4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 1 of 29 Pg ID 51923
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`and EMCORE CORPORATION,
`
`Plaintiffs,
`
`v.
`
`NICHIA CORPORATION, and
`NICHIA AMERICA CORPORATION
`
`Defendants and
`Counter-Plaintiffs,
`
`v.
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`EMCORE CORPORATION, and
`EVERLIGHT AMERICAS, INC.,
`
`Counter-Defendants.
` /
`
`Case No. 12-cv-11758
`
`UNITED STATES DISTRICT COURT JUDGE
`GERSHWIN A. DRAIN
`
`UNITED STATES MAGISTRATE JUDGE
`MONA K. MAJZOUB
`
`OPINION AND ORDER GRANTING JUDGMENT IN FAVOR OF
`NICHIA ON EVERLIGHT’S INEQUITABLE CONDUCT CLAIMS
`
`I. INTRODUCTION
`
`Everlight Electronics Co., Ltd. (“Everlight”), commenced this suit seeking a declaratory
`
`
`
`
`
`
`
`
`
`
`
`judgment of non-infringement, invalidity, and unenforceability of Nichia Corporation’s
`
`(“Nichia”), United States Patent No. 5,998,925 (the “‘925 Patent”) and United States Patent No.
`
`7,531,960 (the “‘960 Patent”). The patents-in-suit relate to light emitting diode (“LED”)
`
`technology. The suit was brought pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201,
`
`2202, and the patent laws of the United States, 35 U.S.C. § 1 et seq. Nichia filed counterclaims
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 2 of 29 Pg ID 51924
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`
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`against Everlight for direct and indirect infringement of the ‘925 and ‘960 Patents. The parties
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`are business competitors in the manufacture and supply of white LEDs.
`
`A jury trial was held in April of 2015. On April 22, 2015 the jury returned a verdict
`
`solely on the issues of validity and infringement. In light of the jury’s findings the Court entered
`
`a judgment in favor of Everlight’s claims that claims 2, 3 and 5 of the ‘925 Patent and claims 2,
`
`14, and 19 of the ‘960 Patent are invalid. See Dkt. No. 524 at 1. Additionally, based on the jury’s
`
`findings, the Court entered a judgment in favor of Everlight dismissing Nichia’s counterclaims
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`that claims 2, 3 and 5 of the ‘925 Patent and claims 2, 14, and 19 of the ‘960 Patent are infringed.
`
`See id. at 2. The jury verdict did not affect Everlight’s declaratory judgment claims that the ‘925
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`Patent and the ‘960 Patent are unenforceable due to inequitable conduct. Instead, this Court
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`conducted a bench trial on June 15, 2015, June16, 2016, and June 18, 2015 (the “Bench Trial”)
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`to address Everlight’s claims of inequitable conduct.
`
`The Court heard testimony, considered the credibility of the witnesses, and conducted a
`
`thorough review of the record for both the jury and bench trials. After reviewing the record, the
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`arguments of the parties, the evidence and exhibits, and the applicable law, the Court concludes
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`that deceptive intent was not the single most reasonable inference to be drawn from the evidence.
`
`Accordingly, the Court rules against Everlight on its claim for unenforceablilty due to
`
`inequitable conduct with respect to both the ‘925 Patent and the ‘960 Patent. The Court’s
`
`findings of fact and conclusions of law from the bench trial are set forth in detail below.
`
`II. FINDINGS OF FACT
`
`A. The Patents-in-Suit
`
`The ‘925 Patent is entitled “Light Emitting Device Having a Nitride Compound
`
`Semiconductor and a Phosphor Containing a Garnet Fluorescent Material.” The ‘925 Patent
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 3 of 29 Pg ID 51925
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`
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`names Yoshinori Shimizu, Kensho Sakano, Yasunobu Noguchi, and Toshio Moriguchi as
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`inventors. The application for the ‘925 Patent was filed with the United States Patent and
`
`Trademark Office (“USPTO”) on July 29, 1997 via United States Patent Application No.
`
`08/902,725. The ‘925 Patent issued on December 7, 1999 to assignee Nichia Kagaku Kogyo
`
`Kabushiki Kaisha (d/b/a/ Nichia Corporation).
