Case 4:12-cv-11758-GAD-MKM ECF No. 80 filed 05/01/13 PageID.2836 Page 1 of 95
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`and EMCORE CORPORATION,
`
`Plaintiffs/Counter-Defendants,
`
`v.
`
`NICHIA CORPORATION, and
`NICHIA AMERICA CORPORATION,
`
`Defendants/Counter-Plaintiffs,
`
`v.
`
`EVERLIGHT AMERICAS, INC.,
`
`Defendant.
`
`Case No. 4:12-CV-11758 GAD-MKM
`Hon. Gershwin A. Drain
`
`Jury Trial Demanded
`
`SECOND AMENDED COMPLAINT
`
`Plaintiffs/Counter-Defendants Everlight Electronics Co., Ltd. (“Everlight”) and Emcore
`
`Corporation (“Emcore”) file this Second Amended Complaint (“Complaint”) against
`
`Defendants/Counter-Plaintiffs Nichia Corporation (“Nichia”) and Nichia America Corporation
`
`(“NAC”), wherein Everlight seeks a declaratory judgment of non-infringement, invalidity, and
`
`unenforceabilty of United States Patent Nos. 5,998,925 (the “’925 Patent”) and 7,531,960 (the
`
`“’960 Patent”) against Nichia, pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
`
`2202 and the patent laws of the United States, 35 U.S.C. § 1 et seq., and both Everlight and
`
`Emcore jointly seek a judgment of infringement by Nichia and NAC of U.S. Patent
`
`No. 6,653,215 (the “’215 Patent”) pursuant to 35 U.S.C. §§ 271 and 281, and damages resulting
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`

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`therefrom pursuant to 35 U.S.C. § 284, and such other relief as the Court deems just and proper,
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`and in support thereof allege as follows:
`
`The Parties
`
`1.
`
`Everlight is a corporation organized and existing under the laws of Taiwan with a
`
`principal place of business at No. 6-8, Zhonghua Rd., Shulin Dist., New Taipei City, Taiwan
`
`23860. Everlight manufactures its light-emitting diode (“LED”) products in Taiwan and,
`
`through a subsidiary, has sales offices in the United States in Texas and California.
`
`2.
`
`Emcore is a New Jersey corporation with a principal place of business at 10420
`
`Research Road, SE, Albuquerque, New Mexico, 87123. LED products incorporating Emcore’s
`
`patented technology are offered nationwide, including in this district.
`
`3.
`
`Upon information and belief, Nichia is a corporation organized and existing under
`
`the laws of Japan with a principal place of business at 491 Oka, Kaminaka-Cho, Anan-Shi,
`
`TOKUSHIMA 774-8601, JAPAN. Nichia Corporation conducts substantial and continuous
`
`business in this district and is subject to personal jurisdiction in this district.
`
`4.
`
`Upon information and belief, NAC is a subsidiary of Nichia in the United States
`
`with a principal place of business at 48561 Alpha Drive, Suite 100, Wixom, MI 48393. NAC is
`
`headquartered in this district, conducts substantial and continuous business in this district and is
`
`subject to personal jurisdiction in this district.
`
`Jurisdiction and Venue
`
`5.
`
`The claims for declaratory judgment arise under the Declaratory Judgment Act,
`
`28 U.S.C. §§ 2201 and 2202, and the patent laws of the United States, 35 U.S.C. § 1 et seq.
`
`6.
`
`The claims of patent infringement arise under 35 U.S.C. §§ 271 and 281.
`
`2
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`7.
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`Subject matter jurisdiction is proper under 28 U.S.C. §§ 1331 and 1338 and 28
`
`U.S.C. §§ 2201 and 2202.
`
`8.
`
`9.
`
`Venue in this district is proper under 28 U.S.C. § 1391(b) and (c).
`
`Patents-in-Suit
`
`The ‘925 Patent, entitled “Light Emitting Device Having a Nitride Compound
`
`Semiconductor and a Phosphor Containing a Garnet Fluorescent Material,” names on its face
`
`Yoshinori Shimizu, Kensho Sakano, Yasunobu Noguchi, and Toshio Moriguchi as inventors (the
`
`“Named Inventors”) and states that it was issued on December 7, 1999 to assignee Nichia
`
`Kagaku Kogyo Kabushiki Kaisha (d/b/a Nichia Corporation) (Exhibit A).
