DCT
2:19-cv-08172
DSS Inc v. Nichia Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DSS, Inc. (New York)
- Defendant: Nichia Corporation (Japan) and Nichia America Corporation (Michigan)
- Plaintiff’s Counsel: Schertler Onorato Mead & Sears; Mitchell Silberberg & Knupp LLP
- Case Identification: 2:19-cv-08172, C.D. Cal., 04/23/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendants maintain a "regular and established place of business" in the district and have committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s surface-mountable light-emitting diode (LED) products infringe a patent related to the physical packaging of electronic devices designed to reduce their footprint on a circuit board.
- Technical Context: The technology concerns the structural design of miniature electronic components, enabling them to be mounted more densely on printed circuit boards, a critical factor for the miniaturization of consumer and industrial electronics.
- Key Procedural History: The patent-in-suit was the subject of an Inter Partes Review (IPR) at the U.S. Patent and Trademark Office, which concluded by finding all asserted claims valid. This decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit. The complaint also references a May 2017 letter providing notice of alleged infringement. The patent is now expired, limiting potential remedies to past damages.
Case Timeline
| Date | Event |
|---|---|
| 2002-09-18 | ’040 Patent Priority Date |
| 2005-04-12 | ’040 Patent Issue Date |
| 2017-05-22 | Plaintiff provides notice of infringement to Defendant |
| 2023-08-26 | ’040 Patent Expiration Date |
| 2024-04-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,879,040 - "Surface Mountable Electronic Device"
The Invention Explained
- Problem Addressed: The patent’s background section describes how prior art surface-mountable electronic components, such as LEDs, had electrical leads that extended horizontally beyond the main body of the device. This design increased the total area, or "footprint," required to mount the component on a circuit board, which hindered efforts to make electronic devices smaller and more compact (ʼ040 Patent, col. 2:16-32). These exposed leads could also create undesirable visual reflectivity, reducing contrast in display applications (ʼ040 Patent, col. 2:40-49).
- The Patented Solution: The invention proposes a new physical structure for a surface-mountable device where the electrical contacts are integrated into recesses along the side edges of the device's mounting surface. These recesses create a space or "offset" between the primary mounting surface and the electrical contacts, allowing solder to connect the device to a circuit board from the side, but still within the overall footprint of the device body (ʼ040 Patent, col. 2:54-65; Fig. 5A). This design eliminates the need for external leads and enables components to be packed more closely together.
- Technical Importance: This packaging approach allows for a reduction in the "pitch," or spacing between components, on a circuit board, which was a significant step in the broader technological trend of electronic miniaturization (ʼ040 Patent, col. 2:32-38).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of claim 1 are:
- A packaged body having a mounting surface.
- The mounting surface has a plurality of recesses at the side edges of the body.
- A plurality of electrical contacts, where each contact extends from an interior portion of the mounting surface and terminates within one of the recesses.
- Each electrical contact conforms to one of the recesses.
- The recesses and contacts are "sized to provide offsets" between the mounting surface and the electrical contacts.
- The complaint also asserts dependent claims 2-8 and 11 (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
The "Accused Instrumentalities" are a wide range of Nichia's surface-mountable LED products, including but not limited to the 033, 100, 134, 157, 158, 172, 233, 257, 275, 276, 277, 333, 334, 434, and 765 Series, as well as downstream products like light bulbs and displays that incorporate these LEDs (Compl. ¶14).
Functionality and Market Context
The accused products are individual LED components designed to be soldered onto printed circuit boards for use in various lighting and display applications (Compl. ¶14). The infringement allegations focus on the physical structure and packaging of these LEDs, specifically the design of their mounting surfaces and electrical contacts (Compl. ¶16-25, Ex. C). A photograph provided in the complaint shows the underside of an accused NCSU033C product, which features two large electrical contacts and notched indentations along its sides (Compl. Ex. C, p. 35).
IV. Analysis of Infringement Allegations
- Claim Chart Summary: The following table summarizes the infringement allegations for representative claim 1 of the '040 Patent against the exemplary Nichia NCSU033C product, as detailed in the complaint's Exhibit C.
