Nichia Corp v. Global Value Lighting LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nichia Corporation (Japan)
  • Defendant: Global Value Lighting, LLC (Delaware)
  • Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP; Rothwell, Figg, Ernst & Manbeck, P.C.
• Case Identification: 1:19-cv-01388, D. Del., 07/26/2019
• Venue Allegations: Venue is asserted in the District of Delaware on the basis that Defendant is a corporation organized under the laws of Delaware and therefore resides in the district.
• Core Dispute: Plaintiff alleges that Defendant’s EcoSmart-branded filament-style LED light bulbs infringe six U.S. patents related to the structure of light emitting devices and their underlying semiconductor components.
• Technical Context: The technology concerns light-emitting diodes (LEDs), specifically relating to the physical assembly of filament-style LED bulbs and the micro-architecture of semiconductor chips designed to improve light extraction efficiency.
• Key Procedural History: The complaint does not reference prior litigation between the parties, Inter Partes Review proceedings, or specific licensing history concerning the patents-in-suit.

Case Timeline

Date	Event
1999-04-21	Earliest Priority Date for U.S. Patent No. 6,337,493
2001-07-24	Earliest Priority Date for U.S. Patent Nos. 6,870,191 and 7,804,101
2002-01-08	U.S. Patent No. 6,337,493 Issues
2004-02-09	Earliest Priority Date for U.S. Patent No. 7,345,297
2005-03-22	U.S. Patent No. 6,870,191 Issues
2005-12-16	Earliest Priority Date for U.S. Patent No. 9,752,734
2008-03-18	U.S. Patent No. 7,345,297 Issues
2009-02-25	Earliest Priority Date for U.S. Patent No. 9,324,791
2010-09-28	U.S. Patent No. 7,804,101 Issues
2016-04-26	U.S. Patent No. 9,324,791 Issues
2017-09-05	U.S. Patent No. 9,752,734 Issues
2019-07-26	Complaint Filed

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

U.S. Patent No. 9,752,734 - “Light emitting device”

The Invention Explained

• Problem Addressed: The patent describes a need for light emitting devices, such as LED bulbs, that can emit light over a wide 360-degree range, similar to a conventional incandescent filament bulb (’734 Patent, col. 1:45-54).
• The Patented Solution: The invention proposes a structure comprising an elongated board with light emitting element chips mounted on it. This board assembly is sealed by a transparent member that is formed "unitarily with" a wavelength conversion member (e.g., a phosphor to convert blue LED light to white light). The entire assembly is enclosed in a transparent bulb with a support base for connection to a conventional light socket (’734 Patent, col. 2:1-12; Abstract). This arrangement allows for the creation of an LED-based "filament" that radiates light broadly.
• Technical Importance: This approach allows for the design of energy-efficient LED bulbs that replicate the aesthetic and omnidirectional light distribution characteristics of traditional incandescent bulbs, a key feature for consumer acceptance in the general lighting market (’734 Patent, col. 1:45-54).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶22).
• The essential elements of claim 1 include:
  • A board having end portions and a center portion in a longitudinal direction, with first and second surfaces.
  • A plurality of light emitting element chips mounted on the first surface of the board.
  • A wavelength conversion member formed unitarily with a transparent member that seals the plurality of light emitting element chips.
  • A transparent bulb that encloses the board and chips.
  • Support leads to secure the chips inside the bulb.
  • A support base for engaging a light bulb socket.
  • A pair of metal plates protruding at both ends of the wavelength conversion member.
  • The wavelength conversion member is provided on the first and second surface sides and is elongated in the longitudinal direction.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,804,101 - “Semiconductor light-emitting device”

The Invention Explained

• Problem Addressed: The patent addresses the problem of low external quantum efficiency in conventional light emitting diodes. Light generated within the semiconductor layers can be trapped and absorbed due to total internal reflection at the interface between the semiconductor and the substrate or electrode, reducing the amount of light that escapes the device (’101 Patent, col. 1:14-41).
• The Patented Solution: The invention proposes creating microscopic "protruding portions" in a repeating pattern on the surface of the substrate upon which the semiconductor layers are grown. These protrusions are designed to scatter or diffract light that would otherwise be trapped, changing its angle of propagation so it can be emitted from the device, thereby increasing external quantum efficiency (’101 Patent, col. 2:5-15; Abstract). The patent describes specific geometric shapes for these protrusions, such as having convex cross-sections, that prevent the formation of crystal defects in the overlying semiconductor layers (’101 Patent, col. 2:42-53).
• Technical Importance: This substrate-engineering technique provides a method to increase the brightness and efficiency of LED chips without altering the light-generating active layers themselves, representing a key advance in light extraction technology (’101 Patent, col. 2:5-15).

