The same device responsible for the new wave of color cell phone screens has earned UCSB materials Professor Shuji Nakamura a court award of 20 billion yen, equivalent to $189 million.

Nakamura is seeking compensation for his invention of the blue light emitting diode (LED) in a legal suit currently underway in the Japanese court system. His former employer, Nichia Corporation, is appealing the award.

The Tokyo District Court ruling is the first in Nakamura’s favor in a series of legal battles that have been fought between the UCSB professor and Nichia Corporation since December 2000. Though the victory is by no means a small one for Nakamura, its implications extend considerably beyond the scope of this particular case. The Jan. 30 award of 20 billion yen is by far the largest that has thus far been ordered by any Japanese court in a suit over patent rights, Nakamura said.

Nakamura left Nichia to come to UCSB in 1999, and was soon named the defendant in a lawsuit filed by his former employer over the issue of shared trade secrets.

Nakamura said the Nichia legal representatives tried to make him sign a contract relinquishing the rights to all research and invention done while he worked for Nichia.

“They threatened the University and me,” Nakamura said. “And finally they sued me in December, 2000; their claim was [that I was] infringing trade secrets.”

After winning this litigation in the United States in 2002, Nakamura counter-sued in Japan, first for the legal rights to his invention and, after that failed, for a 20 billion yen share of the profits derived from it. The Tokyo District Court’s ruling estimated that Nichia’s hold on the patent rights to the blue LED – which expires in 2010 – would garner a profit of 120.8 billion yen, and that Nakamura’s contribution entitled him to at least 50 percent of this sum, which is 60.43 billion yen. Nakamura said he does not yet know whether he will file additional suit for the remaining 40 billion yen, but the district court’s calculations certainly allow for the possibility.

“The sales and the profits from this invention are quite large,” said Dr. Steven DenBaars, also of UCSB’s Materials Dept. “It really is one of those inventions that’s once every 50 years.”

LEDs have numerous and varied applications, which are increasing at an astonishing rate, DenBaars said. Colored LEDs are used as bright indicator and background lights for automobiles. White gallium-nitride LEDs are used for colored cell phone displays, and are also in higher-intensity bicycle headlights. Green LEDs have already been used to replace traditional bulbs in 70 percent of California’s traffic signals, because they are brighter and more energy efficient, and have much greater life spans than their conventional counterparts.

A recent forecast by research group Strategies Unlimited predicts that new developments and increasing applications for High-Brightness LEDs will see the market grow from $2.5 billion at the end of 2003 to $5 billion in 2008.

Audi’s 2005 models will feature headlights that use LEDs. In addition to energy efficiency that far surpasses the traditional bulb, the size of the LEDs is much smaller and allow a greater degree of stylistic and design manipulation. Also in the works is a personal pocket projector that uses LEDs to project digital media much like a movie projector and is compact enough to attach to a cell phone. A model has already been prototyped and should be available in the electronics market in the next two years.

Nakamura is currently leading a research team at UCSB that aims to develop within the next five years an LED that will achieve greater efficiency than current lighting options.

“In this case we will be able to replace fluorescent lighting with [LED technology],” Nakamura said.

Blue LEDs are paving the way for more efficient, longer-lasting lighting systems in the 21st century, DenBaars said.

Regarding the impending rounds of legal action, Dr. DenBaars said, “I hope they settle, so we can get back to research.”