DCT
2:17-cv-04263
Document Security Systems Inc v. Cree Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Document Security Systems, Inc. (New York)
- Defendant: Cree, Inc. (North Carolina)
- Plaintiff’s Counsel: Russ August & Kabat
- Case Identification: 2:17-cv-04263, C.D. Cal., 06/08/2017
- Venue Allegations: Venue is alleged based on Defendant maintaining a regular and established place of business within the Central District of California, specifically an office in Goleta, California.
- Core Dispute: Plaintiff alleges that Defendant’s Light-Emitting Diode (LED) components and products incorporating them infringe five patents related to LED package structure, thermal management, and fabrication methods.
- Technical Context: The patents address challenges in packaging high-power LEDs, where managing heat dissipation and mechanical robustness in a compact form factor is critical for performance, brightness, and reliability.
- Key Procedural History: Plaintiff acquired the asserted patent portfolio from Agilent Technologies, Inc. or its successors in November 2016. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against four of the five patents-in-suit. These proceedings resulted in the cancellation of all claims asserted in the complaint for U.S. Patent Nos. 6,949,771; 7,256,486; and 7,919,787, as well as several claims of U.S. Patent No. 7,524,087.
Case Timeline
| Date | Event |
|---|---|
| 2001-04-25 | Priority Date for ’771 Patent |
| 2003-06-27 | Priority Date for ’486, ’355, and ’787 Patents |
| 2005-09-27 | ’771 Patent Issued |
| 2007-08-14 | ’486 Patent Issued |
| 2007-10-09 | ’355 Patent Issued |
| 2007-11-16 | Priority Date for ’087 Patent |
| 2009-04-28 | ’087 Patent Issued |
| 2011-04-05 | ’787 Patent Issued |
| 2016-11-01 | Plaintiff DSS acquires the asserted patent portfolio |
| 2017-06-08 | Complaint Filed |
| 2017-12-03 | IPR filed against ’771 Patent (IPR2018-00265) |
| 2017-12-21 | IPR filed against ’486 Patent (IPR2018-00333) |
| 2018-01-25 | IPR filed against ’087 Patent (IPR2018-00522) |
| 2018-05-10 | IPR filed against ’787 Patent (IPR2018-00965) |
| 2020-02-27 | IPR Certificate issued for ’771 Patent (claims 1-9 cancelled) |
| 2021-06-23 | IPR Certificate issued for ’787 Patent (claims 1-14 cancelled) |
| 2022-08-03 | IPR Certificate issued for ’087 Patent (claims 1, 6-8, 15, 17 cancelled) |
| 2022-12-14 | IPR Certificate issued for ’486 Patent (claims 1-5 cancelled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,949,771 - “Light Source,” issued September 27, 2005
The Invention Explained
- Problem Addressed: The patent describes the problem of poor heat dissipation in conventional surface-mount LED packages, which "trap" heat in thermally insulating substrate and encapsulant materials, thereby limiting the power, brightness, and operational lifetime of the LED die (ʼ771 Patent, col. 2:38-45, 58-65).
- The Patented Solution: The invention proposes a structure with an aperture, or opening, through the substrate. The LED die is mounted on a metallic platform that covers this aperture, creating a direct and efficient thermal path for heat to escape from the die to an external surface of the package, such as a heat sink on a circuit board (’771 Patent, Abstract; col. 2:4-15).
- Technical Importance: This design directly addresses the thermal management bottleneck, enabling LEDs to be driven at higher power levels for increased light output without succumbing to thermal damage (’771 Patent, col. 2:58-65).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-8 (Compl. ¶15). Subsequent to the complaint filing, an IPR proceeding resulted in the cancellation of claims 1-9 (’771 Patent, IPR Certificate, p. 2).
- Independent Claim 1, now cancelled, described:
- A substrate with opposing surfaces and an aperture extending between them.
- A platform covering the aperture's first opening, with the platform being "located outside of said aperture."
- A light emitting diode (LED) mounted on the platform but within the aperture.
