Regents Of University Of California v. Target Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Regents of the University of California (California)
  • Defendant: Amazon.com, Inc. and Amazon.com Services, Inc. (Delaware)
  • Plaintiff’s Counsel: Nixon Peabody LLP
• Case Identification: 2:19-cv-06571, C.D. Cal., 07/30/2019
• Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendants have engaged in infringement in the district and have numerous regular and established offices, retail locations, and fulfillment centers there.
• Core Dispute: Plaintiff alleges that Defendant’s filament LED light bulbs, including those sold under the AmazonBasics brand, infringe four patents related to foundational LED technology developed at the University of California, Santa Barbara.
• Technical Context: The technology concerns "filament" LED light bulbs, which are designed as energy-efficient, long-lasting replacements for traditional incandescent bulbs that mimic their aesthetic appearance.
• Key Procedural History: The complaint does not mention prior litigation or administrative challenges involving the Asserted Patents. The suit is framed as an effort to protect university-developed intellectual property from widespread infringement by unlicensed foreign manufacturers whose products are sold in the U.S. market by major retailers.

Case Timeline

Date	Event
2006-11-15	Earliest Priority Date for ’789, ’529, and ’464 Patents
2006-12-11	Earliest Priority Date for ’916 Patent
2010-08-24	U.S. Patent No. 7,781,789 Issues
2014-01-01	Filament LED light bulbs become widely available (approximate date)
2016-01-19	U.S. Patent No. 9,240,529 Issues
2018-01-02	U.S. Patent No. 9,859,464 Issues
2019-02-26	U.S. Patent No. 10,217,916 Issues
2019-07-30	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,781,789 - "Transparent Mirrorless Light Emitting Diode"

Issued August 24, 2010.

The Invention Explained

• Problem Addressed: The patent's background describes how conventional light-emitting diodes (LEDs) often use a mirror on the backside of the device to reflect light towards the front for extraction (U.S. 7,781,789 B2, col. 4:56-65). A significant portion of this reflected light is re-absorbed by the active light-emitting layer, which reduces the device's overall efficiency and output power (U.S. 7,781,789 B2, col. 5:1-5).
• The Patented Solution: The invention proposes a "transparent mirrorless" LED structure where, with the exception of the active layer, all component layers are transparent to the emitted light (U.S. 7,781,789 B2, col. 2:16-20). This design allows light to be extracted from multiple sides of the LED chip, not just the front, thereby minimizing the internal reflections that cause re-absorption and improving efficiency (U.S. 7,781,789 B2, Abstract). Figure 4A, for example, illustrates an LED structure where light (424) is shown exiting from both a top surface (412) and a bottom surface (414).
• Technical Importance: This approach sought to overcome a fundamental efficiency bottleneck in LED design by creating a path for light to escape in multiple directions, reducing the probability of re-absorption that is inherent in mirror-based reflective designs (Compl. ¶37).

Key Claims at a Glance

The complaint does not specify which claims are asserted but alleges infringement of at least one claim (Compl. ¶46). Independent claim 1 is representative of the core invention.

• Independent Claim 1:
  • An opto-electronic device, comprising:
  • a light emitting diode (LED) that emits light out of the LED from multiple sides of the LED,
  • wherein all layers of the LED are transparent for an emission wavelength except for an emitting layer.
• The complaint reserves the right to assert additional claims following discovery (Compl. ¶47-48).

U.S. Patent No. 9,240,529 - "Textured Phosphor Conversion Layer Light Emitting Diode"

Issued January 19, 2016.

The Invention Explained

• Problem Addressed: In conventional white LEDs, a phosphor conversion layer is placed on the LED chip to convert blue light into other colors to create white light (U.S. 9,240,529 B2, col. 5:15-19). The patent explains that a large fraction of the converted photons are internally reflected within this phosphor layer and directed back toward the chip, where they are re-absorbed, resulting in a decrease in overall luminous efficiency (U.S. 9,240,529 B2, col. 5:19-26).
• The Patented Solution: The invention proposes texturing or shaping the surface of the phosphor layer to create a non-planar surface (U.S. 9,240,529 B2, col. 6:11-20). This texturing reduces internal reflection at the phosphor-air interface, allowing more converted light to escape the device and increasing its luminous efficacy (U.S. 9,240,529 B2, Abstract). Figure 1 of the patent illustrates an LED device (100) with a phosphor layer (104) having a roughened or textured top surface (108).
• Technical Importance: This innovation provided a method to increase the efficiency of white LEDs—the key technology for solid-state general lighting—by directly addressing a primary source of light loss within the phosphor conversion layer (Compl. ¶36).