`
`10.
`
`The ‘960 Patent, entitled “Light Emitting Device with Blue Light LED and
`
`Phosphor Components,” names on its face Yoshinori Shimizu, Kensho Sakano, Yasunobu
`
`Noguchi, and Toshio Moriguchi as inventors and states that it was issued on May 12, 2009 to
`
`assignee Nichia Corporation (Exhibit B).
`
`11.
`
`Emcore is the owner by assignment and Everlight is the exclusive licensee, with
`
`the right to enforce, of the ‘215 entitled “Contact to N-GaN with Au Termination” which the
`
`United States Patent and Trademark Office lawfully and duly issued on November 25, 2003. A
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`true and correct copy of the ‘215 Patent is attached hereto as Exhibit C.
`
`Background
`
`12.
`
`Everlight is a leading manufacturer and supplier of LED products, with customers
`
`around the world, including in this district.
`
`13.
`
`Everlight successfully competes against Nichia and NAC, who are also in the
`
`business of manufacturing and supplying LED products.
`
`3
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`14.
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`Nichia has been aggressively pursuing Everlight and Everlight’s customers
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`through litigation in various forums around the world, including Japan, Germany, and Taiwan.
`
`15.
`
`For example, in October 2011, Nichia initiated an action against an Everlight
`
`customer, Tachibana Eletech Co., Ltd., in Tokyo District Court, Intellectual Property Division,
`
`alleging infringement of Nichia’s Japanese Patent No. 4530094, which is a Japanese counterpart
`
`of the ‘960 Patent (“Tokyo Action”).
`
`16.
`
`In addition, on April 18, 2012, Nichia initiated an action against Everlight in
`
`Germany for alleged infringement of Nichia’s European Patent No. EP 0 936 682, which is a
`
`European counterpart of the ‘925 Patent (“German Action”).
`
`17.
`
`The accused products in the Tokyo Action are Everlight’s LEDs having Part Nos.
`
`GT3528 and 61-238, and the accused products in the German Action are Everlight’s LEDs
`
`having Part No. 61-238. Everlight supplies these and/or similar LEDs, such as 67-11/T1C-
`
`FV2W2F/2T, ELSH-F81M1-0CPGS-C3000, ELSH-F91C1-0CPGS-C5000, ELSH-J31M3-
`
`0CPGS-D3000, ELSH-J61C3-0CPGS-D5000, ELSW-F81M1-0CPGS-C3000, ELSW-J11C1-
`
`0CPGS-C5700, ELSW-J31M3-0CPGS-D3000, ELSW-J71C3-0CPGS-D5700, 234-
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`15UTC/H5/S400-X10(TCI), 334-15/T2C1-FUWA/PR6(LP), 334-15/T2C3-FQSB/PR6(LP),
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`334-15/T2C5-FNQB/PR6(LP), 484-15-T5C9-F36E-T13-AM (S), 484-15-T5C9-F36E-T13-
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`AM(L), and 65-21-B3T-1NL2M2C6A-2T8-AM, to its customers in the United States
`
`(collectively, “Everlight LED Products”).
`
`18.
`
`The ‘925 Patent is the parent of the ‘960 Patent, and the ‘960 Patent is a division
`
`of the application that resulted in the ‘925 Patent.
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`4
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`19.
`
`Nichia has also threatened litigation over several patents, including Japanese
`
`Patent No. 4530094, against other Everlight customers in Japan, including JFE, Charle, and Chip
`
`One Stop.
`
`20.
`
`Nichia also initiated a patent infringement action against Everlight in Taiwan, in
`
`which Everlight prevailed in November 2011.
`
`21.
`
`In addition to litigation matters, there are currently over 20 patent reexamination
`
`or opposition proceedings pending in several different countries, initiated by Everlight against
`
`Nichia. The subject of these proceedings include Nichia patents related to the ‘925 and ‘960
`
`Patents.
`
`22.
`
`Nichia also has a pattern of aggressively pursuing manufacturers, users and/or
`
`distributors of competitive LED products in the United States by asserting infringement of the
`
`‘925 and/or ‘960 Patents against them. Between 2005 and 2011, Nichia pursued at least four
`
`actions in the United States where it claimed infringement of the ‘925 Patent, and at least two
`
`actions in which the ‘960 Patent was asserted.
