By Eric Schweibenz

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On February 27, 2009, Professor Gertrude Rothschild of Columbia University in New York filed a complaint requesting that the ITC commence an investigation pursuant to section 337.


The complaint alleges that the following companies unlawfully import into the U.S., sell for importation, and sell within the U.S. after importation certain light emitting diode (LED) chips, laser diode chips and products containing those devices that infringe claims 10, 12, 13, and 16 of U.S. Patent No. 5,252,499:


•      Chi Mei Lighting Technology Corp. of Taiwan;
•      Tekcore Co., Ltd. of Taiwan;
•      Toyolite Technologies Corp. of Taiwan;
•      Tyntek Corporation of Taiwan;
•      Visual Photonics Epitaxy Co., Ltd. of Taiwan; and
•      Xiamen Sanan Optoelectronics Technology Co., Ltd. of China.


According to the complaint, the ‘499 patent “concerns methods for doping wide band-gap semiconductor material in order to produce a low resistivity semiconductor.”  The complaint further asserts that the ‘499 patent is the subject of a number of licenses, pending litigation in the U.S. District Court for the Southern District of New York, and a pending investigation before the ITC (Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640)).  The complaint also alleges that none of the defendants in the district court actions or respondents in the pending ITC investigation are named as a proposed respondent in the instant matter.


Interestingly, Professor Rothschild’s complaint includes no assertion regarding satisfaction of the technical prong of the ITC’s domestic industry requirement.  In fact, the complaint asserts “Professor Rothschild does not need to make the additional showing that the technical prong of the domestic industry requirement has been satisfied because she can rely on her substantial investment in enforcement and licensing of the ‘499 patent to satisfy the requirements of the economic prong of the domestic industry requirement.”


Regarding the economic prong, the complaint alleges that “[a] domestic industry exists as a result of Professor Rothschild’s substantial investment in the exploitation of the ‘499 patent through enforcement and licensing.”  Specifically, the complaint alleges that Professor Rothschild “has vigorously enforced her rights with regard to the ‘499 patent as a part of her licensing efforts” and such efforts have resulted in license grants under the ‘499 patent to several companies, including Epistar Corporation, Koninklijke Philips Electronics N.V., Nichia Chemical Industries, Ltd., and Toyoda Gosei Co., Ltd.