Key Claims at a Glance

The complaint alleges infringement of at least one claim (Compl. ¶50). Independent claim 1 is representative.

• Independent Claim 1:
  • A light emitting device, comprising:
  • an LED chip emitting light at a first wavelength, wherein the emitted light is extracted from both front and back sides of the LED chip;
  • a lead frame to which the LED chip is attached, wherein the LED chip resides on or above a transparent plate in the lead frame that allows the emitted light to be extracted out of the LED chip through the transparent plate in the lead frame; and
  • a phosphor for converting the light emitted by the LED chip at the first wavelength to a second wavelength.
• The complaint reserves the right to assert additional claims following discovery (Compl. ¶51-52).

Multi-Patent Capsule: U.S. Patent No. 9,859,464

• Patent Identification: U.S. Patent No. 9,859,464, "Light Emitting Diode With Light Extracted From Front And Back Sides Of A Lead Frame," issued January 2, 2018.
• Technology Synopsis: This patent describes an LED device designed to maximize light extraction by mounting an LED chip on a lead frame that incorporates a transparent plate. This configuration allows light emitted from both the front and back sides of the chip to escape the device, increasing total light output compared to designs where the back side is obstructed (U.S. 9,859,464 B2, Abstract).
• Asserted Claims: The complaint asserts at least one claim of the ’464 patent; independent claims 1 and 13 are representative (Compl. ¶54).
• Accused Features: The filament LED components within the Accused Products are alleged to embody this technology by being mounted in a way that allows for omnidirectional light emission (Compl. ¶42, ¶54-55).

Multi-Patent Capsule: U.S. Patent No. 10,217,916

• Patent Identification: U.S. Patent No. 10,217,916, "Transparent Light Emitting Diodes," issued February 26, 2019.
• Technology Synopsis: This patent discloses a transparent LED where all layers, apart from the active light-emitting region, are transparent to the emitted wavelength. This design principle allows light to be extracted effectively through all layers and in multiple directions. The invention also contemplates roughening or shaping surfaces of the III-nitride layers to further enhance light extraction and reduce internal absorption (U.S. 10,217,916 B2, Abstract; col. 8:10-21).
• Asserted Claims: The complaint asserts at least one claim of the ’916 patent; independent claims 1 and 14 are representative (Compl. ¶58).
• Accused Features: The "transparent LED structures" of the filament components in the Accused Products are alleged to meet the limitations of the asserted claims (Compl. ¶37, ¶42, ¶58-59).

III. The Accused Instrumentality

Product Identification

The Accused Products are "filament LED light bulbs," including a variety of products sold by Defendants, such as the "AmazonBasics 60W Equivalent, Clear, Soft White, Dimmable, CEC Compliant, A19 LED Light Bulb, 6-Pack," and others listed in the complaint (Compl. ¶42).

Functionality and Market Context

The accused products are designed to be energy-efficient, long-lasting aesthetic replacements for traditional incandescent light bulbs (Compl. ¶12). They utilize LED "filaments" visible inside a glass bulb to mimic the appearance of "Edison" or "vintage" style bulbs (Compl. ¶11-12). The complaint includes an image of an accused AmazonBasics bulb, showing its filament structure within a clear glass envelope (Compl. p. 2). A screenshot from Defendants' website for an AmazonBasics bulb touts its 15,000-hour life and energy savings (Compl. p. 5). The complaint alleges that the U.S. market for these products became widely available around 2014-2015 and was expected to exceed $1 billion in 2019, with most products originating from unlicensed manufacturers in China (Compl. ¶15, ¶16, ¶44).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits that were not provided (Compl. ¶47, ¶51). The following analysis is based on the narrative allegations in the complaint and a review of representative claims from the ’789 and ’529 patents.

U.S. 7,781,789 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a light emitting diode (LED) that emits light out of the LED from multiple sides of the LED,	The accused products contain "filament LED" components which the complaint alleges are transparent structures designed to emit light omnidirectionally to create the appearance of a traditional glowing filament. An image in the complaint depicts these filaments (Compl. p. 2).	¶3, ¶37, ¶42	U.S. 7,781,789 B2, col. 2:16-20
wherein all layers of the LED are transparent for an emission wavelength except for an emitting layer.	The complaint alleges that the filament LED technology uses "transparent LED structures" to enable the filament light bulbs, which is alleged to meet this limitation.	¶37, ¶42	U.S. 7,781,789 B2, col. 2:16-20