`
`23.
`
`Nichia has also threatened litigation against its competitors in press releases.
`
`For example, in April 2012, Nichia issued a press release regarding a suit over a related German
`
`counterpart patent, in which it asserted, “Nichia seeks to protect its patents and other intellectual
`
`property rights and takes actions against alleged infringers in any country where appropriate and
`
`necessary.”
`
`24.
`
`Nichia’s systematic and aggressive pursuit of Everlight, Everlight’s customers,
`
`and other third parties in the LED industry through litigation has created a substantial and
`
`immediate dispute between Everlight and Nichia relating to the ‘925 and ‘960 Patents.
`
`5
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`25.
`
`Upon information and belief, Nichia has made and both Nichia and NAC have
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`used, offered to sell, and sold within the United States, and have imported into the United States,
`
`products that were made by the processes of the ‘215 Patent, including but not limited to at least
`
`the following LED products: NCSW119A, NCSW119A-H3, NCSL119A-H3, NCSL119A-H1,
`
`NVSW119A, NVSW119A-H3, NVSL119A-H3, NVSL119A-H1, NCSW219A, NCSW219A-H3,
`
`NCSL219A-H3, NCSL219A-H1, NVSW219A, NVSW219A-H3, NVSL219A-H3, NVSL219A-
`
`H1, and NVSL219AE (the “Infringing Nichia Products”).
`
`Count I (By Everlight Against Nichia)
`Declaratory Judgment of Non-Infringement of the ‘925 Patent
`
`26.
`
`Everlight realleges and incorporates herein by reference Paragraphs 1 through 25
`
`of this Complaint.
`
`27.
`
`Nichia has been systematically and aggressively pursuing Everlight, Everlight’s
`
`customers, and third parties in the LED industry through litigation.
`
`28.
`
`Nichia has asserted in the Tokyo Action that Everlight’s products infringe a
`
`Japanese patent related to the ‘925 Patent. The U.S. counterpart of the Japanese patent asserted
`
`in the Tokyo Action is a division of the application that resulted in the ‘925 Patent. Nichia has
`
`also asserted in the German Action that Everlight’s products infringe a European counterpart to
`
`the ‘925 Patent.
`
`29.
`
`Nichia also aggressively asserted the ‘925 Patent against light product
`
`manufacturers, users and/or distributors in the United States of competitive LED products in at
`
`least four separate patent infringement actions in the United States. The most recent of these
`
`actions concluded in or about April 2011.
`
`30.
`
`The Everlight LED Products do not infringe any valid and enforceable claim of
`
`the ‘925 Patent.
`
`6
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`31.
`
`Based on the facts alleged herein, and under all the circumstances, there is a
`
`substantial controversy between Everlight and Nichia of sufficient immediacy and reality to
`
`warrant the issuance of a declaratory judgment by this Court.
`
`32.
`
`Everlight is entitled to a declaratory judgment that Everlight has not infringed and
`
`is not now infringing, directly, contributorily, or by inducement, any valid and enforceable claim
`
`of the ‘925 Patent by manufacturing, importing, using, selling or offering for sale the Everlight
`
`LED Products.
`
`33.
`
`Everlight is also entitled to a declaratory judgment that Everlight’s customers
`
`have not infringed and are not now infringing, directly, contributorily, or by inducement, any
`
`valid and enforceable claim of the ‘925 Patent by importing, using, selling or offering for sale
`
`the Everlight LED Products, separately, or in combination with or upon incorporation into
`
`another device or system.
`
`Count II (By Everlight Against Nichia)
`Declaratory Relief for Invalidity of the ‘925 Patent
`
`34.
`
`Everlight realleges and incorporates herein by reference Paragraphs 1 through 33
`
`of this Complaint.
`
`35.
`
`The ‘925 Patent is invalid because the purported inventions therein fail to meet
`
`the conditions of patentability specified in 35 U.S.C. §§ 102 and 103. Everlight incorporates
`
`herein by reference its preliminary invalidity contentions served on Nichia on January 11, 2013.
`
`36.
`
`The ‘925 Patent is invalid for failure to meet the requirements of 35 U.S.C. § 112
`
`because at least some of the claims of the ‘925 Patent are not enabled. Everlight incorporates
`
`herein by reference its preliminary invalidity contentions served on Nichia on January 11, 2013.