`
`
`
`The ‘960 Patent is entitled “Light Emitting Device with Blue Light LED and Phosphor
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`Components.” The ‘960 Patent names Yoshinori Shimizu, Kensho Sakano, Yasunobu Noguchi,
`
`and Toshio Moriguchi as inventors. The application for the ‘960 Patent was filed with the
`
`USPTO on March 5, 2007 via United States Patent Application no. 11/682,014. The ‘960 Patent
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`issued on May 12, 2009 to assignee Nichia Corporation.
`
`
`
`Both the ‘925 Patent and the ‘960 Patent (“the patents-in-suit”) relate to LEDs that
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`implement a gallium-nitride-based semiconductor with a phosphor. The ‘925 Patent focuses on
`
`the use of yttrium-aluminum-garnet (“YAG”) phosphors in LEDs to create a wide range of white
`
`light. The Abstract of the ‘925 Patent states as follows:
`
`The white light emitting diode comprising a light emitting component using a
`semiconductor as a light emitting layer and a phosphor which absorbs a part of
`light emitted by the light emitting component and emits light of wavelength
`different from that of the absorbed light, wherein the light emitting layer of the
`light emitting component is a nitride compound semiconductor and the phosphor
`contains garnet fluorescent materials activated with cerium which contains at least
`one element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and
`at least one element selected from the group consisting of Al, Ga and In and, and
`[sic] is subject to less deterioration of emission characteristic even when used
`with high luminance for a long period of time.
`
`
`The Abstract of the ‘960 Patent claims priority to the ‘925 Patent and concerns how the phosphor
`
`is distributed in the resin covering the semiconductor component. The ‘960 Abstract states as
`
`follows:
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 4 of 29 Pg ID 51926
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`A light emitting device includes a light emitting component; and a phosphor
`capable of absorbing a part of light emitted by the light emitting component and
`emitting light of a wavelength different from that of the absorbed light. A straight
`line connecting a point of chromaticity corresponding to a peak of the spectrum
`generated by the light emitting component and a point of chromaticity
`corresponding to a peak of the spectrum generated by the phosphor is disposed
`along with the black body radiation locus in the chromaticity diagram.
`
`
`Thus, the patents-in-suit cover the use of particular phosphors in white LED technology enabling
`
`efficient, long-lasting, high luminance LEDs in a wide variety of applications including
`
`computer and cellular telephone displays.
`
`
`
`When prosecuting the patents-in-suit, Messrs. Yoshinori Shimizu, Kensho Sakano,
`
`Yasunobu Noguchi, and Toshio Moriguchi (“the inventors”) signed a “Combined Declaration
`
`and Power of Attorney for Patent and Design Applications” (the Inventor Oath). The Inventor
`
`Oath states, and that the inventors affirmed, in relevant part:
`
`As a below named inventor, I hereby declare that . . . I verily believe that I am the
`original, first and sole inventor (if only one inventor is named below) or an
`original, first and joint inventor (if plural inventors are named below) of the
`subject matter which is claimed and for which a patent is sought on the invention
`entitled:* LIGHT EMITTING DEVICE AND DISPLAY . . . .
`
`
`I hereby state that I have reviewed and understand the contents of the above
`identified specification, including the claims, as amended by any amendment
`referred to above.
`
` I
`
` acknowledge the duty to disclose information which is material to patentability
`as defined in Title 37, Code of Federal Regulations, § 1.56.
`
` I
`
` do not know and do not believe the same was ever known or used in the United
`States of America before my or our invention thereof, or patented or described in
`any printed publication in any country before my or our invention thereof, or
`more than one year prior to this application, that the same was not in public use or
`on sale in the United States of America more than one year prior to this
`application, that the invention has not been patented or made the subject of an
`inventor’s certificate issued before the date of this application in any country
`foreign to the United States of America on an application filed by me or my legal
`representatives or assigns more than twelve months (six months for designs) prior
`to this application, and that no application for patent or inventor's certificate on
`this invention has been filed in any country foreign to the United States of
`
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`

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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 5 of 29 Pg ID 51927
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`
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`America prior to this application by me or my legal representatives or assigns,
`except as follows. . . .
`
` I
`
` hereby declare that all statements made herein of my own knowledge are true
`and that all statements made on information and belief are believed to be true; and
`further that these statements were made with the knowledge that willful false
`statements and the like so made are punishable by fine or imprisonment, or both,
`under Section 1001 of Title 18 of the United States Code and that such willful
`false statements may jeopardize the validity of the application or any patent issued
`thereon.
