02-04

3 1:06CV***** NICHIA CORPORATION vs.

INTERMATIC INC. NICHIA INTERMATIC 2006-01-24

4 2:09CV***** NICHIA CORPORATION vs. JIAWEI

NORTH AMERICA, INC. ET AL NICHIA JIAWEI NORTH 2009-11-05

5 2:10CV***** NICHIA CORPORATION vs. WILMAR CORPORATION

NICHIA WILMAR 2010-09-13

6 2:12CV***** EVERLIGHT ELECTRONICS CO.,

LTD ET AL vs. NICHIA CORPORATION ET AL

EVERLIGHT EMCORE

NICHIA 2012-04-19

Nichia YAG Phosphor US Patent lawsuit List

So far, Nichia has filed five patent infringement lawsuits for its YAG phosphor patent in the United States. Most of those lawsuits were filed after breakdowns of licensing talks, and all of those five cases were settled as the dependents were reconciled with Nichia. The Taiwanese company, Everlight, filed a patent infringement lawsuit for US Patent 6653215 and patent nullity suits for 925 Patent and US Patent 7531960 against Nichia.

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