DCT
8:18-cv-00362
Nichia Corp v. Vizio Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nichia Corporation (Japan)
- Defendant: VIZIO, Inc. (California)
- Plaintiff’s Counsel: Snell & Wilmer L.L.P.; Rothwell, Figg, Ernst & Manbeck P.C.
- Case Identification: 8:18-cv-00362, C.D. Cal., 03/05/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district, maintains a regular and established place of business, and has committed infringing acts there. The complaint further notes that in prior litigation, Defendant admitted venue was proper in this district.
- Core Dispute: Plaintiff alleges that Defendant’s LED-backlit televisions incorporate LED components that infringe three U.S. patents related to the structure and manufacturing methods for LED packages.
- Technical Context: The technology concerns manufacturing processes for surface-mount LEDs, which are fundamental components for backlighting in consumer electronics, including televisions.
- Key Procedural History: The complaint notes that U.S. Patent No. 8,530,250 was previously found valid and infringed in litigation against a third party, Everlight Electronics. The parties in the current case were previously engaged in litigation over the same patents in the Eastern District of Texas, which was transferred to the Central District of California on February 2, 2018. Subsequent to the filing of this complaint, an Inter Partes Review (IPR) of the ’250 Patent concluded, resulting in the cancellation of asserted device claims 17, 19, and 21, while method claims 1 and 7 were confirmed as patentable.
Case Timeline
| Date | Event |
|---|---|
| 2008-09-03 | Priority Date for ’250, ’411, and ’071 Patents |
| 2009-08-27 | PCT Application Filing Date for patents-in-suit |
| 2013-09-10 | U.S. Patent No. 8,530,250 Issues |
| 2015-06-30 | End of six-month period for VIZIO sales data cited in complaint |
| 2016-03-21 | Nichia files initial suit against VIZIO in E.D. Texas |
| 2016-11-08 | U.S. Patent No. 9,490,411 Issues |
| 2017-01-03 | U.S. Patent No. 9,537,071 Issues |
| 2017-06-14 | VIZIO files motion to transfer prior case from E.D. Texas |
| 2017-06-16 | IPR proceedings initiated against the ’250 Patent |
| 2018-02-02 | E.D. Texas court grants motion to transfer case to C.D. California |
| 2018-03-05 | Complaint Filing Date (current case) |
| 2021-03-01 | IPR Certificate issues for ’250 Patent, cancelling claims 17, 19, 21 |
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 Light Emitting Device, Resin Package and Resin-Molded Body"
The Invention Explained
- Problem Addressed: The patent's background describes challenges in manufacturing LEDs, particularly the poor adhesion between metal lead frames and the resin packages that encapsulate the LED die, especially when using more durable thermosetting resins. (’250 Patent, col. 2:7-14). Prior art manufacturing methods were also described as costly and ill-suited for high-volume production. (’250 Patent, col. 2:7-14).
- The Patented Solution: The invention is a method for manufacturing LEDs that improves adhesion and is suitable for mass production. It uses a lead frame with pre-formed "notch parts," onto which a thermosetting resin is transfer-molded. The resin flows into these notches, creating a strong mechanical interlock between the metal and resin. The entire molded assembly is then cut (singulated) along these same notches to create individual LED packages. (’250 Patent, Abstract; col. 3:1-14; Fig. 3-4).
- Technical Importance: This approach enabled the use of thermosetting resins, which offer better thermal and light resistance than thermoplastics, in a simple, low-cost, and high-volume manufacturing process. (’250 Patent, col. 3:7-14).
Key Claims at a Glance
- The complaint asserts independent method claim 1 and independent device claim 17, among others. (Compl. ¶35, 40). Notably, asserted device claims 17, 19, and 21 were subsequently cancelled in an IPR proceeding. ('250 Patent, IPR Certificate, p. 2).
- The essential elements of surviving independent method claim 1 are:
- providing a lead frame comprising at least one notch;
- plating the lead frame;
- after plating, transfer-molding a thermosetting resin onto the lead frame between an upper and lower mold to form a resin-molded body;
- cutting the resin-molded body and the plated lead frame along the notch to form a resin package where the outer surfaces of the resin and lead are planar; and
- wherein the cutting creates an unplated outer side surface on the lead.
- The complaint reserves the right to assert additional claims. (Compl. ¶19).