`
`
`The Inventor Oath was signed on July 22, 1997. The Inventor Oath was submitted to the USPTO
`
`on July 29, 1997 via United States Patent Application No. 08/902,725, which led to the issuance
`
`of the patents-in-suit.
`
`
`
`As it pertains to Everlight’s claim of inequitable conduct, the inventors’ affirmations
`
`supported four assertions in the patents-in-suit that are now under scrutiny. First, in the ‘925
`
`Patent, the inventors submitted Example 12, which states that Y3 In5 O12 :Ce (“YIG”) was
`
`synthesized to make 100 pieces of LED. Specifically, Example 12 reads as follows:
`
`The light emitting diode of Example 12 was made in the same manner as in
`Example 1 except for using phosphor represented by general formula Y3 In5 O12
`:Ce. 100 pieces of the light emitting diode of Example 12 were made. Although
`the light emitting diode of Example 12 showed luminance lower than that of the
`light emitting diodes of Example 1, showed good weatherability comparable to
`that of Example 1 in life test.
`
`As described above, the light emitting diode of the present invention can emit
`light of a desired color and is subject to less deterioration of emission efficiency
`and good weatherability even when used with high luminance for a long period of
`time. Therefore, application of the light emitting diode is not limited to electronic
`appliances but can open new applications including display for automobile,
`aircraft and buoys for harbors and ports, as well as outdoor use such as sign and
`illumination for expressways.
`
`Second, the inventors submitted Example 8 in the ‘925 Patent, which states that Gd3 (Al0.5
`
`Ga0.5)5 O12 (“GGAG”) was used to make 100 pieces of LED. Specifically, Example 8 states:
`
`The light emitting diode of Example 8 was made in the same manner as in
`Example 1 except for using phosphor represented by general formula Gd3 (Al0.5
`
`-5-
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 6 of 29 Pg ID 51928
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`Ga0.5)5 O12 :Ce which does not contain Y. 100 pieces of the light emitting diodes
`of Example 8 were made and measured for various characteristics.
`
`Although the light emitting diodes of Example 8 showed a low luminance,
`showed good weatherability similar to that of Example 1 in life test.
`
`Third, the inventors filed claims in the ‘925 Patent indicating that that the LEDs in the patent
`
`contained phosphors with yttrium being substituted with gadolinium. For example:
`
`8. A light emitting device according to claim 2, wherein the phosphor may be an
`yttrium-aluminum-garnet fluorescent material containing a first fluorescent
`material and a second fluorescent material, with each different parts of yttriums in
`said first fluorescent material and second fluorescent material being substituted
`with gadolinium. . . .
`
`21. A light emitting diode according to claim 18, wherein the phosphor contains
`an yttrium-aluminum-garnet fluorescent material containing a first fluorescent
`material and a second fluorescent material wherein part of yttrium is substituted
`with gadolinium to different degrees of substitution. . . .
`
`Also in the light emitting device of the present invention, in order to control the
`wavelength of emitted light, the phosphor may be an yttrium-aluminum-garnet
`fluorescent material containing a first fluorescent material and a second
`fluorescent material, with different parts of each yttrium being substituted with
`gadolinium. . . .
`
`In the light emitting diode of the present invention, similarly, yttrium-aluminum-
`garnet fluorescent material a first fluorescent material and a second fluorescent
`material may be used wherein part of yttrium being substituted with gadolinium to
`different degrees of substitution as the phosphor, in order to control the emitted
`light to a desired wavelength.
`
`
`In the ‘960 Patent, the inventors affirmed that the following statements were true:
`
`
`The phosphor used in the first embodiment is, because of garnet structure,
`resistant to heat, light and moisture, and is therefore capable of absorbing
`excitation light having a peak at a wavelength near 450 nm as shown in FIG. 3A.
`It also emits light of broad spectrum having a peak near 580 nm tailing out to 700
`nm as shown in FIG. 3B. Moreover, efficiency of excited light emission in a
`region of wavelengths 460 nm and higher can be increased by including Gd in the
`crystal of the phosphor of the first embodiment. When the Gd content is
`increased, emission peak wavelength is shifted toward longer wavelength and the
`entire emission spectrum is shifted toward longer wavelengths. This means that,
`when emission of more reddish light is required, it can be achieved by increasing
`
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 7 of 29 Pg ID 51929
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`the degree of substitution with Gd. When the Gd content is increased, luminance
`of light emitted by photoluminescence under blue light tends to decrease. . . .
