Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The Netherlands: Court rules on case in battle between Nikon and ASML

In the patent battle between Nikon and ASML in relation to which 11 cases were pending before the District Court of The Hague, the Court recently ruled on case three.

Nikon is holder of European patent EP 2937734B1, granted on December 28 2016. It has 18 claims with independent product claim 1 and independent process claim 15. Both independent claims incorporate feature 1.6: "The reference (MFM) is covered with a light-transmissive material". The reference is provided on the substrate (wafer) that is used for detecting a projection position of the pattern image to be projected on the wafer. The parties agree that the other features in the claim are present in ASML's machine, but dispute the presence of feature 1.6.

To prove infringement Nikon referred to a publication of ASML and Zeiss from 2010 and a patent application of ASML from the same year. These publications, however, do not disclose anything about the actual features in the machines that ASML is currently selling in 2018.

ASML convincingly argued – with a statement from its senior architect – that at least since the grant of the patent, it only manufactures NXT machines in which the reference is not covered with a light-transmitting material. ASML proved with an expert statement that – although previous machines were equipped with such a light-transmitting coating – this resulted in degradation of the coating over time and hence in decreasing precision. To solve this, ASML removed the coating at the reference position in machines made since March 2016 in Veldhoven. From that moment onwards, even when repairing older machines, the sensors – if any – were replaced with sensors without coating. Repair of the machines anyway was not held to be contributory infringement in the Netherlands as Nikon did not show that an essential component was supplied or that the machine was reconstructed. The Court did not grant an injunction for machines covered by the patent sold by ASML before grant.

Nikon also argued that ASML was obliged to use such a light-transmitting layer since removing it causes problems. ASML however argued, again with an expert statement, that these problems occur theoretically, but not in practice.

Nikon further failed to prove the infringement with, for example, product specifications or a more concrete analysis. Nikon's argument that it was not possible to more thoroughly prove infringement because it is too expensive to buy such a machine (the cost is EUR 80 million) and that ASML would not deliver to a competitor, did not hold. Other means of gathering evidence would have been available, such as a descriptive seizure. Nikon's attempt to reverse the burden of proof to ASML was not honoured by the court, either. It was not sufficient to contest the correctness and credibility of ASML's motivation.

The District Court ruled that there was no direct infringement and also, with regard to repair activities, no contributory infringement. Nikon was directed to pay the court costs of ASML, about EUR 600,000.


Annemie Jaeken


more from across site and ros bottom lb

More from across our site

Varuni Paranavitane, of counsel at Finnegan, examines recent decisions by US and UK courts to demonstrate the proof of infringement that was required
The Federal Circuit will also narrow its investigation into Judge Newman to focus on whether her failure to cooperate constitutes misconduct
The management board will send three names to the Council of the EU for a final decision
Sources say a decision by the IP High Court will make it easier for rights owners to fight infringement
Seán Kelly asked the European Commission how it intends to ensure the EUIPO executive director vote, due tomorrow, will be fair and transparent
Counsel from BMW and Finnegan explain how they got an NPE to sign a covenant agreeing not to sue the automaker ever again
The blue checkmark could be a good tool, but it’s unclear how widespread its adoption will be, say in-house sources
Sarah Harris, partner at Williams & Connolly, reveals how her team secured a copyright victory at SCOTUS and reflects on why the case matters
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A Court of Appeal judge demanded respect for solicitor-judges after reprimanding a barrister for his 'unwise' words