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20 November 2018Patents

Federal Circuit throws out Seoul Semiconductor $4m patent award

The US Court of Appeals for the Federal Circuit yesterday handed a partial victory to South Korean LED producer Seoul Semiconductor in a dispute concerning patents used in flat screen TVs and laptops.

In a decision handed down yesterday, November 19, the court upheld a district court’s ruling that Seoul Semiconductor’s patents were valid but vacated a $4 million jury award for damages.

The Federal Circuit said that Seoul Semiconductor’s patents were not anticipated and that its rival, Japan-based Enplas Corporation, had induced infringement.

However, the court went on to find that the damages calculation was excessive and not supported by evidence.

The dispute surrounds two patents, US numbers: 6,473,554 and 6,007,209. The patents are directed to methods of “backlighting” display panels, particularly for use in TV and laptops.

For seven months between November 2010 and June 2011, Seoul Semiconductor collaborated Enplas Corporation to make lenses for Seoul Semiconductor’s light bars, which are covered by the ‘209 and ‘554 patents.

Seoul Semiconductor said that during the collaboration it was agreed between the parties that the end product would be covered by the Korean company’s patents.

However, in 2012, Seoul Semiconductor suspected that Enplas had provided lenses to competitors, who then went on to sell products in the US.

Seoul Semiconductor wrote to Enplas claiming that it was inducing infringement.

Enplas then sued Seoul Semiconductor at the US District Court for the Northern District of California, alleging that the patents were invalid. Seoul Semiconductor counterclaimed, asserting infringement and seeking damages.

Before trial, Enplas applied for a summary judgment that the ‘209 patent’s claims were anticipated by another patent.

The district court concluded that Enplas had induced infringement of the ‘209 and ‘554 patents and that none of the asserted claims were anticipated. Seoul Semiconductor was awarded $4 million in damages.

In its judgment yesterday, the Federal Circuit said the lower court’s determination that Enplas had induced infringement and that the patents were not anticipated should be upheld.

It said: “Although we recognise that this is a close case, we conclude that the trial record demonstrates that the jury received substantial evidence whereby both Enplas’s knowledge and intent to induce infringement could be reasonably found.”

However, the court said the damages award should be reassessed as it had previously been calculated by taking into account sales of non-accused products.

Ordering a new proceeding, the court said a jury may award a lump-sum, in lieu of a running royalty on future sales, but that the sum “must be based on an estimate of the extent of future sales of accused products, not on past sales of non-accused products.”

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