Key Claims at a Glance

• The complaint asserts independent claim 36 (Compl. ¶37).
• The essential elements of claim 36 include:
  • A semiconductor light emitting diode comprising a substrate and an ohmic electrode.
  • A plurality of semiconductor layers where light is generated.
  • The substrate comprises sapphire.
  • Protruding portions formed in a repeating pattern within substantially an entire surface of the substrate.
  • The repeating pattern defines a polygon in plan view, while the rest of the surface is substantially flat.
  • Cross sections of the protruding portions are convex in shape.
  • The protruding portions are formed so as to scatter or diffract the generated light.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,870,191 - “Semiconductor light emitting device”

• Patent Identification: “Semiconductor light emitting device,” issued March 22, 2005.
• Technology Synopsis: Similar to the ’101 Patent, this invention seeks to improve light extraction efficiency from an LED chip. It discloses creating at least one recess and/or protruding portion on the surface of the substrate that contacts the semiconductor layers, with the side face of the recess/protrusion being inclined, in order to scatter or diffract generated light (’191 Patent, Abstract; col. 2:35-44).
• Asserted Claims: Independent claim 28 (Compl. ¶48).
• Accused Features: The complaint alleges that the LED chips within the accused products contain a substrate with surface features, such as recesses and/or protrusions with inclined side faces, that scatter or diffract light (Compl. ¶55).

U.S. Patent No. 9,324,791 - “Semiconductor element”

• Patent Identification: “Semiconductor element,” issued April 26, 2016.
• Technology Synopsis: This patent describes a semiconductor element with a specific substrate structure designed for improved manufacturing and performance. The invention involves a substrate with a plurality of "isolated processed portions" and an "irregularity face" that runs from these portions to the main face of the substrate, linking adjacent portions (’791 Patent, Abstract). This structure is intended to facilitate the division of a wafer into individual element chips.
• Asserted Claims: Independent claim 1 (Compl. ¶59).
• Accused Features: The complaint alleges the LED chips in the accused products include a sapphire substrate with isolated processed portions and an irregularity face that links them, matching the claimed structure (Compl. ¶65).

U.S. Patent No. 6,337,493 - “Nitride semiconductor device”

• Patent Identification: “Nitride semiconductor device,” issued January 8, 2002.
• Technology Synopsis: This patent addresses the technical problem of reducing the forward bias voltage in nitride semiconductor devices to reduce power consumption (’493 Patent, col. 1:29-39). The solution involves a specific multi-layer structure for the p-type semiconductor layer, comprising a p-type contact layer, a p-type high concentration doped layer, and an intermediate p-type single film layer, with specific relative impurity concentrations between them (’493 Patent, Abstract; col. 2:29-52).
• Asserted Claims: Independent claim 3 (Compl. ¶69).
• Accused Features: The accused LED chips are alleged to contain the claimed multi-layer p-type nitride semiconductor structure, including a p-type contact layer, a high concentration doped layer, and an intermediate single film layer with the specified relative impurity concentrations (Compl. ¶74).

U.S. Patent No. 7,345,297 - “Nitride semiconductor device”

• Patent Identification: “Nitride semiconductor device,” issued March 18, 2008.
• Technology Synopsis: This invention aims to improve the characteristics of nitride semiconductor devices by optimizing the structure of the n-side layers. It describes a structure with at least a first, second, and third n-side layer, where the second (middle) layer has a higher n-type impurity concentration than the first and third layers, and has substantially the same composition or band gap energy as the first layer (’297 Patent, Abstract). This structure is intended to improve device reliability and performance.
• Asserted Claims: Independent claim 10 (Compl. ¶78).
• Accused Features: The complaint alleges the accused LED chips include the claimed ordered structure of first, second, and third n-side layers with the specified relative impurity concentrations and compositions (Compl. ¶82).

