Seoul Semiconductor wins big in Germany

The dispute concerns LED technology, in particular thermal regulation. Düsseldorf Regional Court ruled today that Mouser Electronics, which distributes Everlight LEDs, has infringed a patent owned by the South Korean company, Seoul Semiconductor (case ID: 4a O 37/17).

Everlight had filed two parallel suits against Seoul Semiconductor (case ID: 2 O 86/17) and its German distributor Neumüller Elektronik (case ID: 7 O 127/17) respectively, alleging infringement of Everlight’s patent EP 1169735. However, Mannheim Regional Court ruled on Friday that Seoul Semiconductor did not infringe the patent.

Everlight’s European patent protects a special casing designed to remove heat generated by LEDs.

Everlight requested that the court prohibit Seoul Semiconductor and Neumüller from selling, manufacturing, importing or exporting any infringing products. It also requested the court order both companies to recall and destroy any inventories of infringing products, and compensate Everlight for its infringement.

The Mannheim judges refused to grant the request and dismissed the allegation of infringement. Everlight can appeal all three decisions.

Julia Schönbohm

Global gatherings

The LED industry has been plagued by a bitter feud between various manufacturers for several years now. A global dispute between Japanese chemical engineering company Nichia and Everlight has played out before numerous courts.

The companies fought over Nichia’s YAG patent, which is fundamental to LED technology, until 2016 when the patent was finally confirmed by the German Federal Court of Justice.

Other lawsuits between the two companies are still pending.

The present case between Everlight and Seoul Semiconductor is also part of a larger cross-border dispute between the South Korean company and competitors, including Everlight. The dispute made its way to Germany in 2017; soon after, both companies were heavily involved in litigation.

In March 2017, Seoul Semiconductor filed an infringement suit against Mouser, a Texas, US-based distributor of electronics. This was today upheld by Düsseldorf Regional Court. Shortly after the first suit was filed, a further claim was filed against Mouser over a utility model (case ID: 4a O 49/17).

A further month later, Everlight filed its two lawsuits at Mannheim Regional Court.

Both sides filed reciprocal claims before the German Federal Patent Court in response to the suits. There are also parallel proceedings in China, Japan, Korea, the United States and Italy. One case before the British High Court has since been settled by mutual consent. Everlight’s British patent has been revoked.

Clemens Plassmann

Change of counsel 

Seoul Semiconductor is a key client for the young patent practice around Linklaters partner Julia Schönbohm in Frankfurt. Schönbohm moved from DLA Piper to Linklaters at the end of 2014 to rebuild the firm’s patent practice.

Everlight originally filed its two lawsuits with Quinn Emanuel Urquhart & Sullivan and the Munich patent law firm Frohwitter. Both firms know each other well from the representation of IPCom, the NPE led by law firm founder Bernhard Frohwitter.

However, Everlight changed counsel shortly after and entrusted the proceedings to Hogan Lovells partner Clemens Plassmann. He had previously defended Everlight in other infringement proceedings. Quinn Emanuel continues to advise Everlight in proceedings against Nichia. In the past, the Taiwanese company has also retained Hoyng ROKH Monegier, for example in the dispute with Nichia over the YAG patent.

Mouser has retained Bird & Bird for patent lawsuits in the past. As this case concerns Everlight products, the patent attorneys at Frohwitter representing Everlight also advised Mouser.

For Seoul Semiconductor
Linklaters (Frankfurt): Julia Schönbohm (lead); associates: Bolko Ehlgen, Atif Bhatti, Lisa Bauer, Natalie Ackermann-Blome
Schneiders & Behrendt (Bochum): Olaf Isfort (patent attorney)

For Everlight
Hogan Lovells (Düsseldorf): Clemens Plassmann; associate: Dania Esser
Frohwitter (Munich): Edward Tomlinson, Mathias Himmelsbach (both patent attorneys)

For Mouser
Bird & Bird (Düsseldorf): Oliver Jüngst; Counsel: Florian Schmidt-Bogatzky
Frohwitter (Munich): Edward Tomlinson, Mathias Himmelsbach (both patent attorneys)

Regional Court Düsseldorf, 4a Civil Chamber
Tim Crummenerl (presiding judge)

Regional Court Mannheim, 2nd Civil Chamber
Holger Kircher (presiding judge)

Regional Court Mannheim, 7th Civil Chamber
Peter Tochtermann (presiding judge)

Parallel ongoing cases in Europe

Germany
Regional Court Düsseldorf (case ID: 4a O 49/17): judgement on the 25/04/2019
Federal Patent Court (case ID: 2 Ni 41/17 nullity claim against Everlight EP 1169735): oral hearing in 2019
Federal Patent Court (nullity claim against Seoul Semiconductor patent): suit filed
Federal Patent Court (nullity claim against Seoul Semiconductor utility model): judgement expected in March 2019

Italy No details known