DCT

3:22-cv-04809

LED Wafer Solutions LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-04809, N.D. Cal., 12/16/2022
  • Venue Allegations: Venue is alleged to be proper based on Defendant Samsung Electronics America, Inc. maintaining a regular and established place of business in the district and committing acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that the flash Light Emitting Diode (LED) components within Defendant’s Samsung Galaxy S22 and other mobile phones infringe three patents related to LED device packaging and manufacturing methods.
  • Technical Context: The lawsuit concerns the micro-fabrication of LEDs, where novel packaging structures are critical for improving thermal performance, reducing manufacturing costs, and increasing the efficiency of light-emitting components used in high-volume consumer electronics.
  • Key Procedural History: The complaint alleges that Plaintiff’s predecessor-in-interest, Viagan, had meetings with both Samsung and Seoul Semiconductor as early as 2013 to discuss its proprietary LED technology and disclosed the patent application that led to the patents-in-suit. Furthermore, the complaint notes that all three asserted patents have survived petitions for inter partes review (IPR) filed by the Defendants, with the Patent Trial and Appeal Board (PTAB) declining to institute proceedings in each instance, finding no "reasonable likelihood" that the challenged claims were invalid.

Case Timeline

Date Event
2011-03-06 Earliest Priority Date for ’137, ’405, and '822 Patents
2013-04-12 Meeting alleged between Viagan and Samsung representatives
2015-01-27 U.S. Patent No. 8,941,137 Issues
2015-02-10 U.S. Patent No. 8,952,405 Issues
2017-10-10 U.S. Patent No. 9,786,822 Issues
2022-12-16 First Amended Complaint Filed

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

U.S. Patent No. 8,941,137 - “LIGHT EMITTING DIODE PACKAGE AND METHOD OF MANUFACTURE,” issued January 27, 2015

The Invention Explained

  • Problem Addressed: The patent describes conventional LED manufacturing as costly and inefficient. Specifically, the required use of a carrier substrate to support the LED structure can "double the cost" and "greatly increases the thermal resistivity of the device," which harms heat removal characteristics (’137 Patent, col. 1:55-62; Compl. ¶23).
  • The Patented Solution: The invention proposes a vertically configured LED device with a specific stack of layers designed to improve performance and simplify manufacturing. The structure includes a semiconductor LED, a thin conducting support layer (e.g., copper) separated from the LED by a metallic interface, an optically permissive layer (e.g., containing phosphor to alter light color) on the opposite side, and a flat cover substrate to protect the assembly (’137 Patent, col. 2:12-24, Fig. 6). This design aims to avoid the cost and thermal issues of prior art devices (Compl. ¶24).
  • Technical Importance: This approach seeks to create more robust, cost-effective, and thermally efficient LEDs suitable for mass production and integration into compact electronic devices (’137 Patent, col. 1:30-39).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶28).
  • The essential elements of independent claim 1 include:
    • A semiconductor LED with doped and intrinsic regions.
    • A conducting support layer, no more than 50 microns thick, disposed proximal to a first surface of the LED.
    • The support layer is separated from the LED by a "metallic interface with no additional intervening layers."
    • An optically permissive layer proximal to a second, opposing surface of the LED.
    • An "optically definable material" (e.g., phosphor) within or near the optically permissive layer.
    • An optically permissive flat cover substrate.
    • A metal pad located between the semiconductor LED and the optically permissive layer.
    • An electrical coupling between the LED's first surface, the metallic interface, and the conducting support layer.
  • The complaint reserves the right to assert additional claims (Compl. ¶26).

