DCT
2:18-cv-01390
Nichia Corp v. Feit Electric Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nichia Corporation (Japan)
- Defendant: Feit Electric Company, Inc. (California)
- Plaintiff’s Counsel: Snell & Wilmer L.L.P.; Rothwell, Figg, Ernst & Manbeck P.C.
- Case Identification: 2:18-cv-01390, C.D. Cal., 02/20/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is incorporated and has its principal place of business in the district, maintains a regular and established place of business, and has committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s LED lighting products incorporate LED devices that infringe three U.S. patents related to the structure and manufacturing methods of LED packages.
- Technical Context: The technology concerns the design and mass production of light-emitting diode (LED) packages, focusing on methods to improve adhesion between the metallic lead frame and the reflective resin body.
- Key Procedural History: The '250' Patent was previously found valid and infringed in litigation against a third party (Everlight), a verdict affirmed by the Federal Circuit. Plaintiff previously sued Defendant in the Eastern District of Texas on all three patents-in-suit; that case was transferred to the Central District of California following the Supreme Court's TC Heartland decision. Subsequent to the filing of this complaint, the '250 Patent was the subject of an Inter Partes Review (IPR), which resulted in the cancellation of asserted claims 17, 19, and 21, while confirming the patentability of asserted claims 1 and 7.
Case Timeline
| Date | Event |
|---|---|
| 2008-09-03 | Earliest Priority Date for '250, '411', and '071' Patents |
| 2009-08-27 | PCT Application Filing Date |
| 2013-09-10 | '250 Patent Issue Date |
| 2016-01-25 | E.D. Texas judgment in *Nichia v. Everlight* |
| 2016-06-13 | Nichia files suit against Feit in E.D. Texas ('250 Patent) |
| 2016-11-08 | '411 Patent Issue Date |
| 2016-12-27 | Nichia files second suit against Feit in E.D. Texas ('411 Patent) |
| 2017-01-03 | '071 Patent Issue Date |
| 2017-02-21 | Nichia amends complaint in Texas to add '071 Patent |
| 2017-02-02 | Texas court grants motion to transfer (as alleged in complaint) |
| 2018-02-20 | Complaint Filing Date (C.D. Cal.) |
| 2021-03-01 | IPR Certificate issues for '250 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,530,250 - "Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing...", Issued Sep. 10, 2013
The Invention Explained
- Problem Addressed: The patent describes challenges in manufacturing LED packages, particularly the poor adhesion between thermoplastic resins and metal lead frames, which can cause the parts to detach. Conventional methods were also described as inefficient for mass production and resulted in significant material waste. (’250 Patent, col. 1:55 - col. 2:14).
- The Patented Solution: The invention is a method for manufacturing LED devices that uses a thermosetting resin and a lead frame designed with "notch parts." During transfer molding, the resin flows into and fills these notches, which significantly increases the surface area for adhesion and creates a stronger bond between the resin and the metal. This process allows for the mass production of multiple devices at once from a single lead frame sheet, which are then singulated by cutting along the notches. (’250 Patent, Abstract; col. 3:36-44; Fig. 4).
- Technical Importance: This method enabled the use of more durable and heat-resistant thermosetting resins in a high-volume, low-cost manufacturing process, addressing a key reliability issue in the production of compact LED components. (’250 Patent, col. 2:50-53).
Key Claims at a Glance
- The complaint asserts independent method claim 1 and independent device claim 17, along with several dependent claims. Note: Claims 17, 19, and 21 were subsequently cancelled in an IPR proceeding. (Compl. ¶¶ 38, 43; U.S. 8,530,250 K1).
- Independent Method Claim 1: The essential steps include (1) providing a lead frame with at least one notch; (2) plating the lead frame; (3) after plating, using molds to transfer-mold a thermosetting resin onto the frame to form a resin-molded body; and (4) cutting the body and frame along the notch to form a resin package where the lead and resin have a planar outer surface, but the cut surface of the lead is unplated.
- Independent Device Claim 17 (Cancelled): The key elements describe a device with a resin package where (1) the resin part and lead are planar at an outer surface; (2) the lead has plating on its upper and lower surfaces but is unplated on its outer side surface; and (3) a portion of the resin part covers a portion of the plating on the lead's upper surface.
U.S. Patent No. 9,490,411 - "Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing...", Issued Nov. 8, 2016
The Invention Explained
- Problem Addressed: As a continuation of the '250 Patent, this patent addresses the same issues of poor adhesion and manufacturing inefficiency in conventional LED packages. (’411 Patent, col. 1:55 - col. 2:36).