`
`7
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`37.
`
`Based on the facts alleged herein, and under all the circumstances, there is a
`
`substantial controversy between Everlight and Nichia of sufficient immediacy and reality to
`
`warrant the issuance of a declaratory judgment by this Court.
`
`38.
`
`Everlight is entitled to a declaratory judgment that the ‘925 Patent is invalid.
`
`Count III (By Everlight Against Nichia)
`Declaratory Relief for Unenforceability of the ‘925 Patent
`
`39.
`
`Everlight realleges and incorporates herein by reference Paragraphs 1 through 38
`
`of this Complaint.
`
`40.
`
`The ‘925 Patent is unenforceable due to inequitable conduct and fraud during the
`
`prosecution of the ‘925 Patent.
`
`1.
`
`41.
`
`Overview of Misconduct
`
`There are numerous affirmative misrepresentations in the ‘925 Patent regarding
`
`the scope of its claims as well as experiments disclosed in support of and to enable those claims.
`
`Inventors Yasunobu Noguchi (“Noguchi”), Kensho Sakano (“Sakano”), and Yoshinori Shimizu
`
`(“Shimizu”) knew about the affirmative misrepresentations in the ‘925 Patent, including that it
`
`claimed subject matter that none of the named inventors actually invented and that numerous
`
`alleged experiments disclosed in the patent were fictitious, could not have been performed as
`
`disclosed, or contained false data. Noguchi, Sakano, and Shimizu deliberately made these
`
`misrepresentations with the intent to deceive the United States Patent and Trademark Office
`
`(“PTO”) into issuing the ‘925 Patent. Noguchi, Sakano, and Shimnizu’s misrepresentations
`
`were affirmative acts of egregious misconduct and per se material. Furthermore, but for these
`
`material misrepresentations, the PTO would not have issued at least claims 1 and 23 of the ‘925
`
`Patent because the claims would not have complied with 35 U.S.C. §101, 35 U.S.C. §102(f)
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`8
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`and/or 35 U.S.C. §112 ¶1 and because the inventors could not have submitted a declaration that
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`they invented the subject matter of the claims.
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`42.
`
`Independent claims 1 and 23 of the ‘925 Patent claim subject matter that the
`
`named inventors did not actually invent. Specifically, independent claims 1 and 23 of the ‘925
`
`Patent cover an LED with a phosphor that contains a garnet fluorescent material, in which
`
`yttrium (“Y”) is fully replaced by gadolinium (“Gd”), wherein the garnet fluorescent material
`
`emits light at a wavelength different from another light emitting component in the LED. Also,
`
`independent claims 1 and 23 of the ‘925 Patent cover an LED with a phosphor that contains a
`
`garnet fluorescent material, in which aluminum (“Al”) is fully replaced by indium (“In”).
`
`Noguchi, Sakano, and Shimizu knew that none of the named inventors of the ‘925 Patent
`
`actually invented such LEDs with a phosphor that contains a garnet fluorescent material, in
`
`which yttrium is fully replaced by gadolinium, or in which aluminum is replaced by indium.
`
`Yet, Noguchi, Sakano, and Shimizu, having reviewed and understood independent claims 1 and
`
`23 of the ‘925 Patent certified to the PTO that the claimed subject matter was in fact invented by
`
`the named inventors of the ‘925 Patent. Noguchi, Sakano, and Shimizu affirmatively
`
`misrepresented the scope of independent claims 1 and 23 of the ‘925 Patent with the specific
`
`intent to deceive the PTO into allowing claims that cover subject matter that was not invented by
`
`any of the named inventors. But for the affirmative misrepresentations regarding the scope of
`
`independent claims 1 and 23 of the ‘925 Patent, the PTO would not have allowed claims 1 and
`
`23 to issue under 35 U.S.C. §101, 35 U.S.C. §102(f) and/or 35 U.S.C. §112 ¶1.
`
`43.