U.S. Patent No. 8,952,405 - “LIGHT EMITTING DIODE PACKAGE AND METHOD OF MANUFACTURE,” issued February 10, 2015

The Invention Explained

  • Problem Addressed: Like its related patents, the ’405 Patent addresses the high cost and poor thermal performance associated with conventional LED packaging that relies on separate carrier substrates (’405 Patent, col. 1:45-67; Compl. ¶64).
  • The Patented Solution: The invention discloses an LED structure built upon a sapphire layer. It features an electrically conducting metallization layer that directly contacts both positively-doped and negatively-doped surfaces of the semiconductor LED, which are arranged to be parallel. The structure is encapsulated by a passivation layer that defines specific "contact holes" to expose metal surfaces for electrical connection, allowing for a compact and integrated design (’405 Patent, col. 7:27-47, Fig. 11).
  • Technical Importance: This architecture facilitates creating all necessary electrical contacts on one side of the package, which can streamline the manufacturing and integration of the LED into a larger circuit board (’405 Patent, col. 3:19-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶69).
  • The essential elements of independent claim 1 include:
    • A semiconductor LED with positively-doped, intrinsic, and negatively-doped regions, where the LED defines a recess to expose a negatively-doped surface.
    • An electrically conducting metallization layer in direct contact with portions of both the positively-doped and negatively-doped surfaces.
    • A sapphire layer in direct contact with a first surface of the LED.
    • An optically permissive layer (containing phosphor/quantum dots) in direct contact with the sapphire layer.
    • An optically permissive cover substrate.
    • A passivation layer in direct contact with the other layers, which defines a first contact hole to expose an upper metal surface and a second contact hole to expose a lower metal surface.
    • A parallel arrangement of the various metal and semiconductor surfaces.
  • The complaint reserves the right to assert additional claims (Compl. ¶67).

U.S. Patent No. 9,786,822 - “LIGHT EMITTING DIODE PACKAGE AND METHOD OF MANUFACTURE,” issued October 10, 2017

  • Technology Synopsis: This patent discloses an LED package that addresses similar cost and heat dissipation problems found in conventional LEDs (Compl. ¶108). The patented solution describes a structure with an optically transparent cover substrate to which an "optically transparent layer" containing an "optically definable material" (e.g., phosphor) is attached. This assembly is placed over a semiconductor LED, which itself is connected to a carrier layer, with a passivation layer and precisely defined electrical contacts managing the connections between the components ('822 Patent, Abstract, Claim 1; Compl. ¶¶109, 115-116).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶113).
  • Accused Features: The complaint alleges the Samsung Galaxy S22's flash LED infringes by incorporating the claimed combination of an optically transparent cover substrate, an attached optically transparent layer with phosphor, a semiconductor LED, a carrier layer, and the specific arrangement of passivation layers and electrical contacts (Compl. ¶¶ 115-121).

III. The Accused Instrumentality

Product Identification

The primary accused product is the Samsung Galaxy S22 mobile phone, with infringement allegations extending to other Samsung mobile phones that include a flash LED (Compl. ¶¶ 6, 27). The specific accused component is the flash LED assembly within these phones (Compl. ¶28).

Functionality and Market Context

  • The complaint presents a detailed technical teardown of the Galaxy S22's flash LED, alleging it is a multi-layered Gallium Nitride (GaN) device (Compl. ¶30). The teardown purports to show a structure comprising a copper conducting support layer, a metallic interface, doped GaN semiconductor regions, an optically permissive layer of yellow phosphor, and a protective cover substrate (Compl. ¶¶ 30-35). The complaint includes a cross-sectional micrograph from the teardown allegedly showing the distinct layers of the accused LED (Compl. p. 8).
  • The flash LED functions as a light source for the phone's camera and for general illumination via the "flashlight" feature (Compl. ¶29). While the complaint does not provide market data, the Samsung Galaxy S-series is a globally prominent line of smartphones, suggesting the accused products have significant commercial scale.