U.S. Patent No. 9,490,411 - "Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing Light-Emitting Device, Resin Package, and Resin-Molded Body"
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’250 Patent, this patent addresses the same technical problems of achieving strong adhesion and efficient manufacturability in LED packages. (’411 Patent, col. 2:7-36).
- The Patented Solution: This patent claims the resulting device structure from a similar manufacturing process. The claims define a specific physical arrangement of a resin part and a metal part (with at least two metal plates) that form the LED package. The key features include the coplanar relationship of the resin and metal on the outer surfaces and, critically, a "notch" formed in the metal part at each of the package's four outer lateral surfaces. (’411 Patent, Abstract; Claim 1).
- Technical Importance: The claimed structure embodies a robustly constructed LED package designed for improved durability and efficient light reflection, suitable for mass production. (’411 Patent, col. 4:50-55).
Key Claims at a Glance
- The complaint asserts independent device claim 1. (Compl. ¶28, 46).
- The essential elements of independent claim 1 are:
- a resin package with a resin part and a metal part (including at least two metal plates), four outer lateral surfaces, and a concave portion;
- a light-emitting element mounted in the concave portion;
- at least a portion of the outer lateral surfaces of the resin and metal parts are coplanar;
- both a part of the metal and resin are disposed in a region below an upper surface of the metal part on all four outer lateral surfaces; and
- a notch is formed in the metal part at each of the four outer lateral surfaces.
- The complaint reserves the right to assert additional claims. (Compl. ¶1).
U.S. Patent No. 9,537,071 - "Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing Light-Emitting Device, Resin Package, and Resin-Molded Body"
The Invention Explained
This patent, also part of the same family, claims a light-emitting device with a specific package structure. The invention focuses on the geometric relationship between substantially flat metal plates and a resin part, particularly how the resin part is located on the "left and right sides" of a portion of the metal part on at least two of the four outer surfaces to ensure robust construction. (’071 Patent, Abstract; Claim 1).
Key Claims at a Glance
- Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶30, 52).
- Accused Features: The LED devices in Vizio's televisions are alleged to embody the claimed structure, including a resin package with first and second substantially flat metal plates and the specified arrangement of the resin and metal parts on the outer surfaces. (Compl. ¶31).
III. The Accused Instrumentality
Product Identification
VIZIO LED-backlit televisions, with specific models identified including, but not limited to, the "VIZIO D-Series 28” Class Full-Array LED TV D28h-C1." (Compl. ¶24, 32). The infringement allegations are directed at the LED component devices incorporated within these televisions. (Compl. ¶7, 25).
Functionality and Market Context
- The complaint alleges the accused LED devices possess a specific physical structure and are made by a specific process. The structure is alleged to include a resin package composed of a resin part and at least one lead, with outer surfaces of the resin and lead being planar. (Compl. ¶25). The leads are alleged to be plated on their upper and lower surfaces but unplated on their outer side surfaces, which is presented as evidence of them being manufactured by the claimed cutting process. (Compl. ¶25-26).
- The complaint asserts Vizio's significant market presence, citing top shelf-space positions at major U.S. retailers that accounted for a large majority of its net sales during a 2015 period. (Compl. ¶5).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’250 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a lead frame comprising at least one notch; | The manufacturing process for the accused LEDs includes the step of providing a lead frame with at least one notch. | ¶26 | col. 19:35-37 |
| plating the lead frame; | The process includes plating the lead frame. | ¶26 | col. 19:38-39 |
| after plating the lead frame, providing an upper mold on a first surface of the plated lead frame and a lower mold on a second surface of the plated lead frame, and transfer-molding a thermosetting resin ... to form a resin-molded body; and | After plating, a thermosetting resin is transfer-molded between an upper and lower mold to form a resin-molded body. | ¶26 | col. 19:43-49 |
| 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 ...; | The resin-molded body and lead frame are cut along the notch, resulting in a planar outer surface of the resin and lead. | ¶26 | col. 19:50-57 |
| wherein the plated lead frame is cut so as to form an unplated outer side surface on the lead. | The cutting of the plated lead frame results in an unplated outer side surface on the lead. | ¶26 | col. 19:58-60 |
’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, said resin package having four outer lateral surfaces and having a concave portion ... | The accused LEDs include a resin package with a resin part, a metal part having at least two plates, four outer lateral surfaces, and a concave portion. | ¶29 | col. 10:1-3 |
| a light emitting element mounted on the bottom surface of the concave portion and electrically connected to the metal part, | The accused LEDs have a light emitting element mounted on the bottom surface of the concave portion and connected to the metal part. | ¶29 | col. 10:4-5 |
| 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 LEDs, portions of the outer lateral surfaces of the resin and metal parts are coplanar. | ¶29 | col. 10:6-8 |
| 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 ... | The accused LEDs have metal and resin parts arranged below an upper surface of the metal part on four outer lateral surfaces. | ¶29 | col. 10:9-11 |
| wherein a notch is formed in the metal part at each of the four outer lateral surfaces of the resin package. | The accused LEDs have a notch formed in the metal part at each of the four outer lateral surfaces. | ¶29 | col. 10:12-13 |
Identified Points of Contention
- Scope Questions: For the ’411 Patent, the requirement of a "notch... at each of the four outer lateral surfaces" is a highly specific structural limitation. A central question for the court will be whether the accused LEDs literally meet this geometric requirement on all four sides, or if a structural difference exists that may allow Defendant to argue non-infringement.