`
`Additionally, to assert inventorship of and in an attempt to support and enable the
`
`subject matter of independent claims 1 and 23 of the ‘925 Patent that the named inventors did not
`
`actually invent, the ‘925 Patent provides so-called “Examples” representing that a specific
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`number of LEDs were made and tested, even though those LEDs were not and could not have
`
`been made or tested as described in the ‘925 Patent. In particular, Example 8 of the ‘925 Patent
`
`purports that the named inventors made and “life” tested 100 pieces of LEDs containing a
`
`phosphor, in which the yttrium of the paradigm yttrium-aluminum-garnet (“YAG”) compound
`
`was fully replaced by gadolinium and which was represented by the following formula:
`
`Gd3(Al0.5Ga0.5)5O12:Ce. See Exhibit A at 26:65-27-7. Example 12 of the ‘925 Patent purports
`
`that the named inventors made and “life” tested 100 pieces of LEDs containing a phosphor, in
`
`which the aluminum was fully replaced by indium and which was represented by the following
`
`formula: Y3In5O12:Ce. See Exhibit A at 31:7-15. Noguchi, Sakano, and Shimizu knew that
`
`such phosphors were not and could not have been made or tested using the methods described in
`
`the ‘925 Patent. The fabricated Example 8 of the ‘925 Patent provides sole support for each
`
`claim of the ‘925 Patent, including independent claims 1 and 23, that covers an LED with a
`
`phosphor that contains a garnet fluorescent material, in which yttrium is fully replaced by
`
`gadolinium and wherein the garnet fluorescent material emits light at a wavelength different
`
`from another light emitting component in the LED. The fabricated Example 12 of the ‘925
`
`Patent provides sole support for each claim of the ‘925 Patent, including independent claims 1
`
`and 23, that covers an LED with a phosphor that contains a garnet fluorescent material, in which
`
`aluminum is fully replaced by indium. As further explained below, Noguchi, Sakano, and
`
`Shimizu knew and understood that the fabricated Examples 8 and 12 contained affirmative
`
`material misrepresentations, and knowingly and deliberately made these misrepresentations with
`
`the specific intent to deceive the PTO into allowing at least independent claims 1 and 23. Thus,
`
`but for the misrepresentations in these fabricated examples, independent claims 1 and 23 of the
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`10
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`‘925 Patent would not be allowed due to lack of inventorship under 35 U.S.C. §101 and 35
`
`U.S.C. §102(f) and due to lack of enablement under 35 U.S.C. § 112, ¶1.
`
`44.
`
`The ‘925 Patent contains other affirmative material misrepresentations. For
`
`example, numerous other “Examples” in the ‘925 Patent describing partial replacement of
`
`yttrium by gadolinium contain false data. Specifically, Examples 1, 2, 5, 9, and 10
`
`misrepresent and deliberately overstate the performance measurements of the LEDs described in
`
`those examples. Accordingly, over half of the 12 “Examples” included in the ‘925 Patent
`
`contain false or fictitious data.
`
`2.
`
`Factual Background
`
`a.
`
`General Facts
`
`45.
`
`46.
`
`The application for the ‘925 Patent was filed with the PTO on July 29, 1997.
`
`The ‘925 Patent names four inventors on its face: Shimizu, Sakano, Noguchi, and
`
`Toshio Moriguchi (“Moriguchi”).
`
`47.
`
`The ‘925 Patent on its face claims priority to five Japanese patent applications
`
`(collectively, “Japanese Priority Applications”; individually, “First Priority Application,”
`
`“Second Priority Application,” “Third Priority Application,” “Fourth Priority Application,” and
`
`“Fifth Priority Application”), the earliest of which was filed on July 29, 1996.
`
`48.
`
`In addition to the ‘925 Patent and its related patents in the United States, Nichia
`
`filed many other patent applications around the world claiming priority to the Japanese priority
`
`applications.
`
`49.
`
`Nichia included in several of its foreign patents, including in Japan, claim
`
`limitations that cover an LED with a phosphor that contains a garnet fluorescent material, in
`
`which yttrium is fully replaced by gadolinium or in which aluminum is fully replaced by indium.
`
`11
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`See, e.g., Exhibit D. Nichia also included in several of its foreign patents, including in Japan,
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`disclosures of making and testing LEDs using phosphors, in which yttrium was fully replaced
`
`with gadolinium, and aluminum was fully replaced with indium, similar or identical to Examples
`
`8 and 12 of the ‘925 Patent. See, e.g., Exhibit D.
`
`50.
`
`Examples 8 and 12 of the ‘925 Patent were carried over and now exist in the
`
`specification of other U.S. patents, namely: U.S. 6,069,440; U.S. 6,608,332; U.S. 6,614,179; U.S.