IV. Analysis of Infringement Allegations

'137 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a semiconductor LED including doped and intrinsic regions thereof; The accused LED is a semiconductor GaN LED with positively doped, negatively doped, and intrinsic regions. A teardown image purports to show the "LED junction" and "n-GaN" layers. ¶30, p. 8 col. 2:14-15
a conducting support layer... no more than 50 microns in thickness; separated therefrom by a metallic interface with no additional intervening layers... The accused LED allegedly has a conducting support layer made of copper and other metals less than 50 microns thick, separated from the LED by a silver metallic interface with no intervening layers. ¶31 col. 8:17-21
an optically permissive layer proximal to a second surface of said semiconductor LED... An "optically permissive layer of yellow phosphorus" is alleged to be on top of the semiconductor LED, on the opposing face from the conducting support layer. A cross-section image shows this layer. ¶¶32-33, p. 11 col. 2:16-19
an optically definable material proximal to or within said optically permissive layer that affects an optical characteristic of emitted light... The "optically definable material is yellow phosphor" contained in the permissive layer, which allegedly changes the blue light from the LED into white light. ¶34 col. 2:20-23
an optically permissive flat cover substrate covering at least a portion of the above components; A transparent cover substrate made of silicon is alleged to protect the flash LED. An annotated image highlights this "Optically permissive flat cover substrate." ¶35, p. 12 col. 2:23-24
a metal pad between said semiconductor LED and said optically permissive layer... The complaint alleges the accused LED has a metal pad between the semiconductor and the optically permissive layer, referencing a teardown image. ¶36 col. 8:28-30
  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over the term "metallic interface with no additional intervening layers." Defendants could argue that microscopic adhesive residues, diffusion barriers, or other materials present in a mass-produced component constitute "intervening layers," thereby avoiding literal infringement of this negative limitation.
    • Technical Questions: The complaint's infringement theory relies heavily on its interpretation of teardown images. A key technical question will be whether the physical structure and material composition of the accused LED, under independent analysis, align with the specific architecture required by the claims, or if there are material differences in the layer stack.

'405 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a semiconductor LED including a positively-doped region, an intrinsic region, and a negatively-doped region... The accused LED is alleged to be a doped GaN LED with positive, negative, and intrinsic regions. ¶71 col. 7:6-9
an electrically conducting metallization layer in direct contact with at least a portion of each of a positively-doped surface and said negatively-doped surface... The accused LED allegedly has a metallization layer in direct contact with exposed surfaces of both positively and negatively doped GaN. A micrograph purports to show the "Positively doped surface has been exposed." ¶¶72-73, p. 23 col. 7:14-19
a sapphire layer in direct contact with a first surface of said semiconductor LED... The teardown allegedly reveals a sapphire layer in direct contact with the first surface of the LED. ¶74 col. 7:22-24
a passivation layer... wherein said passivation layer defines a first contact hole to expose a first portion of an upper metal surface... and... a second contact hole to expose a first portion of a lower metal surface... A "passivation layer" is alleged to define contact holes exposing upper and lower metal surfaces. The complaint includes images labeling a "First contact hole" and cross-sections showing alleged exposure of upper and lower metallization layers. ¶¶79, 28 col. 7:37-47
wherein said upper metal surface, said lower metal surface, said negatively-doped surface, said positively-doped surface, and said surface of said optically permissive layer are parallel with one another. The complaint alleges that these various surfaces in the accused device are parallel to one another and provides a labeled cross-section image as support. ¶80, p. 29 col. 7:48-52
  • Identified Points of Contention:
    • Scope Questions: The definition of "passivation layer" will be critical. Does the accused device's SiO layer perform the specific structural and electrical functions—including defining contact holes in the claimed manner—required by the patent, or is it a generic dielectric layer that falls outside the claim's scope?
    • Technical Questions: Evidence for the existence and function of the "first contact hole" and "second contact hole" relies on interpreting complex micrographs. A key technical question will be whether discovery and expert analysis confirm that these features exist and function as claimed, exposing distinct upper and lower metal surfaces for electrical contact.

