DCT
2:20-cv-00359
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: 2:20-cv-00359, C.D. Cal., 01/13/2020
- 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 there, and has committed the alleged infringing acts within the district. The complaint also notes that Defendant has previously admitted to proper venue in this district in prior litigation.
- Core Dispute: Plaintiff alleges that Defendant’s filament-style LED lightbulbs infringe a patent related to the internal construction of light emitting devices designed for omnidirectional light output.
- Technical Context: The technology at issue involves filament-style LED lightbulbs, which are designed to replicate the aesthetic appearance and light distribution of traditional incandescent bulbs while providing the energy efficiency of light-emitting diodes (LEDs).
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a cease-and-desist letter on June 12, 2019, identifying the patent-in-suit and the accused technology, which forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-16 | ’734 Patent Priority Date |
| 2017-09-05 | ’734 Patent Issue Date |
| 2019-06-12 | Alleged Pre-Suit Notice via Letter |
| 2020-01-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,752,734 - "Light Emitting Device"
- Patent Identification: U.S. Patent No. 9,752,734, "Light Emitting Device," issued September 5, 2017.
The Invention Explained
- Problem Addressed: The patent background describes the challenge of using semiconductor light emitting elements, which are inherently directional, in applications requiring 360-degree light distribution similar to a traditional incandescent lightbulb (Compl. ¶17; ’971 Patent, col. 1:21-34). Conventional designs could block light from exiting in all directions.
- The Patented Solution: The invention mounts a plurality of LED chips onto a transparent "board," allowing light to pass through the board itself. This board and chip assembly is then sealed by a transparent member, which can also contain a phosphor to convert the color of the light. The entire assembly is held inside a transparent bulb by support leads, enabling light to radiate outwards from the top, bottom, and sides of the LED chips, thereby achieving wide-angle illumination (Compl. ¶17; ’971 Patent, Abstract, col. 3:1-14, Fig. 8).
- Technical Importance: This configuration provided a technical pathway for creating LED-based replacement bulbs that could successfully mimic the omnidirectional lighting characteristics and classic aesthetic of incandescent filament bulbs, a key factor for consumer adoption in general lighting markets (Compl. ¶6; ’971 Patent, col. 10:41-48).
Key Claims at a Glance
- The complaint asserts independent claims 1, 26, and 27 (Compl. ¶19).
- The essential elements of independent claim 1 include:
- A "board" with end and center portions, having first and second surfaces.
- A plurality of "light emitting element chips" mounted on the first surface side of the board.
- A "wavelength conversion member formed unitarily with a transparent member that seals" the LED chips.
- A "transparent bulb" that encloses the board and chips.
- "Support leads" to secure the chip assembly inside the bulb.
- A "support base" for engaging a conventional light bulb socket.
- A "pair of metal plates" protruding at the ends of the wavelength conversion member.
- Several "wherein" clauses further defining the spatial arrangement and electrical connections of these components.
- The complaint also asserts a large number of dependent claims and reserves the right to identify others (Compl. ¶11).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "filament-style" LED lightbulbs sold by Defendant Feit Electric Company, Inc. The complaint identifies numerous representative product models, including CEA1940/CL/LED/6, BPG1640/950CA/FIL/2(K), and PS50/S/820/LED, among many others (Compl. ¶¶5, 22, 46).
Functionality and Market Context
- The accused products are designed to be direct replacements for traditional incandescent bulbs, featuring exposed LED "filaments" inside a clear or frosted glass housing to create an "elegant classic look and feel" (Compl. ¶7). The complaint provides extensive photographic evidence from product teardowns purporting to show the internal construction, including the LED filament structures, the LED chips mounted thereon, and the phosphor coatings (Compl. ¶¶33-45). This image from the complaint shows the internal filament structure of an exemplary accused product (Compl. ¶33, p. 15).
- The complaint alleges these products are sold through nationwide hardware and home improvement retailers, including The Home Depot, Bed Bath & Beyond, and TrueValue (Compl. ¶10).