- A transparent encapsulant over the LED.
- The aperture having a side wall that tapers outwards.
- The platform extending over the side wall.
U.S. Patent No. 7,256,486 - “Packaging Device for Semiconductor Die, Semiconductor Device Incorporating Same and Method of Making Same,” issued August 14, 2007
The Invention Explained
- Problem Addressed: The patent identifies the limitations of conventional packaging for advanced semiconductor dies (like certain LEDs) that require high-temperature attachment processes. The materials in standard packages are often incompatible with these high temperatures, and the packages themselves are too bulky for high-density applications (’486 Patent, col. 1:47-64).
- The Patented Solution: The invention is a compact packaging device, or "submount," comprising a substantially planar substrate (e.g., ceramic) with a conductive "interconnecting element" (such as a filled via) passing through it. This element connects a die mounting pad on the top surface to a connecting pad on the bottom surface, creating a robust package that can withstand high temperatures (’486 Patent, Abstract; col. 2:9-18).
- Technical Importance: This submount design allows a high-temperature die attach process to be performed on the submount, which can then be handled and attached to a final circuit board using conventional, lower-temperature assembly methods (’486 Patent, col. 2:24-32).
Key Claims at a Glance
- The complaint asserts at least claim 1 (Compl. ¶22). Subsequent to the complaint filing, an IPR proceeding resulted in the cancellation of claims 1-5, while claim 6 was found patentable (’486 Patent, IPR Certificate, p. 2). The complaint does not assert claim 6.
- Independent Claim 1, now cancelled, described:
- A substantially planar substrate with opposed major surfaces.
- An electrically conductive mounting pad on one major surface.
- An LED with a metallized bottom major surface mounted on the mounting pad.
- A first electrically conductive connecting pad on the other major surface.
- A first electrically conductive interconnecting element extending through the substrate to connect the mounting pad and the connecting pad.
U.S. Patent No. 7,279,355 - “Method for Fabricating a Packing Device for Semiconductor Die and Semiconductor Device Incorporating Same,” issued October 9, 2007
Technology Synopsis
This patent claims the method of making the device described in the ’486 Patent. The core steps involve providing a substrate with a through-hole, filling the hole with a conductive slug by squeezing it in, and then forming conductive pads on the opposing surfaces in contact with the slug (’355 Patent, Claim 1).
Asserted Claims
At least claim 1 (Compl. ¶29).
Accused Features
The complaint alleges that Defendant infringes by performing the patented processes in the United States to manufacture its LED products, and by importing products made by these processes (Compl. ¶¶ 28, 31).
U.S. Patent No. 7,524,087 - “Optical Device,” issued April 28, 2009
Technology Synopsis
This patent describes an optical device package, such as a plastic leaded chip carrier (PLCC). The invention focuses on a housing structure with a first pocket on its top face to hold the LED, and a second pocket on its bottom face to reduce material mass, which in turn is intended to decrease moisture absorption and increase rigidity (’087 Patent, Abstract; col. 2:10-25). The design also includes specific lead-receiving compartments in the sidewall to further reduce mass and prevent lead deflection (’087 Patent, col. 3:1-16).
Asserted Claims
At least claim 1 (Compl. ¶37). Various claims, including claim 1, were later cancelled or disclaimed in IPR proceedings (’087 Patent, IPR Certificates).
Accused Features
The complaint accuses various Cree LED product families, such as the CLA2 and XLamp ML-series, and products incorporating them (Compl. ¶36).
U.S. Patent No. 7,919,787 - “Semiconductor Device with a Light Emitting Semiconductor Die,” issued April 5, 2011
Technology Synopsis
This patent discloses a semiconductor device structure similar to that of the ’486 Patent, but with a different interconnect architecture. Instead of a via passing through the substrate, this invention claims an interconnecting element located on at least one sidewall of the substrate, which electrically connects the bonding pads on the top surface to the connecting pads on the bottom surface (’787 Patent, Claim 1). This allows for electrical connection without drilling through the substrate.