III. The Accused Instrumentality

Product Identification

• The complaint accuses a range of EcoSmart-branded LED light bulbs, identifying EcoSmart #1002-919-758 and EcoSmart #1001-757-385 as specific examples (Compl. ¶8). The EcoSmart #1002-919-758 is used as an exemplary product for all infringement counts (Compl. ¶24).

Functionality and Market Context

• The accused products are private-label LED light bulbs designed to replace traditional incandescent bulbs (Compl. ¶7). An image provided in the complaint shows the packaging for the EcoSmart #1002-919-758, describing it as a "40w REPLACEMENT" candelabra base bulb (Compl. p.4). The complaint presents images depicting the products as having a transparent glass bulb enclosing one or more LED "filaments" that produce light (Compl. ¶25). These filaments are shown to consist of a series of small LED chips mounted on an elongated substrate, which is coated with a wavelength conversion material to produce white light (Compl. ¶¶27, 29).

IV. Analysis of Infringement Allegations

’9,752,734 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... a first surface... and a second surface	The complaint alleges the device includes a board with the claimed portions and surfaces. An image shows a teardown of the bulb's filament structure (Compl. ¶26).	¶28	col. 4:51-55
a plurality of light emitting element chips mounted on the first surface side of the board	The device includes multiple LED chips mounted on the board's surface. An enlarged image shows several LED chips mounted in a series (Compl. ¶30).	¶31	col. 4:63-65
a wavelength conversion member formed unitarily with a transparent member that seals the plurality of light emitting element chips	The device includes a wavelength conversion member (a yellow coating) formed with a transparent member (a sleeve) that seals the LED chips.	¶29	col. 4:66-67
a transparent bulb that encloses the board and the plurality of light emitting element chips	The device has an outer glass bulb that encloses the internal filament structure. An image shows the assembled bulb, both unlit and lit (Compl. ¶25).	¶31	col. 5:1-3
the wavelength conversion member is provided on the first surface side and the second surface side. The wavelength conversion member is elongated...	The complaint alleges the wavelength conversion member is provided on both sides of the board and is elongated along its length. An image shows the elongated, coated filament component (Compl. ¶27).	¶33	col. 5:16-22
a first set of the light emitting element chips are mounted on the first region... a second set of the LED chips are mounted on the second region	The LED chips are alleged to be arranged in first and second sets extending from the center of the board toward its ends.	¶33	col. 5:23-29

Identified Points of Contention:

• Scope Questions: A central question may be the interpretation of "wavelength conversion member formed unitarily with a transparent member that seals" the LED chips. The analysis will likely focus on whether a phosphor-coated sleeve placed over the board and chips meets the "formed unitarily" and "seals" limitations as understood from the patent's specification.
• Technical Questions: The complaint alleges the chips are mounted in "first" and "second" sets arranged from the center portion outwards. A factual question may arise as to whether the physical arrangement of chips on the accused filament meets this specific positional limitation.

’7,804,101 Infringement Allegations

Claim Element (from Independent Claim 36)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a semiconductor light emitting diode comprising a substrate, an ohmic electrode and a plurality of semiconductor layers	The accused EcoSmart products contain one or more semiconductor light emitting diodes (LED chips) with these components.	¶44	col. 28:20-25
Said substrate comprises sapphire.	The complaint alleges the substrate of the LED chips is made of sapphire.	¶44	col. 8:36-37
Protruding portions are formed in a repeating pattern within substantially an entire surface of the substrate so as to define a polygon as the repeating pattern in plan view	The complaint provides magnified optical photographs allegedly showing a repeating pattern of protruding portions on the substrate surface. An image shows an enlarged top-down view of this pattern (Compl. ¶43).	¶44	col. 28:28-34
Cross sections of the protruding portions... are convex in shape.	The complaint alleges the cross sections of the protruding portions are convex. An optical photograph shows a side view of the LED chip, allegedly depicting this shape (Compl. ¶42).	¶44	col. 28:35-37
Said protruding portions are formed so as to scatter or to diffract light generated in said plurality of light semiconductor layers.	The complaint alleges that the function of the protruding portions is to scatter or diffract light.	¶44	col. 28:38-40

Identified Points of Contention:

• Scope Questions: The dispute may involve the scope of "protruding portions." The analysis will question whether the microscopic surface features of the accused chips meet the patent's specific definitions regarding shape ("convex in shape"), pattern ("polygon as the repeating pattern"), and extent ("substantially an entire surface").
• Technical Questions: A key evidentiary question will be whether the accused surface features actually perform the claimed function of "scatter[ing] or diffract[ing] light" in a manner consistent with the patent's teachings, or if they are merely artifacts of a manufacturing process with a different or negligible optical effect.