`
`The yttrium-aluminum-garnet fluorescent material activated with cerium (YAG
`fluorescent material) used in the second embodiment has garnet structure
`similarly to the case of the first embodiment, and is therefore resistant to heat,
`light and moisture. The peak wavelength of excitation of the yttrium-aluminum-
`garnet fluorescent material of the second embodiment can be set near 450 nm as
`indicated by the solid line in FIG. 5A, and the peak wavelength of emission can
`be set near 510 nm as indicated by the solid line in FIG. 5B, while making the
`emission spectrum so broad as to tail out to 700 nm. This makes it possible to
`emit green light. The peak wavelength of excitation of another yttrium-aluminum-
`garnet fluorescent material activated with cerium of the second embodiment can
`be set near 450 nm as indicated by the dashed line in FIG. 5A, and the peak
`wavelength of emission can be set near 600 nm as indicated by the dashed line in
`FIG. 5B, while making the emission spectrum so broad as to tail out to 750 nm.
`This makes it possible to emit red light.
`
`
`Lastly, the inventors included Figure 19A which they stated “shows the emission spectrum of the
`
`phosphor (Y0.2Gd0.8)3Al5O12:Ce of Example 5[:]”
`
`
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`B. Testimony of the Witnesses
`
`
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`Throughout the three day bench trial, the Court heard testimony from the following
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`witnesses and expert witnesses: Mssrs. Noguchi and Sakano, and Drs. Martin Wilding, Eric
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 8 of 29 Pg ID 51930
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`Bretschneider, Uwe Happek, and Fred Schubert. After listening to the testimony, judging the
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`credibility of the witnesses, and considering the witness testimony in conjunction with a review
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`of the record, the Court made the following findings regarding the testimony of each witness.
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`1. Yasunobu Noguchi (Everlight Adverse Direct Examination)
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`Mr. Noguchi is a named inventor on the patents-in-suit and had over 34 years of
`
`experience working with phosphors at Nichia. Everlight spent the majority of its examination
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`attempting to point out inconsistencies between Mr. Noguchi’s records, testing, and findings, and
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`what ultimately ended up in the ‘925 Patent and the ‘960 Patent. At the outset of his testimony,
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`Mr. Noguchi acknowledged that he understood he filed an oath regarding the patents-in-suit.
`
`Everlight began by focusing on Example 12 of the ‘925 Patent. Mr. Noguchi, indicated
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`that Nichia did not have the records relating to the manufacture of YIG and Example 12, but
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`indicated “my recollection is back then we had them.” Nevertheless, Mr. Noguchi indicated that
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`he was not surprised to learn that YIG had been made with full substitution and that LEDs had
`
`been made, stating:
`
`I am the one back then who used indium and who did the series of experiment
`using indium and my recollection is that I did do the various tests, series of tests.
`And back then, also, I worked on GIG and we did a series of test, or tests, and
`therefore, I must have done it. And as for GIG, the brightness was low, but I do
`have a recollection that a similar light emission was observed.
`
`Mr. Noguchi noted that Nichia looked for the records with respect to YIG, but that they could
`
`not find them. Nevertheless, he was adamant “but back then there must have been records” and
`
`he was adamant that he made the YIG and sent YIG samples to either Mssrs. Shimizu, Sakano,
`
`or Moriguchi.
`
`Not only was Mr. Noguchi adamant that he made YIG, but he also remembered YIG and
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`GIG as having a similar level of brightness. Everlight attempted to undermine Mr. Noguchi’s
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`-8-
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 9 of 29 Pg ID 51931
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`testimony, focusing on Mr. Noguchi putting an X through sample 22 which was an attempt for
`
`full substitution with indium—a sample where Mr. Noguchi tried to make GIG. Mr. Noguchi
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`indicated that sample 22 was not the only attempted full substitution with indium in the
`
`notebook, stating that Everlights assertion “must be wrong.”
