USPTO Finds the Patent Asserted by Everlight/Emcore to be Invalid

The United States Patent and Trademark Office (USPTO) ruled that all the claims of Emcore’s U.S. Patent No. 6,653,215 (the “’215 Patent”) are not unique enough compared to prior art to be patentable. The USPTO issued a Final Written Decision in inter partes review (“IPR”) proceeding IPR2012-000005 on February 11. The USPTO ordered the patent claims and denied Emcore’s Motion to Amend Claims. Nichia included the final decision on its web site along with the press release.Emcore Corporation owns the ‘215 patent and Everlight Electronics Co., Ltd. is the exclusive licensee. Everlight Electronics and Emcore Corporation asserted the ’215 Patent against Nichia. In response to this litigation, Nichia filed the petition on September 16, 2012 in the USPTO requesting a three patent judge panel, known as an inter partes review,  examine all of the claims of the ’215 Patent.In one particularly contentious claim of the patent Emcore asserts that the term annealing in its claim specifically refers to heating at 400 to 900 degree C for sufficient time to form a contact with low resistance and reliable bonding. Nichia however disputed this claim stating, “We do not agree with Emcore that its proposed construction is the broadest reasonable interpretation of the claim term “annealing,” as it would import improperly a limitation.” In its final decision, the USPTO held that Nichia had successfully shown that all of the claims of the ‘215 patent are unpatentable as “obvious” over several prior publications.