U.S. 9,240,529 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an LED chip emitting light at a first wavelength, wherein the emitted light is extracted from both front and back sides of the LED chip;	The accused filament LED components are alleged to be constructed to emit light from multiple sides to achieve their aesthetic and functional purpose.	¶42	U.S. 9,240,529 B2, Abstract
a lead frame to which the LED chip is attached, wherein the LED chip resides on or above a transparent plate in the lead frame...	The complaint's visual evidence shows LED filaments mounted on a support structure, which is alleged to correspond to the claimed lead frame with a transparent plate that enables light extraction (Compl. p. 2).	¶42	U.S. 9,240,529 B2, Abstract
a phosphor for converting the light emitted by the LED chip at the first wavelength to a second wavelength.	The accused products are white light bulbs, which rely on phosphor conversion to transform the blue light from the LED chip into white light suitable for general illumination (Compl. ¶3, ¶13). The screenshot on page 5 describes the bulb as providing "soft white light" (Compl. p. 5).	¶3, ¶13, ¶42	U.S. 9,240,529 B2, Abstract

Identified Points of Contention

• Scope Questions: A central question for the ’789 and ’916 patents will concern the scope of the term "transparent". The analysis may turn on the degree of optical transparency required by the claims and whether the materials used in the accused products' LED filaments meet that standard.
• Technical Questions: For the ’529 patent, which is titled "Textured Phosphor Conversion Layer Light Emitting Diode," the complaint does not provide specific factual allegations that the phosphors in the accused products are textured. A key evidentiary question will be whether discovery reveals that the accused products' phosphor layers possess the textured surface required by various claims of the patent.

V. Key Claim Terms for Construction

• The Term: "transparent" (from ’789 Patent, Claim 1)

• Context and Importance: This term is fundamental to the "transparent mirrorless" concept of the ’789 and ’916 patents. The outcome of the infringement analysis for these patents may depend on whether the material layers of the accused LED filaments are construed as "transparent."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests a functional definition, stating that layers are transparent "for an emission wavelength of the light, such that the light is extracted effectively through all of the layers" (U.S. 10,217,916 B2, col. 8:14-17). This language may support an interpretation that any material allowing a functionally significant amount of light to pass through qualifies as transparent.
  • Evidence for a Narrower Interpretation: The specification discloses specific examples of transparent materials, including glass, epoxy, ITO (Indium Tin Oxide), and ZnO (Zinc Oxide) (e.g., U.S. 7,781,789 B2, col. 10:20-22). A defendant may argue that the term should be limited to materials having optical properties similar to these specific examples.

• The Term: "textured" (referring to the phosphor layer, from ’529 Patent title and dependent claims)

• Context and Importance: Texturing the phosphor layer is a core inventive concept of the ’529 patent. Practitioners may focus on this term because infringement will likely require proof that the accused products' phosphor layers are "textured," a fact not explicitly alleged with supporting evidence in the complaint.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the purpose of the texturing is to make the surface "not normal to the light emitted from the LED chip" to reduce internal reflection (U.S. 9,240,529 B2, col. 7:51-57). This may support a broad construction covering any non-planar or irregular surface, including incidental roughness.
  • Evidence for a Narrower Interpretation: The patent's figures and description repeatedly reference specific, engineered patterns such as a "cone shape" or "pyramid-like shape" (U.S. 9,240,529 B2, FIG. 1; col. 8:51-54). This may support a narrower construction requiring a deliberate, regular pattern rather than mere surface unevenness.

VI. Other Allegations

• Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) and infringement based on the importation of accused products under § 271(g) (Compl. ¶46, ¶50, ¶54, ¶58). It does not contain specific factual allegations to support claims of induced or contributory infringement.
• Willful Infringement: The complaint does not include an explicit claim for willful infringement or make allegations that Defendants had pre-suit knowledge of the Asserted Patents.

VII. Analyst’s Conclusion: Key Questions for the Case

1. A core issue will be one of technical evidence: what is the precise physical and material construction of the accused filament LEDs? The case will likely depend on evidence developed during discovery regarding the optical transparency of the filaments' material layers and, critically for the ’529 patent, whether their phosphor coatings possess a "textured" surface as claimed.
2. A second central issue will be one of claim construction: how broadly will the court define the term "transparent"? Whether it is construed functionally to mean any material that allows for multi-directional light extraction, or is limited to materials with specific optical properties, will significantly impact the scope of the ’789 and ’916 patents.
3. A final question relates to liability for importation: the complaint frames the dispute as one involving the sale of infringing products sourced from unlicensed foreign manufacturers (Compl. ¶16, ¶44). The application of 35 U.S.C. § 271(g) to Defendants' role as importers and sellers of these third-party manufactured goods will be a key legal dynamic in the case.