The Rare Earth Alliance delivered another good news, regarding the request for invalidation of two US patents 6,491,765 and 6,537,385 filed by the Rare Earth Permanent Magnet Industry Technology Innovation Strategic Alliance ("Alliance") against Hitachi Metals Corporation ("Hitachi Metals"), the US Patent and Trademark Office patent The Trial and Appeal Board recently issued a final written decision, ruling that all claims in suit in the aforementioned patents are invalid.The aforementioned decision once again proves that there are serious flaws in the stability of Hitachi Metal's patents, and that the continuation of Hitachi Metal's patent licenses is achieved through bundled sales and threats of litigation. In response to this behavior, the alliance launched a two-line combat plan, not only filed an anti-monopoly lawsuit against Hitachi Metals' bundling and tying sales in China, but also filed a patent invalidation procedure in the United States. Up to now, the alliance's two-line combat success has been reported frequently, and it is expected to finally break Hitachi Metal's patent blockade against Chinese companies.
Hitachi Metals is a company headquartered in Tokyo, Japan, which is the world's largest production and sales of sintered NdFeB. Through mergers and acquisitions and self-development, the defendant has obtained many patents of sintered NdFeB. Up to now, Hitachi Metals has more than 600 patents related to sintered NdFeB.
Hitachi Metal adopts the form of license to authorize the licensee to produce and sell sintered NdFeB magnets under the relevant patents of Hitachi Metal in the area covered by its patent, and the licensee outside Japan is not allowed to sell NdFeB in Japan magnet. In China, Hitachi Metals has only authorized eight companies, and the unlicensed companies represented by alliance companies are subject to the patent blockade of Hitachi Metals, and cannot enter the high-end markets such as the United States, Europe, and Japan. This has led to domestic sintered NdFeB There is a serious overcapacity of magnets, and the industrial structure cannot be upgraded.
In order to break the patent blockade of Hitachi Metal in the field of sintered NdFeB and expand overseas markets smoothly, Shenyang Zhongbei Tongci Technology Co., Ltd., Ningbo Tongchuang Strong Magnetic Materials Co., Ltd., Ningbo Permanent Magnetics Co., Ltd., and Ningbo Ketian Magnetics Co., Ltd. Co., Ltd., Hangzhou Permanent Magnet Group Co., Ltd., Ningbo Huahui Magnetic Industry Co., Ltd., and Guangdong Jiangmen Magnetic Source New Material Co., Ltd. established the "Rare Earth Permanent Magnet Industry Technology Innovation Strategic Alliance" in August 2013 to work together , intending to break Hitachi Metal's patent blockade.
After employing top domestic and foreign technical experts and anti-monopoly law experts for analysis, the alliance found that Hitachi Metal's so-called more than 600 currently valid patents had no revolutionary innovations in production technology compared with 20 years ago. However, Hitachi Metals has applied for patents for content that should belong to others or public technology through tie-in sales, targeted applications, and litigation threats, and has packaged and bundled the patents, resulting in the fact that it still obtains patents after the original patent expires. Patent Protection. Hitachi Metal's aforementioned actions violated the provisions of the Patent Law on the one hand, and also violated the provisions of the "Anti-Unfair Competition Law" and the "Anti-Monopoly Law" on the other hand.
In order to comprehensively curb Hitachi Metal’s abuse of patents and illegal monopoly, the alliance adopted a two-pronged approach. In October 2014, four companies in the alliance filed a lawsuit against Hitachi Metal in the Ningbo Intermediate People’s Court for tying sales and refusing to license abuse of market dominance for monopoly infringement. Meanwhile, on August 11, 2014, the Alliance filed an invalidation proceeding with the USPTO against Hitachi Metal Core Patents 6,491,765 and 6,537,385.
In December 2015, the anti-monopoly case in Ningbo was opened, and the case is currently waiting for the first-instance judgment. On February 8, 2016, the US Patent and Trademark Office finally confirmed that the patents 6,491,765 and 6,537,385 are invalid. Although at present, Hitachi Metals still has the right to request a retrial or file an appeal, but judging from past cases, the possibility of overturning the case is very slim. The alliance is confident that it will continue to win in the inter partes review process against other patents, as well as in the ongoing antitrust litigation. The alliance also hopes that more colleagues in the industry will join in and jointly break the monopoly of Hitachi Metals.
