SNE Research. Publisher Sample

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1 SNE Research Publisher Sample Phone: (US) or or (Int'l) Hours: Monday - Thursday: 5:30am - 6:30pm EST Fridays: 5:30am - 5:30pm EST customerservice@marketresearch.com MarketResearch.com

3 Analysis Background and Purpose 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 , 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 , 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. Copyright(c) SNE Research. All Rights Reserved. 6

4 Nichia's Key YAG Patents 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 turned out to be the original patent and expire soonest. 1) List of Nichia s U.S. issued patents on YAG No. Application Date Patent No. Expiration Date Title Backward Forward Family Disp ute Note **** **** **** **** **** **** **** **** **** Copyright(c) SNE Research. All Rights Reserved. 7

5 Methodology 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. Patent search/key patent selection Period: ~ Target country: KR, JP, US, EP, PCT * Search DB : KIWEE, KIPRIS, FOCUST 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 In-depth analysis of key patent claims In-depth analysis of key patent claims Element depth, Analysis on limitations Analysis of related YAG patents Analysis of patent summaries Analysis of patent claims Nichia YAG patent disputes (USA) Patent litigations and results Analysis of effect of the patent expiration Analysis of the effects of the expiration of the Nichia YAG patent - Effects on Nichia phosphor patents - Opportunities for other companies/ countermeasures Conclusion/implication Result of key patent analysis Implication of the expiration of the key patent Anticipated effect - Provides information for Nichia YAG patents - Establish R&D strategies - Establish strategies for patenting activities/ prevent patent disputes - Create new business opportunities Copyright(c) SNE Research. All Rights Reserved. 10

Significance of Patent Expiration While proprietary rights for movable assets/real estate exist infinitely, patent rights are finite.

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.

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.

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.

6 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. [Table] Types of industrial property rights and terms 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 Bell s invention of the telephone. Integration of a transmitter and a receiver Shape and color of a desk telephone Company name and trademark Example 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) Copyright(c) SNE Research. All Rights Reserved. 14

7 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 Copyright(c) SNE Research. All Rights Reserved

8 925 Patent Overview US Patent (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 (filing date: ), JP (filing date: ), JP (filing: ), JP (filing: ), and JP (filing: )and issued on December 7, US Patent is scheduled to expire after 20 years from its filing date on July 29, [925 patent abstract] Application No. Filing date Office of filing Representative drawing [US]089***** US Patent No. Issue date Expiration date [US]059***** Title Light emitting device having a nitride compound semiconductor and a phosphor containing a garnet fluorescent material [abstract] A light emitting device,.. Copyright(c) SNE Research. All Rights Reserved. 18

9 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, Thus, the Japanese original patents of US Patent 599**** are scheduled to expire in 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 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. Importance of the technological element Range of patent rights Analysis of patent claims 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. Original technology ( ), element technology ( ),application technology ( ), Reference Technology( ) Basic ( ), distinctive ( ), specific ( ) Copyright(c) SNE Research. All Rights Reserved. 19

forward citations, and 504 backward citations.

10 925 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. Copyright(c) SNE Research. All Rights Reserved. 20

11 925 Patent Citation Analysis Backward Citation (4 Patents) Assignees Forward Citation (504 Patents) Assignees Forward Citation (504 Patents) Assignees Copyright(c) SNE Research. All Rights Reserved. 21

12 925 Patent Citation Analysis Description of forward citations Forward Citation Assignee Title of Invention Legal Status US614**** US615**** US616**** US620**** US624**** US625**** US627**** US627**** US629**** US629**** US629**** US631**** Copyright(c) SNE Research. All Rights Reserved. 27

13 925 Patent Family - patent trend by year 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. Copyright(c) SNE Research. All Rights Reserved. 67

14 925 Patent Family List No. Country Application No. Application Date Patent No. Title Expiration Date 1 US 08902*** **** 2 US 09300*** **** 3 US 09458*** **** 4 US 09736*** **** 5 US 10609*** **** 6 US 10609*** **** 7 US 10677*** **** 8 US 10864*** **** 9 US 11208*** **** 10 US 11653*** **** Copyright(c) SNE Research. All Rights Reserved. 68

15 925 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 Publication Date Patent Date The white light emitting diode comprising Abstract Copyright(c) SNE Research. All Rights Reserved. 74

16 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 Copyright(c) SNE Research. All Rights Reserved

19 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 Copyright(c) SNE Research. All Rights Reserved

20 925 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) Copyright(c) SNE Research. All Rights Reserved. 187

21 CLAIM 1 in-depth analysis A light emitting device, INDEPENDENT CLAIM 1 Light emitting component Nitride compound semiconductor Element Light emitting device phosphor Garnet fluorescent material Copyright(c) SNE Research. All Rights Reserved. 188

22 주변특허요지분석 - US 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 **** Patent No. 0657**** Application Date Publication Date Patent Date The light-radiating semiconductor component has Drawing No. Abstract Copyright(c) SNE Research. All Rights Reserved. 193

23 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 Copyright(c) SNE Research. All Rights Reserved. 202

24 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 and patent nullity suits for 925 Patent and US Patent against Nichia. No. Docket No. Title Plaintiff Defendant Date Filed 1 3:04CV***** NICHIA CORPORATION vs. SHARPER IMAGE CORPORATION NICHIA SHARPER :05CV***** NICHIA CORPORATION vs. JM GROUP INC NICHIA JM GROUP :06CV***** NICHIA CORPORATION vs. INTERMATIC INC. NICHIA INTERMATIC :09CV***** NICHIA CORPORATION vs. JIAWEI NORTH AMERICA, INC. ET AL NICHIA JIAWEI NORTH :10CV***** NICHIA CORPORATION vs. WILMAR CORPORATION NICHIA WILMAR :12CV***** EVERLIGHT ELECTRONICS CO., LTD ET AL vs. NICHIA CORPORATION ET AL EVERLIGHT EMCORE NICHIA Copyright(c) SNE Research. All Rights Reserved. 203

SNE Research. Publisher Sample

SNE Research. Publisher Sample SNE Research http://www.marketresearch.com/sneresearch-v3978/ Publisher Phone: 800.298.5699 (US) or +1.240.747.3093 or +1.240.747.3093 (Int'l) Hours: Monday - Thursday: 5:30am - 6:30pm EST Fridays: 5:30am