- The Patented Solution: This patent claims the resulting physical device structure. It describes a light-emitting device with a resin package containing a resin part and a metal part with at least two plates. The solution's key features include having the outer surfaces of the resin and metal parts be "coplanar" and the formation of a "notch" in the metal part at each of the four outer lateral surfaces of the package. This structure is the intended result of the manufacturing process that improves adhesion and structural integrity. (’411 Patent, Abstract; col. 10:11-22).
- Technical Importance: The invention defines a specific, durable physical architecture for an LED package that is optimized for mass production and reliability, embodying the principles of the parent application. (’411 Patent, col. 4:45-51).
Key Claims at a Glance
- The complaint asserts independent claim 1 and numerous dependent claims. (Compl. ¶49).
- Independent Claim 1: The essential elements are (1) a resin package with a resin part, a metal part (with at least two plates), four outer lateral surfaces, and a concave portion; (2) a light-emitting element mounted in the concave portion; (3) portions of the resin and metal outer surfaces are coplanar; (4) parts of the resin and metal are disposed below the metal's upper surface on all four sides; and (5) a notch is formed in the metal part at each of the four outer lateral surfaces.
Multi-Patent Capsule: U.S. Patent No. 9,537,071
- Patent Identification: U.S. Patent No. 9,537,071, "Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing...", Issued Jan. 3, 2017.
- Technology Synopsis: As another continuation in the same patent family, this patent further refines the claims directed to the LED device's structure. It addresses the same technical problem of creating robust, manufacturable LED packages by claiming specific physical arrangements of the resin part and metal plates, focusing on the coplanar relationship of their outer surfaces, the presence of notches, and the coplanarity of the metal plates' upper edges. (’071 Patent, Abstract; col. 1:55-col. 2:36).
- Asserted Claims: Independent claims 1 and 15, among other dependent claims. (Compl. ¶55).
- Accused Features: The complaint alleges that the LED devices within Feit's products infringe by having a resin package with first and second metal plates, a concave portion, coplanar outer surfaces between the resin and metal, and notches formed in the metal part at the outer surfaces. (Compl. ¶¶ 33, 34).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the LED devices contained within a wide range of Feit Electric branded LED lighting products, including, for example, the "BPOM60/830/LED Bulb" and the "LA19DM/GU24/LEDG2" bulb. (Compl. ¶¶ 26, 31, 33, 35).
- Functionality and Market Context: The complaint alleges that the internal LED devices are manufactured using a process and/or have a structure that infringes the patents-in-suit. Specific alleged functionalities include a resin package constructed from a resin part and at least one metal lead, where outer surfaces of the resin and lead are planar. The structure is also alleged to include plating on the upper and lower surfaces of the lead but not on the unplated outer side surface that results from cutting. Further allegations point to the presence of "notches" in the metal parts at the outer surfaces of the device. (Compl. ¶¶ 27-30, 32, 34). The complaint alleges these products are sold nationwide through major retailers such as The Home Depot, Target, and Walmart, indicating broad commercial distribution. (Compl. ¶7).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'250 Patent Infringement Allegations
The complaint asserts infringement of method claims under 35 U.S.C. § 271(g), which holds liable one who imports, sells, or uses within the U.S. a product which is made by a process patented in the U.S.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a lead frame comprising at least one notch; | The process used to make the accused LED devices includes the step of providing a lead frame with at least one notch. | ¶28 | col. 20:21-22 |
| plating the lead frame; | The manufacturing process includes plating the lead frame. | ¶28 | col. 20:23 |
| after plating the lead frame, providing an upper mold... and a lower mold... and transfer-molding a thermosetting resin... to form a resin-molded body; | The process includes, after plating, using molds to transfer-mold a thermosetting resin containing a light reflecting material to form a resin-molded body. | ¶28 | col. 20:24-34 |
| cutting the resin-molded body and the plated lead frame along the at least one notch to form a resin package... such that an outer surface of the resin part and an outer surface of the at least one lead are planar at an outer side surface... | The process includes cutting the body and lead frame along the notch, resulting in a resin package with planar outer surfaces for the resin and lead components. | ¶28 | col. 20:35-46 |
| wherein the plated lead frame is cut so as to form an unplated outer side surface on the lead. | The cutting step is performed on the plated lead frame in such a way that it creates an unplated outer side surface on the lead. | ¶28 | col. 20:47-49 |
- Identified Points of Contention:
- Evidentiary Question: A primary issue will be whether Plaintiff can obtain and present sufficient evidence from Defendant’s foreign suppliers to prove that the accused devices were manufactured using every step of the claimed method in the recited order, which is a high bar for infringement under § 271(g).
- Technical Question: What evidence does the complaint provide that the accused process uses a "thermosetting resin" as required by the claim, as opposed to another material type like a thermoplastic? The complaint asserts this element but does not specify the factual basis. (Compl. ¶28).