`
`When explaining the X that was written next to sample 22, Mr. Noguchi put his former
`
`statements in context in order to explain that his use of the word “dark” to explain sample 22 did
`
`not mean that no light was emitted:
`
`When I wrote this the Japanese when I said this, I didn't mean pitch-dark. What
`meant was compared to other things it's a little bit darker. It was lower in
`brightness or luminance and, therefore, I didn't mean that it didn't emit any light at
`all and my recollection was that it was, I used this word to mean not that it was
`pitch-dark but when you make a comparison that the brightness was a little lower
`than others.
`
`My writing of X, crossing out what that means it's a little darker, and below that I
`have handwriting which says a little harder, and a little dirty yellow.
`
`As I have been saying for the last couple minutes, when, in Japanese when you
`say dark it doesn't mean that, when we say dark it doesn't mean that it didn't emit
`light at all and when you look at in Japanese, what it means when we say dark,
`again, it does not mean it did not work or it didn't emit light.
`
`
`Mr. Noguchi used a similar approach when pressed about his statement that GAG does not emit
`
`light. When asked, he gave context and indicated that it was not the light he expected: “What I
`
`meant was that it functioned or it worked, but the brightness or luminance was low.” Despite
`
`Everlight attempting to tie him to the “did not emit light” statement, Mr. Noguchi explained:
`
`Yes, if you only look at that section, that is correct. But, for example, you can
`look at lab notes. It is written there that I -- that note writes, has a record which
`recites the brightness, and therefore, it does not mean that it did not emit light. . . .
`
`We are engineers, and therefore, we are always striving to obtain beyond --
`something that's beyond 100 percent, so anything below 10 percent is what we
`would have wrote in report such as monthly report as not emitting light. . . .
`
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 10 of 29 Pg ID 51932
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`There's no number which is definite, but anything that's about below 10 percent,
`such as a few percent, and then in a report such as monthly report, we would write
`as not emitting light.
`
`
`Overall, the Court did not see any critical inconsistencies in Mr. Noguchi’s testimony.
`Mr. Noguchi was called again during Nichia’s case in chief. During Nichia’s direct
`
`examination of Mr. Noguchi, Mr. Noguchi explained that in his opinion the wavelength in Figure
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`19A was a broad peek and that the wavelength was around 590 nanometers, which he stated he
`
`felt was near 600 nanometers. He indicated that the 600 nanometer figure had no particular
`
`significance to him. Moreover, he indicated his inspection group created Figure 19A. Mr.
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`Noguchi indicated that everything from his Japanese Patent was in the ‘925 Patent.
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`During Nichia’s direct examination, Mr. Noguchi further went into detail about what
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`happened to the test data that is not in his laboratory notebook relating to modified YAG:
`
`I was taking notes on loose note paper and back then I kept those paper or pieces
`of paper but subsequently Nichia began mass producing products using another
`composition and that, and that got on a right track and several years later those
`things that were related to phosphors that had lower commercial values were
`sorted out and discarded.
`
`
`Mr. Noguchi gave a specific instance when he relocated in a major move between 1998 and 2005
`
`and indicated that during that time “unnecessary documents were removed or discarded” and
`
`indicated that the data at issue “might have been included in that pile.” This testimony was
`
`important because it demonstrated that Mr. Noguchi likely does not have all of the information
`
`that he relied upon when conducting the test data for the patent.
`
`
`
`On cross-examination, Everlight questioned Mr. Noguchi about Figure 19A and asked if
`
`he had ever presented the court with the emission spectrum apart from the patent that shows an
`
`actual emission spectrum for 80 percent gadolinium substituted YAG. Mr. Noguchi indicated
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`that his files have them and that the files were in a blue binder sent together with his lab notes.
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`Overall, the Court found that Mr. Noguchi may have been careless in losing or discarding the
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`-10-
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`written records documenting the work he completed. However, the Court did not find Mr.
`
`Noguchi’s testimony to be wholly incredible.
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`2. Kensho Sakano
`
`Mr. Sakano is also an employee from Nichia who is listed as an inventor in the patents-
`
`in-suit. When pressed about his recollection of making LEDs that were referenced in Example 8
`
`of the ‘925 Patent, Mr. Sakano stated twice that he did not have a clear recollection that he made
`
`the LEDs that were mentioned in Example 8. Instead, Mr. Sakano took the position that ‘because
`
`. . . they’re written in [the] patent I have a very strong conviction that either I or somebody, a
`
`member from my group made them.”
`
`When asked whether he could point to any documents showing that the LEDs from
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`Example 8 were actually made in 1996 and 1997, Mr. Sakano could not point to any documents.