U.S. Patent No. 6,879,040 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A surface mountable electronic device, comprising: | The Nichia NCSU033C is a surface-mountable electronic device, specifically a light-emitting diode (LED). | Ex. C, p. 32 | col. 1:5-8 |
| a packaged body having a mounting surface, the mounting surface having a plurality of recesses at side edges of the body | The accused product has a packaged body with a bottom mounting surface that features recesses along its side edges. The complaint includes a photograph illustrating these features. | Ex. C, p. 35 | col. 3:60-67 |
| and a plurality of electrical contacts, each of which extends from an interior portion of the mounting surface and terminates in one of said recesses, | The accused product has electrical contacts that extend from the central area of the mounting surface and terminate within the side recesses. An annotated photograph in the complaint shows this structure. | Ex. C, p. 37 | col. 4:1-6 |
| and each of which conforms to one of said recesses, | The shape of the electrical contacts within the recesses is alleged to conform to the shape of the recesses themselves, as shown in a side-view photograph. | Ex. C, p. 38 | col. 4:6-8 |
| wherein said recesses and electrical contacts are sized to provide offsets between said mounting surface and said electrical contacts. | An optical cross-section image is provided to show that the recesses and contacts create a vertical offset, or gap, relative to the main mounting surface, which is alleged to facilitate soldering. | Ex. C, p. 39 | col. 2:62-65 |
- Identified Points of Contention:
- Scope Questions: The interpretation of "recesses at side edges of the body" may become a point of contention. A dispute could arise over whether the accused products' specific indentations, which appear to be notched features, fall within the scope of "recesses" as described and depicted in the patent's specification.
- Technical Questions: The claim requires that the recesses and contacts be "sized to provide offsets." The infringement analysis may raise the question of whether this limitation requires evidence of specific design intent for creating a solder-accommodating gap, or if the mere existence of an offset is sufficient. The defense could suggest that any observed offset is an incidental artifact of a manufacturing process rather than a purposefully "sized" feature.
V. Key Claim Terms for Construction
- The Term: "sized to provide offsets"
- Context and Importance: This term is critical because it links a structural feature ("sized") to a functional purpose ("to provide offsets"). The outcome of the infringement analysis may depend on whether this phrase requires the structure to be intentionally designed for that purpose or merely to result in that structure. Practitioners may focus on this term because it introduces an element of function and potential intent into a structural claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s summary of the invention states that the device includes electrical contacts with "first portions which form at least a portion of at least one inner surface of the recessed portions," which creates "gaps beneath them when the device is mounted" ('040 Patent, col. 2:60-65). This language could support an interpretation where any structure that inherently creates such a gap satisfies the limitation.
- Evidence for a Narrower Interpretation: The detailed description explains that during solder reflow, solder "enters into the recessed area, beneath the raised portions of the electrically conductive members" ('040 Patent, col. 3:54-57). This direct link between the recessed structure (the "offset") and its function in the soldering process could support a narrower interpretation requiring the "sizing" to be for the specific purpose of facilitating this type of solder connection.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b), asserting that Defendants provide "technical guides, product data sheets, ... installation guides, and other forms of support" that instruct customers and end-users on how to mount and use the accused LEDs in an infringing manner (Compl. ¶27).
- Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, it alleges that "Defendants have had actual knowledge of the ’040 Patent at least as of service of this Complaint" (Compl. ¶27). This allegation provides a basis for a potential claim of post-suit willful infringement. The complaint also references a May 22, 2017 notice letter, which could be argued to establish pre-suit knowledge, though that letter identifies a German patent counterpart rather than the U.S. patent-in-suit (Compl. ¶12; Ex. B).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "recesses," as defined by the patent's text and figures, be construed to cover the specific notched indentations present on the accused Nichia LED packages, or is there a fundamental mismatch in structure?
- A key evidentiary question will be one of functional design: does the evidence show that the accused products were intentionally "sized to provide offsets" to facilitate a specific type of soldering, as taught by the patent, or can the defendant demonstrate that the resulting physical structure is an incidental byproduct of a manufacturing process unrelated to the patented invention's purpose?
- A central procedural factor is the impact of the prior IPR: given that the patent's claims have already been confirmed as valid by both the USPTO and the Federal Circuit, the litigation will likely be sharply focused on these infringement-related questions of claim construction and technical operation, potentially limiting the scope of discovery and invalidity defenses.