- Technical Questions: For the ’250 Patent, the infringement allegation under 35 U.S.C. § 271(g) requires proving the accused LEDs were made by the patented process. The complaint alleges the process is the "same" as that used for products found to infringe in prior litigation (Compl. ¶24), which raises the evidentiary question of what proof Plaintiff has that the specific, multi-step process used for Vizio's LEDs meets every limitation of the asserted method claims.
V. Key Claim Terms for Construction
The Term: "notch"
Context and Importance: This term appears in the independent claims of all three patents-in-suit and is central to the inventive concept of improving adhesion between the resin and the lead frame. The construction of "notch" will determine what type of feature (e.g., a full cut-out, a groove, an indentation) satisfies this key limitation. Practitioners may focus on this term because it defines the primary mechanism for the claimed improvement in structural integrity.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explains that the purpose of the notch is to be filled with resin to improve adhesion and to serve as a line for cutting, which could support an interpretation that includes any feature serving these functions. (’250 Patent, col. 3:1-7). The patent also describes forming the notch via etching, which can create various feature shapes. (’250 Patent, col. 9:4-6).
- Evidence for a Narrower Interpretation: The figures consistently depict the "notch part" (e.g., 21a in Fig. 3 of the ’250 Patent) as a complete cut-out or aperture that penetrates the lead frame. A party could argue the term should be limited to such penetrating features, as distinguished from surface-level grooves or indentations.
The Term: "at each of the four outer lateral surfaces"
Context and Importance: This phrase from claim 1 of the ’411 Patent imposes a strict geometric constraint. Its interpretation is critical for infringement, as failure to find the required "notch" on even one of the four sides would preclude a finding of literal infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement would contend the term has its plain and ordinary meaning, requiring a factual, visual confirmation on an accused device. The patent's focus is on creating a robust, fully-interlocked package, which supports requiring the feature on all sides for maximum benefit.
- Evidence for a Narrower Interpretation: A party arguing against infringement would emphasize the exacting nature of "each of the four." The specification's embodiments, such as the device in Fig. 6, show a package where the leads and notches are at the corners, defining the four sides. If an accused device has a different configuration, such as a featureless side, this language would support a non-infringement argument.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful and requests treble damages. (Compl., Prayer for Relief ¶I). The basis for this allegation is Defendant's pre-suit knowledge of the patents-in-suit, stemming from prior litigation between the same parties over the same patents, which was initiated in the Eastern District of Texas on March 21, 2016. (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on the following central questions:
- A primary legal issue will be one of procedural impact: what is the effect of the post-filing IPR decision that cancelled device claims 17, 19, and 21 of the ’250 Patent? This development may render a significant portion of the complaint’s allegations for direct infringement under 35 U.S.C. § 271(a) moot, focusing the dispute for that patent on the surviving method claims.
- A key evidentiary question will be one of process verification: for the infringement allegations under 35 U.S.C. § 271(g), can the Plaintiff prove that the accused LED components were manufactured by a process that practices every step of the asserted method claims? The complaint’s assertion that the process is the "same" as one previously found to infringe (Compl. ¶24) signals a litigation strategy that will depend heavily on evidence linking the accused products to that specific manufacturing method.
- A core issue will be one of definitional scope and factual compliance: can the precise structural limitations of the device patents, such as the requirement for a "notch... at each of the four outer lateral surfaces" of the LED package in the ’411 Patent, be demonstrably met by the accused products? The case may hinge on a strict, feature-by-feature comparison between the claims and the physical structure of the accused LEDs.