`
`Instead, Mr. Sakano indicated that he “was very convinced” that he left all the data with the
`
`technical/intellectual property department after he transferred to the procurement department.
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`Likewise, Mr. Sakano could not point to any numerical results reported for the LEDs that he
`
`claims were made from YIG in Example 12. Nevertheless, Mr. Sakano was “very convinced that
`
`the LEDs in Example 12 were made.”
`
`Mr. Sakano spoke generally about his role at Nichia and his relationship with Mr.
`
`Shimizu, who Mr. Sakano knew for 25 years and described as a person who was “honest and a
`
`person of integrity.” Mr. Sakano then gave a summary of how he would make and test a
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`standard of 100 LED prototypes after he received phosphors from other individuals. Notably, he
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`noted that he was not a chemist so he did not understand the composition of the LEDs that he
`
`was making. Accordingly, with respect to the composition of the phosphors, Mr. Sakano stated
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`that “I think what I wrote is something somebody such as either Shimizu or Noguchi gave me[.]”
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`-11-
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 12 of 29 Pg ID 51934
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`In making LEDs, Mr. Sakano noted that he had never been personally accused of being dishonest
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`in his work. Furthermore, Mr. Sakano declared that it was “unthinkable” that there was anything
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`in the ‘925 Patent application that either Mr. Shimizu or Mr. Noguchi would have put that was
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`dishonest.
`
`Mr. Sakano was noticeably less certain in his recollection of the phosphors that were used
`
`when he made the LED samples. Nevertheless, he was adamant that he, or members of his team,
`
`actually made the samples that were listed in the patents-in-suit and sent to him. Like Mr.
`
`Noguchi, Mr. Sakano may have been careless in keeping records of the work that he completed.
`
`However, the Court did not find his testimony to be testimony to be wholly incredible.
`
`3. Dr. Martin Wilding
`
`Dr. Wilding is a physics professor at Aberystwyth University in Wales, United Kingdom.
`
`He received a BDC from Derbyshire College of Higher Education in 1986 and received his
`
`Ph.D. from the University of Edinburgh in 1990. Dr. Wilding indicated that he focuses his
`
`research in neutron and x-ray diffraction of liquids, amorphous material, and crystalline
`
`materials. Dr. Wilding was offered as an expert for Everlight in the synthesis of powdered
`
`garnets. As it pertains to this case, he was offered as an expert with respect to the synthesis of
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`YIG, as he synthesized YAG or a YAG derivative about 200 times.
`
`Nichia emphasized on voir dire that Dr. Wilding had no experience in LED chips, and
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`only had experience in making powdered garnets and phosphors. Nichia noted, and Dr. Wilding
`
`admitted that he had never made a phosphor before the case and had only made garnets. Dr.
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`Wilding explained that he had no experience whatsoever in phosphor synthesis. Moreover, Dr.
`
`Wilding explained that he had not used the methods explained in the patent to make a phosphor.
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`-12-
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 13 of 29 Pg ID 51935
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`The Court permitted Dr. Wilding to testify as an expert in the synthesis and
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`characterization of powdered garnets. Dr. Wilding explained that he reviewed the patents-in-suit,
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`reviewed literature before and after 1996, and also viewed the inventor notebooks to try to follow
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`the synthesis method in the patent. After trying to follow the synthesis method in the patent
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`twice, Dr. Wilding explained that, in his opinion, “you cannot fully substitute indium for
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`aluminum in YAG.” He reached this opinion on the theory that “indium is too large an atom to
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`fit into a garnet structure.”
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`Next, Dr. Wilding relied upon a paper by Cunningham and Anderson published in 1961,
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`amongst other papers, to conclude that “indium is restricted to octahedral sites.” He concluded
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`that if he had successfully synthesized YIG he “would have published a paper on it . . . [b]ecause
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`if you’ve managed to successfully substitute indium into a garnet structure, it would have been
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`counter to everything anybody understands about crystallography and would have been a major
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`groundbreaking paper.”
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`Nichia conducted an effective cross-examination of Dr. Wilding. The cross-examination
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`contrasted Dr. Wilding’s academic theory with Mr. Noguchi’s assertions of what happened in
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`reality. This examination did not necessarily show that Dr. Wilding was misguided in his
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`opinion that YIG could not be made, but instead limited Dr. Wilding’s opinion to his theory.