'411 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a resin package comprising a resin part and a metal part including at least two metal plates... having four outer lateral surfaces and having a concave portion... | The accused LED devices are alleged to include a resin package comprising a resin part and a metal part with at least two metal plates, four outer lateral surfaces, and a concave portion. | ¶32 | col. 20:1-5 |
| a light emitting element mounted on the bottom surface of the concave portion... | The accused devices allegedly have a light emitting element mounted on the bottom surface of the concave portion and electrically connected to the metal part. | ¶32 | col. 20:6-8 |
| wherein at least a portion of an outer lateral surface of the resin part and at least a portion of an outer lateral surface of the metal part are coplanar... | In the accused devices, at least a portion of the outer lateral surface of the resin part and the metal part are allegedly coplanar. | ¶32 | col. 20:10-13 |
| wherein both a part of the metal part and a part of the resin part are disposed in a region below an upper surface of the metal part, on four outer lateral surfaces... | This specific spatial arrangement is alleged to be present in the accused devices. | ¶32 | col. 20:14-18 |
| wherein a notch is formed in the metal part at each of the four outer lateral surfaces of the resin package. | The complaint alleges that a notch is formed in the metal part at each of the four outer lateral surfaces of the resin package in the accused devices. | ¶32 | col. 20:19-22 |
- Identified Points of Contention:
- Scope Question: Does the feature identified as a "notch" in the accused products meet the legal construction of the term? The analysis will question whether any indentation qualifies, or if it must have the specific structural characteristics and adhesive function described in the patent.
- Technical Question: The claim requires a notch at "each of the four outer lateral surfaces." A key factual dispute may arise over whether the accused devices, upon physical inspection, actually possess this feature on all four sides as claimed.
V. Key Claim Terms for Construction
The Term: "notch" (’250 Patent, cl. 1; ’411 Patent, cl. 1)
Context and Importance: This term is the central structural innovation for improving adhesion between the resin and the lead frame. Its construction will determine whether a wide or narrow range of physical indentations in the accused devices fall within the scope of the claims. Practitioners may focus on this term because infringement for all asserted patents appears to hinge on its meaning.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a single, explicit definition. A party may argue that the term should be given its plain and ordinary meaning, covering various types of cutouts, indentations, or recesses in the lead frame. The specification refers generally to "notch parts" without imposing strict geometric constraints. (’250 Patent, col. 3:1-3).
- Evidence for a Narrower Interpretation: A party may argue that a "notch" must be a feature that performs the function described in the specification: being filled with thermosetting resin to increase the adhering area. (’250 Patent, col. 3:36-40). The embodiments, such as Figure 3, show distinct cutouts (21a) that penetrate the lead frame (21), suggesting a more specific structure than a mere surface groove.
The Term: "planar" / "coplanar" (’250 Patent, cl. 1; ’411 Patent, cl. 1)
Context and Importance: This term describes the flush relationship between the outer surfaces of the resin and metal parts after the device is cut and singulated. Because perfect planarity is unachievable in real-world manufacturing, the degree of flatness required by the claim will be a critical point of dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification repeatedly uses the qualifier "substantially," as in "formed in a substantially same plane in an outer side surface." (’250 Patent, col. 3:1-3). This language suggests that the inventor did not intend to require perfect geometric planarity and anticipated minor manufacturing deviations.
- Evidence for a Narrower Interpretation: A party could argue that the term implies a functionally significant level of flatness necessary for proper surface mounting of the LED package. The figures, such as the cross-section in Figure 2, depict geometrically flat and aligned outer surfaces (20b), which could support a construction requiring a high degree of planarity.
VI. Other Allegations
- Willful Infringement: The complaint does not allege specific facts supporting willfulness in the body of the complaint, but the prayer for relief requests a finding of willful infringement and an award of treble damages. (Compl. p. 17, ¶I). The basis for pre-suit knowledge may be inferred from the prior litigations filed against Feit in the Eastern District of Texas, which are detailed in the complaint. (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and scope: can the term "notch," which is described in the patent as a feature for improving resin adhesion, be construed to read on the specific indentations or structural features present in the accused LED devices?
- A key evidentiary question will be one of process verification: for the method claims of the '250 Patent, can Plaintiff successfully prove through discovery that Defendant’s foreign-sourced products are made by a process that includes every limitation of the asserted claims, as required for infringement under 35 U.S.C. § 271(g)?
- A critical procedural question will be the impact of parallel proceedings: how will the court weigh the prior Federal Circuit affirmation of the '250 Patent’s validity against the subsequent cancellation of several asserted claims from that same patent in an IPR proceeding that concluded after the filing of this complaint?