V. Key Claim Terms for Construction

For the ’734 Patent:

• The Term: "formed unitarily with"
• Context and Importance: This term appears in the limitation "a wavelength conversion member formed unitarily with a transparent member that seals the plurality of light emitting element chips." The construction of this term is critical because the accused product appears to use a phosphor-coated sleeve that fits over the LED chips. Practitioners may focus on whether "formed unitarily" requires the wavelength conversion material and the transparent sealant to be a single, co-formed, or monolithic piece, or if it can read on a structure where one component is coated onto another.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification does not appear to define "unitarily," which may suggest it should be given its plain and ordinary meaning, potentially encompassing a coated structure where the two components function as a single unit.
  • Evidence for a Narrower Interpretation: The abstract states "The wavelength conversion member is formed unitarily with a transparent member." The detailed description and figures may be argued to show embodiments where the phosphor is dispersed within the transparent sealing resin itself, suggesting a more integrated, single-body construction rather than a layered or coated one (’734 Patent, Fig. 1, 4-7).

For the ’101 Patent:

• The Term: "convex in shape"
• Context and Importance: This term describes the cross-section of the "protruding portions" on the substrate. Its definition is crucial for infringement, as the complaint relies on optical photographs to show this feature. Practitioners may focus on this term because the specific geometry is tied to the patent's objective of preventing crystal defects while enhancing light extraction.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term "convex" has a well-understood geometric meaning (curving outward). The patent does not appear to provide a special definition, which might support applying the plain meaning to any outwardly curved surface shown in the accused device's cross-section.
  • Evidence for a Narrower Interpretation: The specification explains that this shape "prevents crystal defects from occurring in the semiconductor layers" (’101 Patent, col. 2:42-44). A defendant may argue that "convex in shape" should be limited to shapes that are specifically shown to achieve this functional advantage, potentially excluding shapes that are merely incidental to a manufacturing process or that do not prevent such defects. The specific embodiments shown in the patent's figures (e.g., ’101 Patent, Fig. 6A-6F) could be used to argue for a narrower construction limited to those depicted shapes.

VI. Other Allegations

• Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) and does not contain specific allegations of fact to support claims for induced or contributory infringement.
• Willful Infringement: While the complaint does not use the word "willful," it alleges that Defendant infringes "With knowledge as to its own status and conduct" (Compl. p. 1). Furthermore, the prayer for relief requests a declaration that the case is "an exceptional case" and an award of attorneys' fees pursuant to 35 U.S.C. § 285 (Compl. p. 23), which is often predicated on findings of willful infringement or other litigation misconduct.

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

This case presents a multi-faceted infringement dispute spanning from the macro-level assembly of an LED bulb down to the micro-architectural features of the semiconductor chip itself. The litigation will likely center on the following key questions:

• A core issue will be one of structural interpretation: does the accused filament structure, which appears to comprise LED chips on a substrate enclosed by a phosphor-coated sleeve, meet the claim limitation of a "wavelength conversion member formed unitarily with a transparent member that seals" the chips, or does the term "unitarily" require a more integrated, single-body construction as potentially depicted in the '734 patent?
• A second key question will be one of geometric and functional correspondence: do the microscopic patterns on the substrate of the accused LED chips constitute "protruding portions" with the specific "convex" cross-sections, repeating "polygon" patterns, and light-scattering functions required by the asserted claims, or is there a technical mismatch between the accused structures and the precise geometries claimed in patents like the '101 patent?
• Finally, a central evidentiary question will involve claim mapping across multiple patents: can Plaintiff demonstrate that the single exemplary accused LED chip simultaneously embodies the distinct and specific multi-layer p-side structures of the '493 patent, the multi-layer n-side structures of the '297 patent, and the various substrate texturing features of the '101, '191, and '791 patents?