Asserted Claims
At least claims 1 and 7 (Compl. ¶44). All claims were later cancelled in an IPR proceeding (’787 Patent, IPR Certificate, p. 2).
Accused Features
The complaint accuses Cree LED products that include "Direct Attach," "SC3," and/or "SC5 Technology" (Compl. ¶43).
III. The Accused Instrumentality
Product Identification
The complaint names numerous product families, primarily within Defendant’s XLamp® line of LEDs, including the ML, MX, XR, XP, XH, XQ, and XT series, among others. It also accuses downstream products such as light bulbs, displays, and fixtures that incorporate these LED components (Compl. ¶¶ 14, 21, 28, 36, 43).
Functionality and Market Context
The accused products are high-performance LED components designed for a wide range of lighting applications (Compl. ¶2). The complaint focuses on the physical structure and manufacturing processes of the LED packages themselves, rather than their light-emitting properties (Compl. ¶¶ 15, 22, 28). The complaint alleges these are commercially significant products for the Defendant. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain claim charts or detailed infringement theories. For each count, it provides a list of accused products and makes the conclusory statement that they contain each element of the asserted claims.
U.S. Patent No. 6,949,771 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A light source comprising: a substrate having opposing first and second surfaces, the substrate defining an aperture extending from the first surface to the second surface... | The complaint alleges, without specific factual support, that the '771 Accused Instrumentalities possess this feature. | ¶15 | col. 7:52-57 |
| a platform covering said first opening, said platform being located outside of said aperture, | The complaint alleges, without specific factual support, that the '771 Accused Instrumentalities possess this feature. | ¶15 | col. 8:5-7 |
| a light emitting diode mounted on the platform within the aperture, | The complaint alleges, without specific factual support, that the '771 Accused Instrumentalities possess this feature. | ¶15 | col. 8:8-10 |
| and a transparent encapsulant material encapsulating the light emitting diode in the aperture, | The complaint alleges, without specific factual support, that the '771 Accused Instrumentalities possess this feature. | ¶15 | col. 8:11-13 |
| wherein the aperture comprises a side wall tapering outwards towards the second surface, | The complaint alleges, without specific factual support, that the '771 Accused Instrumentalities possess this feature. | ¶15 | col. 8:64-65 |
| and wherein the platform extends over the side wall. | The complaint alleges, without specific factual support, that the '771 Accused Instrumentalities possess this feature. | ¶15 | col. 8:66-67 |
- Identified Points of Contention:
- Pleading Sufficiency: A primary question is whether the complaint's formulaic recitation of the elements of a cause of action, without specific factual allegations mapping product features to claim limitations, satisfies federal pleading standards.
- Scope Questions: A potential dispute, had the claim survived, would concern the meaning of a platform "located outside of said aperture" that simultaneously supports a diode "within the aperture." This raises the question of whether the platform must be structurally distinct from the floor of the aperture.
U.S. Patent No. 7,256,486 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A semiconductor device, comprising: a substantially planar substrate having opposed major surfaces; | The complaint alleges, without specific factual support, that the '486 Accused Instrumentalities possess this feature. | ¶22 | col. 12:2-3 |
| an electrically conductive mounting pad located on one of the major surfaces of the substrate; | The complaint alleges, without specific factual support, that the '486 Accused Instrumentalities possess this feature. | ¶22 | col. 12:4-6 |
| a light emitting diode (LED) having a metallized bottom major surface that is mounted on the electrically conductive mounting pad... | The complaint alleges, without specific factual support, that the '486 Accused Instrumentalities possess this feature. | ¶22 | col. 12:7-10 |
| a first electrically conductive connecting pad located on the other of the major surfaces of the substrate; | The complaint alleges, without specific factual support, that the '486 Accused Instrumentalities possess this feature. | ¶22 | col. 12:14-16 |
| and a first electrically conductive interconnecting element extending through the substrate and electrically interconnecting the mounting pad and the first electrically conductive connecting pad. | The complaint alleges, without specific factual support, that the '486 Accused Instrumentalities possess this feature. | ¶22 | col. 12:17-21 |
- Identified Points of Contention:
- Technical Questions: The complaint does not specify how the accused products allegedly form the "interconnecting element." Evidence would be needed to determine if the accused structures meet this limitation, for example by using a filled via, a press-fit slug, or another conductive pathway.
