IP Litigation: Patent
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Paul, Weiss won a major patent victory for Japanese LED maker Nichia Corporation when the Patent Trial and Appeal Board dismissed petitions by U.S. television maker VIZIO seeking a review of the validity of four Nichia patents.
The decisions by the PTAB panel denying inter partes review (IPR) are critically important to Nichia; VIZIO’s IPR challenge took aim at one of our client’s core product lines, a revolutionary technology covering bright-white LEDs used in the backlighting of smartphones, computers and TVs, in street and traffic lights, and in home lighting products. The dismissals mean that Nichia will not have to go through the risk and expense of four separate mini-trials before the PTAB.
Nichia’s four-for-four win is also unusual; historically, the PTAB has granted IPR petitions about 65% of the time. Once granted, about 80% of the panel decisions have sided with challengers, resulting in an invalidity finding against one or more challenged patent claims after trial.
The dispute is rooted in a lawsuit Nichia filed against VIZIO in March 2016 in federal district court in the Central District of California. The suit, in which Paul, Weiss is also representing Nichia, alleges that certain VIZIO LED televisions infringed four of Nichia LED patents. On December 30, VIZIO petitioned the PTAB to institute IPR proceedings for the same four patents, presenting an extensive collection of prior art as well as written testimony from a Princeton electrical engineering professor. But Nichia, tapping Paul, Weiss, argued that VIZIO had mischaracterized the prior art and that a core piece of art undermined VIZIO’s entire petition, because it was drawn from a different field of endeavor from the challenged patents. In its rejection of the petitions, the PTAB panel echoed Paul, Weiss’s arguments.July 7, 2017