Appotronics Corp Ltd v. Delta Electronics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Appotronics Corporation Limited (China)
  • Defendant: Delta Electronics, Inc. (Taiwan)
  • Plaintiff’s Counsel: Mayer Brown LLP
• Case Identification: 1:19-cv-01165, E.D. Va., 09/06/2019
• Venue Allegations: Venue is alleged as proper under 28 U.S.C. § 1391.
• Core Dispute: Plaintiff seeks correction of inventorship for a U.S. patent under 35 U.S.C. § 256, alleging that Defendant misappropriated technology disclosed under a confidentiality agreement and secretly filed a patent application naming its own employees, rather than Plaintiff's employees, as the true inventors.
• Technical Context: The technology concerns illumination systems for digital projectors, specifically methods for generating multiple colors of light from a single laser source and a phosphor-coated component.
• Key Procedural History: The complaint alleges that the parties began collaborating under a confidentiality agreement in 2010. Plaintiff alleges it disclosed detailed designs and a working prototype of the invention to Defendant in mid-2011, and that Defendant filed a provisional patent application on the same subject matter less than one month later, improperly naming its own employees as inventors.

Case Timeline

Date	Event
2010-07-22	Parties allegedly executed a confidentiality agreement.
2011-01-01	Collaborative project work allegedly began.
2011-08-23	Plaintiff allegedly demonstrated and delivered a working prototype.
2011-09-22	Priority date; Defendant filed U.S. Provisional Application No. 61/537,687.
2015-05-05	U.S. Patent No. 9,024,241 issued.
2019-09-06	Complaint for correction of inventorship filed.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,024,241 - 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

Issued May 5, 2015

The Invention Explained

• Problem Addressed: The patent describes challenges in prior art projector illumination systems, which often suffered from high cost, complexity, and insufficient color purity or brightness ( Compl. ¶1, Overview; ’241 Patent, col. 3:1-11). Specifically, systems using separate phosphors to generate red and green light were inefficient because red phosphor has lower exciting efficiency and saturates more easily than green phosphor, limiting the overall light output (’241 Patent, col. 3:1-8).
• The Patented Solution: The invention proposes a more efficient illumination architecture. A single light source (e.g., a blue laser) emits a "first waveband light" that strikes a phosphor device coated with "a first phosphor agent" (e.g., a yellow-green phosphor) (’241 Patent, col. 5:29-31). This converts the initial light into a "third waveband light" (e.g., a yellow-green light) that contains the components of multiple colors. This third waveband light is then sent through an "image processing device" that uses optical elements to separate it into at least two distinct colors, such as red and green (’241 Patent, Abstract; col. 5:58-62). This approach avoids using inefficient red phosphors directly.
• Technical Importance: By using a single, more efficient type of phosphor and then optically separating the resulting light, the invention aims to create a simpler, less expensive, and brighter projection system with better color performance compared to systems reliant on multiple, less-efficient phosphor types (’241 Patent, col. 4:16-30).

Key Claims at a Glance

• The complaint alleges inventorship of the entire subject matter of the ’241 Patent, not specific claims (Compl. ¶27). Independent claim 1 is representative of the core inventive concept.
• Independent Claim 1:
  • A phosphor device of an illumination system... emitting a first waveband light and having an optical path, said phosphor device comprising:
  • a first section; and
  • a first phosphor agent coated on said first section, wherein
  • after said first waveband light is received by said first phosphor agent, said first waveband light is converted into a third waveband light, and
  • said third waveband light is directed to said optical path, so that said third waveband light is separated into at least two color lights along said optical path.
• The complaint reserves the right to seek correction of inventorship for all claims, including dependent claims, and alternatively pleads that its employees should be added as joint inventors (Compl. ¶30).

III. The Accused Instrumentality

The complaint does not allege infringement by a product and therefore does not identify an accused instrumentality in the traditional sense. The action is for correction of patent inventorship, where the patent itself is the subject of the dispute.

IV. Analysis of Inventorship Allegations

The complaint does not contain claim charts, as it is an action for correction of inventorship rather than patent infringement. The central allegation is that the invention claimed in the ’241 Patent was conceived and reduced to practice by Plaintiff’s employees and then misappropriated by Defendant.

