Got Seoul? LED Willfully Infringes Design Patents

Posted on | April 23, 2008 | No Comments

2008-1309 Nichia Corp. v. Seoul Semiconductor
ND/CA 03:06-cv-0162

Defendant Seoul appeals various orders culminating with Judge Maxine Chesney’s denial of its motions for JMOL and new trial.  A jury had found that Seoul infringed 4 Nichia design patents for light emitting diodes (LEDs).

The court rejected Seoul’s arguments, essentially adopting plaintiff’s view and finding that there was sufficient evidence to support the jury’s verdict.   With respect to infringement:

• because ordinary observers are hypothetical people, there is no requirement to introduce testimony of one at trial;

• jury can apply "ordinary observer" test by comparing photographs of accused design and patent;

• design expert can testify and apply "ordinary observer" test even though he has a heightened design awareness and is not an "ordinary observer";

• patentee does not need to show evidence of actual confusion (although two of Seoul’s witness were apparently confused by photographs of a Seoul’s LED versus Nichia’s–that didn’t help the argument);

• a feature is not "functional" merely because it performs a function–rather, only if its design is governed solely by function; and

• the design was ornamental because it was visible during at least part of its normal life, and its appearance is important to purchasers of LEDs.

The court rejected Seoul’s argument that the patent was invalid because the design features of the LED were too small to be seen unaided by the eye.

A hearing was also scheduled on whether the case was exceptional based on the jury’s finding that Seoul’s infringement was willful.

UPDATE: Nichia cross-appeals (2008-1336) various orders, including one on Partial Summary Judgment.

15 May: Nichia filed an additional notice of appeal regarding Judge Chesney’s order denying attorneys’ fees. 

Documents:

2008-1309_Seoul_JMOL.pdf

2008-1309_Order_on_JMOL.pdf

2008-1336_Partial_SJ.pdf

Nichia_Order_Fees.pdf

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