IV. Analysis of Infringement Allegations
'734 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a board having end portions and a center portion therebetween in a longitudinal direction, the board having a first surface on a first surface side hereof and a second surface on a second surface side thereof... | The accused products allegedly contain an internal substrate, described as a "board," that forms the core of the filament structure. Images are provided purporting to show this component isolated from the bulb (Compl. ¶34, p. 18). | ¶34 | col. 3:25-40 |
| a plurality of light emitting element chips mounted on the first surface side of the board | The accused products' filaments allegedly include multiple LED chips mounted along the length of the internal board. Close-up photographs are provided to show these chips (Compl. ¶35, p. 20). | ¶35 | col. 3:20-24 |
| a wavelength conversion member formed unitarily with a transparent member that seals the plurality of light emitting element chips | The complaint alleges the LED chips are sealed by a unitary member that includes a wavelength conversion material (e.g., a phosphor coating). Photographs show the yellowish coating over the LED chips (Compl. ¶36, p. 22). | ¶36 | col. 7:49-59 |
| a transparent bulb that encloses the board and the plurality of light emitting element chips | The accused products are lightbulbs with a glass envelope that encloses the internal filament assembly (Compl. ¶37). | ¶37 | col. 8:6-16 |
| support leads that secure the plurality of light emitting element chips inside the transparent bulb | The filament assembly is allegedly held in place within the glass bulb by support leads connected to the base (Compl. ¶38). | ¶38 | col. 8:14-20 |
| a support base that can be threadedly engaged with a conventional light bulb socket along a socket axis | The accused products feature a standard threaded metal base for installation into a light socket (Compl. ¶39). | ¶39 | col. 10:2-5 |
| a pair of metal plates protruding at both ends of the wavelength conversion member | The complaint alleges that metal plates for electrical connection protrude from the ends of the filament structure. Images are provided showing these plates at the ends of the isolated filament (Compl. ¶40, p. 32). | ¶40 | col. 4:40-52 |
| wherein the pair of metal plates are electrically connected with the support base via the support leads | The complaint alleges the metal plates are electrically connected to the support base via the support leads to power the LEDs (Compl. ¶43). | ¶43 | col. 8:14-20 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the construction of the term "board." The patent specification often describes this as a discrete, transparent substrate like sapphire (’734 Patent, col. 3:36-40). The infringement analysis will raise the question of whether the accused products' integrated, coated filament structure, which functions as a single component, can be considered a "board" with chips "mounted on" it, as distinct elements required by the claim.
- Technical Questions: Claim 1 requires a "wavelength conversion member formed unitarily with a transparent member that seals" the chips. The complaint's evidence points to a phosphor-loaded resin coating (Compl. ¶36). A key technical question for the court will be whether this single coating performs the distinct functions of a "wavelength conversion member" and a "transparent member" that "seals" the chips, and whether this structure meets the "formed unitarily" limitation as it is understood from the patent's specification.
V. Key Claim Terms for Construction
The Term: "board"
- Context and Importance: The "board" is the foundational structure upon which the claimed device is built. The viability of the infringement claim depends on whether the accused filament structure falls within the scope of this term. Practitioners may focus on this term because the accused product appears to use a thin, integrated filament, whereas the patent figures often depict a more substantial, planar "board."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement might point to the general use of the word "board" and the specification's listing of various materials, suggesting it should be read broadly as any substrate that supports the LEDs (’734 Patent, col. 3:25-40).
- Evidence for a Narrower Interpretation: A party arguing for non-infringement could point to figures like Fig. 1 and Fig. 4, which consistently depict the "board" (20) as a distinct, flat, and relatively thick plate-like structure, arguing that this context limits the term to something more substantial than the thin, wire-like filament in the accused products.
The Term: "wavelength conversion member formed unitarily with a transparent member that seals the plurality of light emitting element chips"
- Context and Importance: This limitation defines the protective and light-converting encapsulation of the LEDs. The infringement read hinges on whether the accused product's single phosphor coating can be mapped onto this multi-part claim element.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent discloses an embodiment where "a phosphor 48 can be mixed into an epoxy resin as the transparent member 40C so that the transparent member 40C serves as a wavelength conversion member" (’734 Patent, col. 7:51-55). This language may support an interpretation where a single material performing multiple functions satisfies the "formed unitarily" requirement.
- Evidence for a Narrower Interpretation: A party could argue that the phrase requires two conceptually distinct components—a "wavelength conversion member" and a separate "transparent member"—that are merely manufactured as a single piece. They might contrast this with the accused product, which they could argue contains only a single, functional component (a phosphor coating) rather than the combination of two claimed components.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on a single count of direct infringement under 35 U.S.C. § 271(a) and does not plead separate counts for indirect infringement (Compl. p. 42).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged continued importation and sale of the accused products after receiving a cease-and-desist letter on June 12, 2019. Plaintiff asserts this letter gave Defendant pre-suit knowledge of the patent and its infringement, creating an "objectively-high likelihood" of infringement that was either known or "so obvious that it should have been known to Feit" (Compl. ¶¶51-53, 58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural definition: Can the term "board," described and depicted in the patent as a discrete, often planar substrate, be construed to read on the integrated, slender, and coated "filament" structure found in the accused products? The outcome of this claim construction dispute may be dispositive.
- A key evidentiary question will be one of component identity: Does the single phosphor-infused coating on the accused filaments embody the distinct elements of a "wavelength conversion member formed unitarily with a transparent member that seals" the chips, as required by the claim? Or, does this structure represent a fundamentally different, non-infringing design?