V. Key Claim Terms for Construction

For the ’137 Patent:

  • The Term: "metallic interface with no additional intervening layers" (Claim 1)
  • Context and Importance: This negative limitation is crucial for infringement. The defendant will likely focus on any material, however thin, between the conducting support layer and the metallic interface to argue it is an "intervening layer" that negates infringement. The patent's validity may also depend on this term distinguishing the invention from the prior art.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a "metallic interface 225" that "separates but provides an interface for" the GaN and carrier layers (’137 Patent, col. 4:59-62). A party could argue this language focuses on the functional role of the interface, suggesting that trace materials incidental to manufacturing that do not alter this function are not "intervening layers."
    • Evidence for a Narrower Interpretation: The plain language "no additional intervening layers" is restrictive. A party could argue this requires direct, unadulterated physical contact. The patent does not explicitly define what constitutes an "intervening layer," leaving room to argue that any distinct material, such as an adhesion promoter not part of the "metallic interface" itself, would fall outside the claim.

For the ’405 Patent:

  • The Term: "passivation layer" (Claim 1)
  • Context and Importance: The infringement reading hinges on mapping this term to the "SiO passivation" layer identified in the accused product (Compl. p. 22). The claim requires this layer to be in contact with multiple other surfaces and to define specific contact holes. Its identity and function are therefore central to the dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the passivation layer as comprising materials like "SiO2, SiN, AIN, Al2O3 or an organic material such as epoxy," and notes it can be applied to "surround certain portions of the device" (’405 Patent, col. 5:15-24). This may support a construction that encompasses a variety of insulating materials performing a protective and structural role.
    • Evidence for a Narrower Interpretation: The specification also discusses embodiments where the passivation layer is "designed to be reflective" or has specific thermal properties (’405 Patent, col. 5:30-32). A party could argue that, in the full context of the patent, a "passivation layer" is not merely any insulator but must possess specific optical or thermal characteristics not present in the accused device's simple SiO layer.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants induce infringement by providing instructions and marketing materials that encourage end-users to use the accused flash LED. Specifically, it cites Samsung's support website, which instructs customers on how to "use the flashlight on your Galaxy phone" and adjust its brightness, actions that directly utilize the accused LED component (Compl. ¶¶ 52, 56-58, 97-101). A screenshot from Samsung's website shows instructions for activating the flashlight feature (Compl. p. 18).

Willful Infringement

Willfulness is alleged based on purported pre-suit knowledge. The complaint asserts that Plaintiff's predecessor, Viagan, met with Samsung and Seoul Semiconductor in 2013, presenting its proprietary LED technology and identifying the specific patent application (No. 13/413,407) from which the ’137 and ’405 patents later issued (Compl. ¶¶ 39, 82). Plaintiff alleges this shows Defendants had actual knowledge of the technology before its incorporation into products and that persisting with infringement after multiple IPR petitions were denied is evidence of "egregiousness" (Compl. ¶¶ 46, 89).

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

  • A central issue will be one of pre-suit knowledge and intent: The case's willfulness allegations hinge on the factual record of the 2013 meetings between Plaintiff's predecessor and Defendants. The key question for the court will be whether those discussions provided specific, actionable knowledge of the patented technology that was subsequently copied, or if Defendants' products were developed independently.
  • A second key issue will be one of claim construction and structural mapping: The dispute will likely focus on whether the complex, multi-material stack in the mass-produced accused LED constitutes the specific architecture claimed in the patents. This raises a core question of definitional scope: can terms like "metallic interface with no additional intervening layers" ('137 Patent) and "passivation layer" that defines specific contact holes ('405 Patent) be construed to read on the physical structures identified in the teardown of the Galaxy S22?
  • A final question will concern the evidentiary weight of the failed IPRs: While the PTAB's denials to institute are not binding on the court's validity determination, they present a significant procedural hurdle for Defendants. The court will have to consider whether Defendants' invalidity arguments and evidence in this litigation are materially different or more persuasive than what was presented to and rejected by the PTAB.