The Patent Reexaminiation and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) on July 5 handed down a decision upholding a patent owned by China’s Taiwan-based company Delta Electronics, Inc. (台达电子工业股份有限公司) and challenged by Chinese rival Appotronics Corp. Ltd. (深圳光峰科技股份有限公司) in October 2021. The challenged Chinese Patent No. 201110041436.1 covers a heat dissipation assembly and projection apparatus with such an assembly.
Founded in 1951, Taipei city-based Delta specializes in manufacturing direct current (DC) industrial and computer fans and switching power supplies. The company operates about 200 facilities worldwide, including manufacturing, sales, and R&D centers. Delta is a major supplier of power components to U.S. tech giants Apple, Inc. and Tesla, Inc. Appotronics, founded in 2006, develops and manufactures laser display equipment. Appotronics invented the first blue laser-based phosphors laser display technology called ALPD, which overcomes the limitations of light sources such as mercury-based lamps and light emitting diodes (LEDs) and the problem of speckle in a traditional system that uses separate red, green, and blue laser sources to generate an image. Appotronics in July 2019 got listed on the Sci-Tech innovAtion boaRd (STAR Market) of the Shanghai Stock Exchange (SSE) and was recognized among the first bevy of companies listed on the Chinese equivalent of America’s Nasdaq.
On July 29, 2019, which was one week after Appotronics’s listing, Delta lodged four separate lawsuits against Appotronics and Fengmi (Beijing) Technology Co., Ltd. (峰米（北京）科技有限公司), a joint venture created by it and Xiaomi Corp., in the Beijing Intellectual Property Court for manufacturing and distributing Xiaomi Mijia Laser Projector 4K MJJGTYDS01FM infringing its four patents Chinese Patent No. 201410249663.7 covering the preparation method of light source module and color wheel, Chinese Patent No. 201610387831.8 covering a phosphor color wheel and light source system with the same, Chinese Patent No. 201310017478.0 covering an optical system and Chinese Patent No. 201010624724.5 covering an illumination system and projection apparatus comprising the same, seeking 64.04 million yuan ($9.5 million) in damages and costs.
On the same day, Appotronics lodged 10 separate lawsuits against Delta’s two wholly-owned mainland China-based subsidiaries Delta Electronics (Shanghai) Co., Ltd. (台达电子企业管理（上海）有限公司) and Delta Video Display System (Wujiang) Co., Ltd. (中达视讯（吴江）有限公司), and Delta’s distributor Shenzhen Supernet Technology Co., Ltd. (深圳市超网科技有限公司) in the Shenzhen Intermediate People’s Court of Guangdong province for manufacturing and distributing 19 models of projectors DET-S18K, DET-S16K, DET-S20K, DET-SWU1, DET-S65WU, DET-S70WU, DET-S65X, DET-SX1, DET-5U, DET-4MU5+, DET-5W, DET-5X, DET-4W, DET-4U, DET-SU2, DET-SX2, DET-S85U, DET-S85X, and DET-S95U infringing its Chinese Patent No. 200880107739.5 covering a multicolor illumination device using moving plate with wavelength conversion materials and Chinese Patent No. 200810065225.X covering a light source structure and method for improving light conversion efficiency based on fluorescent powder, seeking 56 million yuan ($8.3 million) in damages and costs. The 19 allegedly infringing models of projectors were all sold under the “DET” brand, which was owned by Dehao Electronics Technology Co., Ltd. (广州德浩科视电子科技有限公司).
Also on the same day, Appotronics filed a petition with the PRID for review of Delta’s four asserted patents including Chinese Patent No. 201610387831.8, Chinese Patent No. 201310017478.0, and Chinese Patent No. 201310625063.1. The PRID in February 2020 issued a decision invalidating Chinese Patent No. 201310625063.1. The Guangzhou Intellectual Property Court in October 2020 ruled against Delta in the abovementioned lawsuit lodged by it against Appotronics. Delta appealed the ruling to China’s Supreme People’s Court (SPC) and afterwards voluntarily dropped the case. The top court in May 2021 upheld the lower court ruling.