The complaint sets forth a narrative theory of misappropriation based on the following alleged facts:

• Confidential Relationship: In 2010, the parties entered into a collaborative project under a confidentiality agreement for Plaintiff’s affiliate (YLX) to design an improved light source for Defendant's projectors (Compl. ¶6-7).
• Conception and Disclosure: The invention was allegedly conceived by Drs. Fei Hu and Yi Li of YLX (Compl. ¶25). From January through August 2011, YLX allegedly made "several disclosures of its light source designs to Delta, including 3D drawings and prototypes, that... fully described the inventions later disclosed and claimed in the ’241 Patent" (Compl. ¶8).
• Reduction to Practice: On or about August 23, 2011, YLX allegedly demonstrated and provided Defendant with "a working prototype using a light source module that embodied the key invention claimed by the ’241 Patent" (Compl. ¶9).
• Misappropriation: Less than one month later, on September 22, 2011, Defendant allegedly "secretly and without notice to YLX, filed a United States provisional patent application for the subject matter invented by Drs. Li and Hu and previously disclosed to Delta," which ultimately issued as the ’241 Patent (Compl. ¶12-14). Plaintiff alleges that Defendant’s named inventors did not invent the subject matter and were only aware of it through their interactions with Plaintiff (Compl. ¶27).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Factual Question (Conception): The case will likely hinge on a factual determination of who first conceived of the invention as claimed in the ’241 Patent. The court will need to weigh evidence of conception, such as the 3D drawings, prototype details, emails, and testimony that Plaintiff references (Compl. ¶8-10).
  • Legal Question (Contribution): The complaint alternatively pleads that Drs. Hu and Li should be added as joint inventors (Compl. ¶30). This raises the question of whether the named inventors from Defendant made any inventive contribution that was not insignificant. If they did, joint inventorship may be the proper remedy; if not, a full substitution of inventors may be ordered.
  • Evidentiary Question (Corroboration): In inventorship disputes, an alleged inventor's testimony must typically be corroborated by independent evidence. A key question will be whether the disclosures, drawings, and prototype receipt referenced in the complaint constitute sufficient corroboration for the conception testimony of Drs. Hu and Li (Compl. ¶8-9).

V. Key Claim Terms for Construction

While claim construction is not the primary focus of an inventorship case, the scope of the claims defines what was invented. The dispute may involve whether the technology Plaintiff allegedly disclosed matches the scope of what Defendant ultimately claimed.

• The Term: "a first phosphor agent" (from claim 1)
• Context and Importance: The use of a single type of phosphor to generate a light that is later optically separated into multiple colors is a central feature of the claimed invention. Practitioners may focus on this term because the core of the inventorship dispute will be whether Plaintiff’s employees conceived of this specific architecture, which the patent contrasts with prior art systems using multiple different phosphors for different colors (’241 Patent, col. 2:4-10).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim uses the singular phrase "a first phosphor agent." The specification supports this by describing embodiments where this single agent is a "green phosphor agent, a yellow phosphor agent or a yellow-green phosphor agent," which converts a blue light into a broader spectrum light that is later separated (’241 Patent, col. 5:29-31, 5:53-57). This could support a reading on any single phosphor type capable of this function.
  • Evidence for a Narrower Interpretation: The patent’s background explicitly criticizes the poor efficiency of red phosphors in prior art (’241 Patent, col. 3:1-8). The solution is to generate red light by separating it from a light created by a more efficient, non-red phosphor. This context could support a narrower construction, limiting the term to phosphors that specifically generate a light containing both green and red wavebands, thereby solving the stated problem.

VI. Other Allegations

• Correction of Inventorship: The complaint is filed under 35 U.S.C. § 256, which allows for the correction of inventorship on an issued patent when an error arose "without any deceptive intention" on the part of the omitted inventor (Compl. ¶18, 28).
• Allegations of Willful and Deceptive Conduct: Despite pleading error under § 256, the complaint alleges that Defendant’s actions in filing the application with incorrect inventors were "intentional, willful and malicious" and constituted a theft of technology (Compl. ¶13, 26). It also alleges the filing was in breach of a confidentiality agreement (Compl. ¶13). These allegations of deceptive intent on Defendant's part are distinct from the "error" required for the omitted inventors and may be relevant to the court's overall assessment of the case.

VII. Analyst’s Conclusion: Key Questions for the Case

• A primary issue will be one of inventive conception: can Plaintiff provide sufficient corroborated evidence to prove that its employees, Drs. Hu and Li, conceived of the complete and operative invention claimed in the ’241 patent and communicated that conception to Defendant prior to the patent’s priority date?
• The case also presents a question of inventive contribution: assuming Plaintiff's employees made an inventive contribution, what, if any, contribution was made by the named inventors from Defendant? The answer will determine whether the court orders a complete substitution of inventors or a finding of joint inventorship.
• Finally, a central theme is one of misappropriation: does the evidence demonstrate that Defendant used confidential information, disclosed for the purpose of a collaborative project, to secretly file for its own patent? While the cause of action is for inventorship correction, the alleged breach of trust provides the critical context for the dispute.