January 27, 2020
The Northern District of California recently entered a default judgment in favor of Latham client Nitride Semiconductors, a Japanese ultraviolet (UV) light emitting diode (LED) manufacturer, finding that Silicon Valley start-up, RayVio Corporation, infringed Nitride’s U.S. Patent No. 6,861,270 (’270 patent), which relates to technology for efficient UV LEDs, and that the asserted patent claims are not invalid. This finding comes a month after the Patent Trial and Appeal Board (PTAB) confirmed the validity of two asserted claims of the ’270 patent. This is one of a series of wins the IP Litigation Practice has secured in the LED technology space.
Latham filed the litigation in May 2017. RayVio was a new entrant in the developing market for “deep” UV LEDs that emit higher-energy UV light suitable for disinfection and other industrial applications. Proving infringement involved use of state-of-the art reverse engineering, including atomic probe tomography (APT)—a technique to re-create materials at an atomic level by using pulsed lasers. Only a handful of APT machines exist in the world, and this case likely represents the first time that APT has been used in litigation.
After failing to prevail on claim construction and failing to exclude Nitride’s APT evidence, RayVio filed a motion to strike Nitride’s infringement contentions and moved for summary judgment of non-infringement. During the hearing, the Court strongly suggested that Nitride would prevail on both issues. Those motions remained pending when the Court entered default judgment.
In parallel with the district court action, Latham defended the validity of the ’270 patent against two inter partes review (IPR) petitions before the PTAB. In December 2019, the PTAB affirmed the validity of asserted claims 2 and 9 of the ’270 patent following a highly technical argument that at one point involved debate over the difference between 2D and 3D quantum confinement. In January 2020, RayVio indicated to Nitride that it was winding down, and RayVio had no choice but to accept a default judgment.
The Latham team was led by Boston partner Charles Sanders and Washington, D.C. partner Kevin Wheeler and counsel Jon Strang (on IPRs). The team also included Bay Area partner Patricia Young, Los Angeles associate Thomas Yeh, Boston associate Chris Henry, and Washington, D.C. associate Holly Victorson. Washington, D.C. partner Larry Gotts and Bay Area partner Ron Shulman provided insights to assist the team on strategic issues.