`
`7,026,756; U.S. 7,071,616; U.S. 7,126,274; U.S. 7,215,074; U.S. 7,329,988; U.S. 7,362,048;
`
`U.S. 7,531,960; U.S. 7,682,848; U.S. 7,855,092; U.S. 7,901,959; U.S. 7,915,631;
`
`U.S. 7,943,941; U.S. 7,968,866; U.S. 7,969,090, US 8,148,177, and US 8,309,375.
`
`51.
`
`Examples 8 and 12 of the ‘925 Patent will carry over and be present in the
`
`specification of any U.S. patents that issue from several pending U.S. patent applications,
`
`namely: U.S. App. 2010/001,258; U.S. App. 2010/019,270; U.S. App. 2010/117,516; and U.S.
`
`App. 2011/062,864 ; U.S. App. 2011/297990.
`
`b.
`
`The Noguchi 835 Application Shows That Full Gadolinium
`Substitution Would Not Work to Emit Light
`
`52.
`
`At least one of the named inventors (Noguchi) conducted experiments and
`
`concluded that a full replacement of yttrium by gadolinium expressly covered by independent
`
`claims 1 and 23 of the ‘925 Patent and described in Example 8 of the ‘925 Patent would not
`
`actually work to emit light.
`
`53.
`
`On July 29, 1996, on the same day the First Priority Application was filed, which
`
`names Sakano and Shimizu as inventors and expressly claims the full replacement of yttrium
`
`with gadolinium, Noguchi filed a patent application in Japan, JP10-36835 (the “Noguchi 835”),
`
`which concludes that alleged full replacement of yttrium by gadolinium would result in zero light
`
`emission. See Exhibit E (Noguchi 835) at Figure 3.
`
`12
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`54.
`
`Specifically, the Noguchi 835 explained that emission of light begins to
`
`deteriorate beyond 40 percent replacement of yttrium with gadolinium. See Exhibit E at ¶ 0013
`
`(“The figure [Figure 3] shows that, in both curves, the relative emission intensity increases as the
`
`content of Gd increases, up to near p = 0.4, that the relative emission intensity gradually
`
`decreases as more Gd is present.”).
`
`55.
`
`Further, the Noguchi 835 makes clear that at 80 percent replacement of yttrium
`
`with gadolinium light emission is very low, and beyond 80 percent it “drastically decreases.”
`
`See Exhibit E at ¶ 0013.
`
`56.
`
`Finally, the Noguchi 835 teaches that alleged full substitution of yttrium with
`
`gadolinium would not work to emit light, as is plainly illustrated by Figure 3 of the Noguchi 835
`
`reproduced below:
`
`See Exhibit E at ¶ 0013, Fig. 3.
`
`In Figure 3 of the Noguchi 835, the x-axis indicates the percent
`
`substitution replacement of yttrium with gadolinium, with "1.0" on the far right indicating 100%
`
`replacement. The y-axis indicates the percent of relative light emission. Figure 3 shows that
`
`for alleged full replacement of yttrium with gadolinium [i.e., p = 1.0], there would be zero
`
`13
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`percent emission. (The figure above is annotated with a red circle at the point for full
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`substitution.)
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`57. While the First Priority Application and the ‘925 Patent claim full replacement of
`
`the yttrium with gadolinium, the Noguchi 835 expressly limited the scope of its claims to the
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`maximum of 80 percent gadolinium replacement: “[Claim 1] A photoluminescence phosphor
`
`which is characterized by the fact that its composition is expressed with a general formula (Y1-p-q-
`rGdpCeqSmr)3(Al1-sGas)5O12 (where 0 < p < 0.8, 0.003< q < 0.2, 0.0003 < r < 0.08, and 0 < s <
`
`1).” Exhibit E, Claim 1 (emphasis added).
`
`c.
`
`The First Priority Application and the ‘925 Patent Carried Over
`Disclosures of the Work Regarding Partial Substitution of Yttrium
`from the Noguchi 835 Application, but Did Not Carry Over the
`Disclosure that Full Gadolinium Substitution Would Not Work To
`Emit Light
`
`58.
