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Nichia Corp. v. Everlight Americas, Inc.

No Error in Denial of Permanent Injunction Where Record Indicated Past Willingness to License

Nichia Corp. v. Everlight Americas, Inc., (Fed. Cir. Apr. 28, 2017) (Reyna, Hughes, STOLL) (E.D. Tex.: Gilstrap) (3 of 5 stars)

Fed Cir affirms bench judgment of liability for patent infringement and denial of permanent injunction. Nichia’s patents related to designs and methods for manufacturing LEDs. The district court did not clearly err in finding Nichia’s claims valid and infringed. The opinion discusses how the district court correctly construed the claims. It rejects Everlight’s argument that “if different words are used in the claim and specification, then we must read that distinction as an intended difference.” Slip op. at 10. While different terms may denote different meanings in some patents, that was not the case here. The opinion also rejects Everlight’s invalidity arguments as lacking both in the references and in the reason to combine. As to each of Nichia’s three patents, the opinion is generally fact-specific.

The district court did not abuse its discretion in declining to enter a permanent injunction against in Everlight, at least because Nichia failed to demonstrate that irreparable harm would result absent an injunction. The district court did not clearly err in finding that Nichia was not in meaningful competition with Everlight, noting that “Nichia is an LED manufacturer as well as a packager, while Everlight is solely an LED packager.” Slip op. at 23. Compared to Nichia’s total sales, Everlight’s sales were “the proverbial drop in the bucket.” Id. Similarly, the district court did not err in concluding that Nichia had failed to demonstrate a single lost sale attributable to Everlight’s activity. And the district court did not err in rejecting Nichia’s price erosion argument, pointing out that there were other low-price competitors in the market besides Everlight that were applying price pressure to Nichia. The district court also did not err in concluding that Nichia’s past willingness to license its patents weighed against a finding of irreparable harm. Per Acumed, 551 F.3d 1323 (Fed. Cir. 2008), the district court was entitled to rely on past licensing activity as suggesting that a royalty would be sufficient to remedy any infringement.

KEYWORDS: CLAIM CONSTRUCTION; INFRINGEMENT (YES); INVALIDITY (NO); PERMANENT INJUNCTION (NO)