06
Jun
By Eric Schweibenz
On June 3, 2011, OSRAM GmbH of Germany (“OSRAM”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Samsung Electronics Co., Ltd. of Korea, Samsung Electronics America, Inc. of Ridgefield Park, New Jersey, Samsung LED Co., Ltd. of Korea, and Samsung LED America, Inc. of Atlanta, Georgia (collectively, “Samsung”) unlawfully import into the U.S., sell for importation, sell within the U.S. after importation and/or offer to sell within the U.S. after importation certain light-emitting diodes (“LEDs”) and products containing same that infringe U.S. Patent Nos. 6,812,500 (the ‘500 patent), 7,078,732 (the ‘732 patent), 7,126,162 (the ‘162 patent), 7,345,317 (the ‘317 patent), 7,629,621 (the ‘621 patent), 6,459,130 (the ‘130 patent), 6,927,469 (the ‘469 patent), 7,199,454 (the ‘454 patent), and 7,427,806 (the ‘806 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to luminescence conversion technology and LED packaging technology.  In particular, the ‘500, ‘732, ‘162, ‘317, and ‘621 patents relate to a light-radiating semiconductor component with a luminescence conversion element.  The ‘130 and ‘454 patents relate to an optoelectronic semiconductor component.  The ‘469 patent relates to a surface mountable light emitting or receiving device.  Lastly, the ‘806 patent relates to a semiconductor component emitting and/or receiving electromagnetic radiation, and a housing base for such a component.

In the complaint, OSRAM alleges that Samsung imports and sells products that infringe the asserted patents.  The complaint specifically refers to various Samsung High Power LEDs, White LEDs, and LED HDTVs as infringing products.

Regarding domestic industry, OSRAM states that its White LEDs, White LEDs using chip-level conversion (CLC) technology, Dragon LEDs, Advanced Power TOPLEDs, and Advanced Power TOPLED Plus LEDs are covered by claims of the asserted patents.  As to the economic prong, OSRAM states that its U.S. subsidiary OSRAM Opto Semiconductors Inc. of Sunnyvale, California (“OSRAM-OS U.S.”) provides application engineering, marketing, distribution, and sales within the U.S. of LEDs that are protected by the asserted patents.  OSRAM further states that another U.S. subsidiary, OSRAM Sylvania Inc. of Danvers, Massachusetts (“OSRAM Sylvania”) researches and develops, manufactures, markets, distributes, and sells within the U.S. modules containing LEDs that are protected by the asserted patents.  According to the complaint, OSRAM-OS U.S. and OSRAM Sylvania also provide a variety of related products, accessories, and services, including warranty and customer support.  OSRAM also states that it has invested substantial resources toward licensing its patented technology, and that OSRAM’s licensees engage in domestic industry activities in the U.S.

As to related litigation, OSRAM states that the ‘500 patent was the subject of a declaratory judgment action filed by Citizen Elecs. Co. in the U.S. District Court for the District of Columbia in 2005, but that that case was dismissed on jurisdictional grounds.  OSRAM furthers states that the ‘162 and ‘500 patents were the subject of litigation against Citizen Watch Co. in the U.S. District Court for the District of Delaware in 2006, but that that case settled before any substantive briefs were filed or orders were issued regarding the patents.  OSRAM further states that concurrent with the filing of the instant ITC complaint, OSRAM is filing suit against Samsung in the U.S. District Court for the District of Delaware alleging infringement of the asserted patents.  The complaint additionally states that, also concurrent with the filing of the instant ITC complaint, OSRAM is both filing another ITC complaint and filing suit in the U.S. District Court for the Northern District of California against LG Electronics, Inc. and related entities alleging infringement of many of the same patents that are asserted against Samsung in the instant ITC complaint.

With respect to potential remedy, OSRAM requests that the Commission issue a permanent exclusion order and a permanent cease and desist order directed at the named Samsung entities and their affiliates, subsidiaries, successors, and assigns.
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