`
`The work regarding partial substitution of yttrium with gadolinium and samarium
`
`described in the Noguchi 835 was substantially carried over to the First Priority Application
`
`(which was filed on the same day as the Noguchi 835) and also to the ‘925 Patent. However,
`
`the disclosure in the Noguchi 835 showing that alleged full substitution of yttrium with
`
`gadolinium would not work using the disclosed methods was withheld both from the First
`
`Priority Application and the ‘925 Patent, which instead expressly include the full gadolinium
`
`substitution within the scope of their respective claims.
`
`59.
`
`The First Priority Application and the ‘925 Patent incorporated several disclosures
`
`of the Noguchi 835. For example, claim 1 of the Noguchi 835 describes the formula and
`
`substitution boundaries of the claimed phosphor as follows:
`
`A photoluminescence phosphor which is characterized by the fact
`that its composition is expressed with a general formula (Y1-p-q-r
`GdpCeqSmr)3(Al1-sGas)5O12 (where 0 < p < 0.8, 0.003< q < 0.2,
`0.0003 < r < 0.08, and 0 < s < 1).
`
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`Case 4:12-cv-11758-GAD-MKM ECF No. 80 filed 05/01/13 PageID.2850 Page 15 of 95
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`Exhibit E, Claim 1. Claim 3 of the First Priority Application recites exactly the same formula
`
`and boundaries:
`
`A light emitting diode according to claim 1 or 2, wherein the
`composition of the phosphor is represented by the following
`general formula: (Y1-p-q-rGdpCeqSmr)3(Al1-sGas)5O12
`where 0<p<0.8
`0.003<q<0.2
`0.0003<r<0.08
`0<s<1
`
`Exhibit F, at 1-2. Claim 4 of the ‘925 Patent also recites exactly the same formula and
`
`boundaries:
`
`A light emitting device according to claim 3, wherein the phosphor
`contains a fluorescent material represented by a general formula:
`(Y1-p-q-rGdpCeqSmr)3(Al1-sGas)5O12, where 0<p<0.8, 0.003<q<0.2,
`0.0003<r<0.08, and 0<s<1.
`
`Exhibit A, Claim 4. However, Claim 3 of the First Priority Application and Claim 4 of the ‘925
`
`Patent are dependent on claims that include within their scope full substitution of yttrium with
`
`gadolinium.
`
`60.
`
`As another example, the Noguchi 835, the First Priority Application, and the ‘925
`
`Patent include essentially the same disclosure regarding the impact of replacing part of the
`
`yttrium and aluminum in the paradigm YAG phosphor with gadolinium and gallium,
`
`respectively:
`
`It is known that the emission of this phosphor shifts toward shorter
`wavelengths when Ga replaces part of Al in its composition; that
`the emission shifts toward longer wavelengths when Gd replaces
`part of Y in its composition; and that, thus, by changing its
`composition in this manner, one can adjust the emission color.
`
`Exhibit E (Noguchi 835) at ¶ 0005.
`
`[W]avelength of the emitted light is shifted to a shorter wavelength
`by substituting part of Al of the composition with Ga, and the
`wavelength of the emitted light can be shifted to a longer
`wavelength by substituting part of Y of the composition with Gd.
`
`15
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`Case 4:12-cv-11758-GAD-MKM ECF No. 80 filed 05/01/13 PageID.2851 Page 16 of 95
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`In this way, the light color of emission can be changed
`continuously by changing the composition.
`
`Exhibit F (First Priority Application) at ¶ 0021.
`
`Especially when part of Al is substituted with Ga among the
`composition of YAG fluorescent material having garnet structure,
`wavelength of emitted light shifts toward shorter wavelength and,
`when part of Y is substituted with Gd, wavelength of emitted light
`shifts toward longer wavelength.
`
`Exhibit A (‘925 Patent) at 11:19-25.
`
`61.
`
`As yet another example, the Noguchi 835, the First Priority Application, and the
`
`‘925 Patent include essentially the same disclosure regarding how inclusion of samarium can
`
`allegedly improve the efficiency of light emission from a YAG phosphor:
`
`[0006] [Issues to be Resolved by the Invention] The purpose of the
`present invention is to improve the efficiency of the excitation
`emission, in other words the photoluminescence, of a yttrium
`aluminum garnet (YAG) phosphor which is activated with cerium.
`…
`[0007] [Means for Resolving the Issues] The inventors conducted
`focused and dedicated research with the purpose of resolving the
`above issues and as a result, found that the issues can be resolved
`by including a certain amount of samarium (Sm), which is a rare
`earth element, in a YAG phosphor.
