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Eidos Display, LLC v. Chi Mei Innolux Corp.

United States District Court, E.D. Texas, Tyler Division

December 8, 2017

EIDOS DISPLAY, LLC, et al., Plaintiffs,
v.
CHI MEI INNOLUX CORPORATION AND CHI MEI OPTOELECTRONICS USA, INC. Defendants.

          FINDINGS OF FACT AND CONCLUSIONS OF LAW

          RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE.

         The Court held a jury trial in this matter from June 26-30, 2017. (Dkt. No. 873.) On June 29th, 2017, after both sides finished presenting evidence to the jury and before the Court submitted to the jury those issues proper for its consideration, the Court conducted a bench trial outside the presence of the jury on Innolux's equitable estoppel defense. (Dkt. No. 782; Dkt. No. 852, 6/29/2017 P.M. Trial Tr. at 21:20-43:01.) After considering the Parties' evidence, arguments, and submissions related thereto, the Court now issues the following Findings of Fact (“FF”) and Conclusions of Law (“CL”).

         I. FINDINGS OF FACT (“FF”)

         A. The Parties

         [FF1] Plaintiffs Eidos Display, LLC and Eidos III, LLC (collectively “Eidos” or “Plaintiffs”) are limited liability companies organized under the laws of Delaware. (Dkt. No. 782 at 17-18.)

         [FF2] Defendant Chi Mei Innolux Corporation is incorporated under the laws of Taiwan with its principal place of business at No. 160, Kesyue Road, Jhunan Science Park, Miaoli County 350, Taiwan 74147, Republic of China. (Id. at 18.) Chi Mei Innolux Corporation was formed in 2010 by a merger of TPO Display Corporation, Innolux Display Corporation, and Chi Mei Optoelectronics (“CMO”). (Dkt. No. 849, 6/28/2017 A.M. Trial Tr. at 14:20-15:20.) Chi Mei Innolux Corporation is now known as Innolux Corporation. (Id.)

         [FF3] Defendant Chi Mei Optoelectronics USA, Inc. (“CMO USA”) is a subsidiary of Chi Mei Optoelectronics Japan Co., Ltd., and incorporated under the laws of Delaware with its principal place of business at 101 Metro Drive, Suite 510, San Jose, California 95110. (Dkt. No. 782 at 18.) CMO USA is now known as Innolux USA. (Dkt. No. 849, 6/28/2017 A.M. Trial Tr. at 9:19-11:20.)

         B. The '958 Patent.

         [FF4] On April 25, 2011, Eidos filed the complaint in this case against Defendants Chi Mei Innolux Corporation and CMO USA (collectively “Innolux”). (Dkt. No. 1.) Eidos alleged that Innolux directly and indirectly infringed Claim 1 of U.S. Patent No. 5, 879, 958 (the “'958 Patent”). (Id. at ¶ 36-40.)

         [FF5] The '958 Patent is entitled “Method of Producing an Electro-optical Device.” (PX-001-001.) The '958 Patent issued on March 9, 1999. (Id.) The inventors listed on the'958 Patent are Ken Kawahata, Akira Nakano, Hirofumi Fukui, Hiroyuki Hebiguchi, Kenji Yamamoto, and Chisato Iwasaki. (Id.)

         [FF6] The '958 Patent was assigned by the inventors to Frontec Inc. (“Frontec”) on May 25, 1995. (PX-003-001.) Frontec was a joint venture between LG Philips LCD Co., Ltd. (now known as LG Display Co., Ltd. (“LG”)), and Alps Electric Co., Ltd. (“Alps”). (Dkt. No. 846, 6/26/2017 P.M. Trial Tr. at 150:13-20.)

         [FF7] Effective December 1, 2000, Frontec assigned the '958 Patent to LG and Alps, as joint owners. (PX-004-001.)

         [FF8] As part of this arrangement, LG could not assert the '958 Patent without consent from Alps. (Dkt. No. 846, 6/26/2017 P.M. Trial Tr. at 169:09-170:01 (“[W]ith 50 percent ownership of the patent, unless there is a consent from Alps, LGD was not in a position to do anything.”).)

         [FF9] On May 29, 2008, LG assigned its 50% ownership interest in the '958 Patent to Eidos Display. (PX-006-001.)

         [FF10] On June 13, 2008, Alps assigned its 50% ownership interest in the '958 Patent to LG. (PX-007-001.)

         [FF11] On August 26, 2008, LG assigned that remaining 50% ownership interest (originally held by Alps) to Eidos. (PX-008-001.)

         [FF12] Thus, as of August 2008, Eidos held all right, title, and interest in the '958 Patent. (Dkt. No. 513 at 4-5 (concluding that Eidos is the owner of the '958 Patent and thus has standing to bring claims for infringement of such patent); Dkt. No. 552 (adopting this conclusion).) However, LG Display retained a right to receive 55% of the proceeds from licenses to the '958 Patent after certain costs were deducted. (PX-010)

         C. Th ...


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