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`Indeed, on the re-direct, Everlight concluded its questioning of Dr. Wilding where he indicated
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`that his “theory is quite unequivocal. You can only fit indium into octahedral sites in a garnet
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`structure.” However, it was not shown that it is impossible to make YIG using known synthesis
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`techniques that were stated in the patent. Instead, Dr. Wilding, who admitted not using all the
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`methods explained in the patent, only showed he was unable to make YIG after two attempts.
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`4:12-cv-11758-GAD-MKM Doc # 601 Filed 10/20/15 Pg 14 of 29 Pg ID 51936
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`Overall, Dr. Wilding’s testimony was intriguing, but it was not dispositive. It was very
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`notable that Dr. Wilding was not a person of ordinary skill of the art or phosphor synthesis.
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`Ultimately, his theory was simply a notion that YIG was impossible to make as he admittedly did
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`not use all of the methods listed in the ‘925 Patent in his brief attempt to make YIG for this case.
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`4. Dr. Eric Bretschneider
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`Dr. Eric Bretschneider was an expert witness from the Jury Trial in this case who gave
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`background on LEDs and how they were made. Dr. Bretschneider was a witness for Everlight in
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`the Bench Trial. The Court limited the scope of his expert testimony to testimony regarding
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`phosphor synthesis. After a continuing objection from Nichia, Dr. Bretschneider stated that a
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`person of ordinary skill in the art would expect data that reported in Figure 19A of the ‘960
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`Patent to compare the same, but scaled differently, to the data in Figure 19C of the ‘960 Patent.
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`Dr. Bretschneider contended that 19C had a peak wavelength of 850 nanometers while 19A had
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`a peak wavelength of about 580 nanometers. According to Dr. Bretschneider he concluded there
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`was an issue with the data and there is an inconsistency because there is a correlation between
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`the peak and dominant wavelengths. After a rather long back and forth during cross-examination,
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`there was a rare and notable point of agreement between Dr. Bretschneider and counsel for
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`Nichia with respect to the assertion that the claims in the patent do not require any minimum
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`amount of light to be emitted.
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`5. Dr. Uwe Happek
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`Dr. Happek is a professor of physics at the University of Georgia. He received his Ph.D.
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`in 1989 from the University of Regensburg in Germany focusing on high frequency sound waves
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`using rare earth luminescence. Dr. Happek indicated that 75 percent of his assignment at the
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`University of Georgia is related to research, mostly related to phosphors. Dr., Happek was
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`submitted as an expert for Nichia with respect to phosphors, including garnet phosphor,
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`phosphor synthesis and the structure and composition of phosphors.
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`Dr. Happek disagreed with Dr. Wilding’s testimony that YIG or yttrium indium garnet
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`cannot be made, and offered the following testimony regarding Dr. Wilding’s testimony:
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`If you have a theory, a theory always has some premises, some starting point and
`if these premises are not met, then your theory is not wrong, but it doesn't apply.
`Point in case, Mr., Dr. Wilding pointed out on thermal dynamical arguments that
`a GAG, the gadolinium compound, cannot be made. Yes, later on he actually
`made it and it was not that his theory was wrong; his theory did not apply.
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`Dr. Happek’s testimony was a marked contrast from the stance taken by Dr. Wilding. Dr.
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`Happek opined that Dr. Wilding hadn’t “tried, really to make [YIG].” Additionally, Dr. Happek
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`noted that in 1996 it would have been reasonable for Mr. Noguchi to believe he actually
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`synthesized YIG because, at the time, “there were many publications that referred to YIG as
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`yttrium indium garnet. So at the time, '96, if somebody published results on this materials, you
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`know, it must be assumed you can make it. Dr. Happek also put forth a contamination theory,
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`explaining the possibility of YAG powder being contaminated when someone attempted to make
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`YIG:
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`[O]ne possible, possibilities, and I had that actually happen to me, you heat a
`sample, you know, that does not contain aluminum, an aluminum crucible which
`contains aluminum and you heat it up and it actually leeched out part of the
`aluminum, which then you make YAG and there will there luminesce. These are
`the most powerful luminescent materials that we have.
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`Dr. Happek indicated that his point was that when attempting to make YIG you could end up
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`with some YAG, and indicated that Dr. Wilding produced nominal Y