Appotronics on September 6, 2019 filed a lawsuit in the United States Federal Court for the Eastern District of Virginia against Delta for correction of inventorship of U.S. Patent No. 9,024,241 covering a phosphor device and illumination system for converting a first waveband light into a third waveband light which is separated into at least two color lights and projection apparatus with the same. Appotronics accused Delta of failing to identify Li Yi and Hu Fei, two ex-employees of Appotronics’s former affiliate YLX, Inc., as inventors of the technology covered the ’241 patent to replace the currently listed inventors Wang Bo, Zhang Kesu, and Hua Jianhao, Delta’s employees. Appotronics said that Li Yi and Hu Fei had assigned all rights and interest in the technology covered by the patent to Appotronics. The two parties in January 2022 agreed to have the case dismissed with prejudice.
In parallel with the U.S. lawsuit, Appotronics in November 2019 filed a lawsuit in the Shenzhen Intermediate People’s Court for correction of inventorship of Chinese Patent No. 201610387831.8 sharing the patent family of U.S. Patent No. 9,024,241. Appotronics likewise claimed that Li Yi and Hu Fei were the true and sole inventors of the patent.
Delta on September 20, 2019 lodged another three separate lawsuits against Appotronics and its distributor Shenzhen Futian Suopuni Projector Video System Store (深圳市福田区索普尼投影视频系统商行) in the Guangzhou Intellectual Property Court for manufacturing and distributing Appotronics Laser Projector AL-LX410UST infringing Delta’s three patents Chinese Patent No. 201610387831.8, Chinese Patent No. 201310017478.0, and Chinese Patent No. 201310625063.1 covering a blue light synthesis method and system, seeking 48.44 million yuan ($7.2 million) in damages and costs. The former two asserted patents were also asserted in the abovementioned lawsuit against Appotronics and Fengmi.
Appotronics in 2020 filed a petition with the PRID for review of Appotronics’s asserted Chinese Patent No. 200810065225.X. The PRID in July 2020 issued a decision upholding the validity of the patent. Delta appealed the administrative ruling to the Beijing Intellectual Property Court, which in turn upheld the PRID’s ruling in September 2021. Delta further appealed the court’s ruling to the SPC, which in turn upheld the lower court’s ruling in April 2022.
Appotronics in August 2020 lodged 15 separate lawsuits against Delta’s two subsidiaries Delta Electronics (Shanghai) Co., Ltd. and Delta Video Display System (Wujiang) Co., Ltd., and Delta’s distributor Dijia Baosheng (Beijing) Electronic Technology Co., Ltd. (缔佳宝胜（北京）电子科技有限公司) in the Guangzhou Intellectual Property Court for manufacturing and distributing 16 Vivitek-branded models of projectors DU7090Z, RU70953, RU75953, DU8190Z, DU8090Z, RU81913, DU6693Z, RU47723, RU46723, RX46313, RW46513, RH46623, DU9800Z, DW763Z-UST, DX761Z, and DH765Z and 11 U.K.’s Digital Projection-branded models of projectors E-Vision Laser 8500, E-Vision Laser 6500, E-Vision Laser 10K, E-Vision Laser 11000, E-Vision Laser 7600, E-Vision Laser 4K, M-Vision Laser 18K, M-Vision Laser
21000, HIGHlite, HIGHlite Laser II 3D and HIGHlite Laser 3D infringing its Chinese Patent No. 200880107739.5 and Chinese Patent No. 200810065225.X, seeking 80 million yuan ($12 million) in damages and costs. The two asserted patents were also asserted in the abovementioned lawsuit against Delta Shanghai, Delta Wujiang, and Shenzhen Supernet.
Appotronics in December 2021 lodged a lawsuit against Delta in the Guangzhou Intellectual Property Court for malicious prosecution, seeking monetary damages and public apologies.