`
`Exhibit E (Noguchi 835) at ¶¶ 0006-0007.
`
`The efficiency of light emission can be further improved by
`making a light emitting diode containing a LED chip employing
`gallium nitride semiconductor and phosphor made by adding rare
`earth element samarium (Sm) in yttrium-aluminum-garnet
`fluorescent materials (YAG) activated with cerium.
`
`Exhibit F (First Priority Application) at ¶ 0022.
`
`According to the first embodiment, the efficiency of light emission
`of the light emitting diode can be further improved by combining
`the light emitting component employing gallium nitride
`semiconductor and the phosphor made by adding rare earth
`element samarium (Sm) to yttrium-aluminum-garnet fluorescent
`materials (YAG) activated with cerium.
`
`16
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`Case 4:12-cv-11758-GAD-MKM ECF No. 80 filed 05/01/13 PageID.2852 Page 17 of 95
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`Exhibit A (‘925 Patent) at 12:22-28.
`
`62.
`
`The Noguchi 835, the First Priority Application, and the ‘925 Patent include
`
`essentially the same disclosure regarding the general effect of adding gadolinium to the phosphor
`
`crystal:
`
`The curve d shows the excitation spectrum of (Y1-p-q-r
`GdpCeq)3Al5O12 phosphor … with the emission wavelength of
`530nm (green). Because this phosphor contains Gd in the
`crystal, it has a particularly higher excitation and emission
`efficiency in the wavelength range of 460 nm and longer than the
`one depicted by the curve a.
`
`Exhibit E (Noguchi 835) at ¶ 0011 (emphasis added).
`
`The phosphor having the composition of (Y1-p-q-rGdpCeq)3Al5O12
`can emit light of long wavelengths of 460 nm and longer with
`higher efficiency upon excitation, because Gd is contained in the
`crystal.
`
`Exhibit F (First Priority Application) at ¶ 0024 (emphasis added).
`
`The phosphor represented by the general formula (Y1-p-q-rGdpCeq
`Smr)3Al5O12 can emit light of wavelengths 460 nm and longer
`with higher efficiency upon excitation, because Gd is contained in
`the crystal.
`
`Exhibit A (‘925 Patent) at 12:59-65 (emphasis added).
`
`63.
`
`Yet, while the First Priority Application and the ‘925 Patent contains a synthesis
`
`of the work described in the Noguchi 835 regarding partial replacement of yttrium with
`
`gadolinium, the following passage regarding the "drastic" decrease in light emission due to
`
`replacement of yttrium with gadolinium beyond 80 percent is notably absent from the First
`
`Priority Application and the ‘925 Patent :
`
`The figure [Figure 3, inserted below] shows that … the relative
`emission intensity increases as the content of Gd increases, up to
`near p = 0.4, [but] the relative emission intensity gradually
`decreases as more Gd is present, and that the relative emission
`
`17
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`Case 4:12-cv-11758-GAD-MKM ECF No. 80 filed 05/01/13 PageID.2853 Page 18 of 95
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`intensity drastically decreases when the content is greater than
`p=0.8. … [W]hen the Gd content becomes too large, the emission
`efficiency of the phosphors becomes lower, which lowers the
`relative emission intensity.
`
`Exhibit E ¶ 0013 (emphasis added).
`
`64.
`
`Similarly, both the First Priority Application and the ‘925 Patent do not carry
`
`over the teaching in the Noguchi 835 that alleged full gadolinium substitution, using the methods
`
`described, would not work to emit light, as evidence from Figure 3 below:
`
`Exhibit E ¶ 0013 (annotated with a circle showing zero light emission for full replacement of
`
`yttrium with gadolinium [i.e., p = 1.0]).
`
`65.
`
`Accordingly, Noguchi, Sakano, and Shimizu failed to bring the data and
`
`conclusions of Noguchi's prior work to the attention of the PTO, notwithstanding their obvious
`
`knowledge that they were highly relevant to the inventions claimed in the ‘925 Patent, because,
`
`upon information and belief, they knew that if they informed the PTO of Noguchi's prior work,
`
`the PTO would reject at least claims 1 and 23 for failure to satisfy the requirements of 35 U.S.C.
`
`§ 102(f) and/or 35 U.S.C. § 112 ¶ 1.
`
`18
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`

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`Case 4