On June 30 2010, the Taiwan IP Court delivered a first instance ruling on a patent infringement lawsuit filed by Dr G F Neumark Rothschild (professor emeritus of Columbia University) against two Taiwanese LED suppliers. The lawsuit was dismissed on the grounds that the based-upon Taiwanese invention patent number 41070, entitled, Process for Doping Crystals of Wide Band Gap Semiconductors (corresponding to US patent 4,904,618), was anticipated by a paper published in the May 1969 issue of Physical Review by Crowder et al entitled, "EPR and Luminescence Studies of Er+3 in Acceptor-Doped ZnTe". On the basis of a number of prior art references submitted by the defendants, the court ruled that Rothschild's patent should be deemed invalid.
Rothschild has been quite aggressive in enforcing her patent rights in the United States, accusing various leading international LED manufacturers, including Lumileds, Toyota Gosei and Osram of patent infringement. In addition, Rothschild has filed patent complaints with the International Trade Commission (ITC) against a large number of LED suppliers and even downstream system manufacturers in Taiwan, China, Japan, and Korea, many of which have subsequently reached settlement with and obtained licence from Rothschild.
In the lawsuit filed against the two Taiwanese LED suppliers, the damages claim involved was around $2 million. According to the current code of civil procedure for Taiwan, if a foreign plaintiff does not have any assets in Taiwan that may be used to compensate litigation expenses in the event that the plaintiff's claim is finally rejected, the court shall order the plaintiff to provide a surety bond at the request of the defendant, which is approximately 4% of the value of the damages claim. Accordingly, Rothschild would have been required to prepay a surety bond of around $0.1 million.
With the establishment of the IP Court and the enactment of the Intellectual Property Case Adjudication Rules in July 2008, the IP Court is empowered to rule on patent validity in a patent infringement lawsuit. However, the ruling is binding on the specific lawsuit only. This change in practice, as well as the necessity of depositing a surety bond, may be of interest to foreign entities that consider initiating civil actions to enforce their patent rights in Taiwan.
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| Sumin Lai |
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