- Impact of IPR: The cancellation of claim 1, the only independent claim specifically referenced for infringement, raises a substantial barrier to this count proceeding as pleaded.
V. Key Claim Terms for Construction
Term from ’771 Patent: "platform ... located outside of said aperture"
- Context and Importance: This term is critical because it defines the spatial relationship between the heat-conducting platform and the hole in the substrate. Its interpretation determines whether structures where the platform forms the floor of the aperture, and is thus arguably "inside" it, can infringe. Practitioners may focus on this term because the claim language appears internally inconsistent, stating the platform is "outside" the aperture while the diode is mounted on it "within" the aperture.
- Intrinsic Evidence for a Broader Interpretation: The Summary of the Invention states the platform "cover[s] an opening of the aperture adjacent the first surface" (’771 Patent, col. 2:5-8), which may suggest its function is to seal the opening from the outside, not that its entire structure must be physically separate from the volume of the aperture.
- Intrinsic Evidence for a Narrower Interpretation: The plain language "located outside" could be interpreted to require physical separation. Furthermore, dependent claim 1 states the platform "extends over the side wall" of the aperture, which might imply the main body of the platform is external to the aperture itself.
Term from ’486 Patent: "interconnecting element"
- Context and Importance: This term is the technological core of the patent, describing the conductive pathway through the substrate. Its scope will determine whether only specific structures (like a press-fit slug) infringe, or if it covers a wider range of technologies like plated-through holes.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a general definition, stating the material is "metal or another electrically-conductive material" (’486 Patent, col. 4:30-31), suggesting the term is not limited to a specific structure.
- Intrinsic Evidence for a Narrower Interpretation: Dependent claim 6 of the patent explicitly recites "a slug of electrically conductive material, the slug having a diameter selected to press-fit the slug into a through hole." A defendant could argue that this specific disclosure limits the general term "interconnecting element" to this embodiment, particularly if it is presented as the only detailed example of how to make and use the invention.
VI. Other Allegations
- Indirect Infringement: For all five patents, the complaint alleges induced infringement under 35 U.S.C. § 271(b). The allegations are based on Defendant providing "technical guides, product data sheets, demonstrations... and installation guides" that allegedly instruct customers and end-users to use the accused products in an infringing manner (e.g., Compl. ¶¶ 17, 24, 32, 39, 46).
- Willful Infringement: The complaint alleges that Defendant has been aware of the patents and its alleged infringement "as of a date no later than the date it was served with this Complaint" (e.g., Compl. ¶¶ 18, 25, 33, 40, 47). This forms a basis for potential post-filing willfulness, with Plaintiff reserving the right to amend if pre-suit knowledge is discovered.
VII. Analyst’s Conclusion: Key Questions for the Case
- Viability After IPR: The most significant issue is the legal and practical effect of the post-filing IPRs, which cancelled all of the independent claims specifically asserted in the complaint for four of the five patents. This raises fundamental questions of mootness for those counts and may expose the plaintiff to claims for attorneys' fees.
- Pleading Sufficiency: A threshold legal battle will likely concern whether the complaint's generalized and conclusory allegations, which lack any specific factual content mapping accused features to claim limitations, can survive a motion to dismiss under the Twombly/Iqbal plausibility standard.
- Claim Scope for Surviving Claims: For any claims that are not cancelled (such as those in the ’355 patent or surviving dependent claims of the '087 and '486 patents), the dispute would turn on claim construction. A central question will be one of structural definition: can terms like the ’486 patent's "interconnecting element" be broadly construed to cover any conductive via, or are they limited by the specification to the more specific "press-fit slug" embodiment?