DCT

1:23-cv-00186

Samsung Electronics Co., Ltd. v. Technical Consumer Products, Inc.

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00186, D. Del., 10/26/2023
  • Venue Allegations: Venue is asserted in the District of Delaware on the basis that both Defendants are incorporated in Delaware and are therefore residents of the district.
  • Core Dispute: Plaintiff alleges that Defendants’ LED light bulbs and horticultural light fixtures, which contain LED chips allegedly manufactured by a third party, infringe four patents related to the structural design and manufacturing methods of semiconductor light-emitting devices.
  • Technical Context: The technology concerns the micro-architecture of light-emitting diodes (LEDs), focusing on fabrication techniques intended to improve light extraction efficiency, current distribution, and manufacturing yield for high-output devices.
  • Key Procedural History: This First Amended Complaint alleges that Defendants were placed on actual notice of their alleged infringement of the asserted patents on various dates prior to the filing. Specifically, notice regarding U.S. Patents 9,035,341, 9,373,746, 9,105,762, and 7,759,140 was allegedly provided to Defendant TCP on or before February 17, 2023. Notice regarding the '140 patent was allegedly provided to Defendant HGC on or before June 29, 2023. These notice dates are foundational to the claims of willful infringement.

Case Timeline

Date Event
2003-10-21 Earliest Priority Date for U.S. Patent 7,759,140
2010-07-20 Issue Date for U.S. Patent 7,759,140
2010-10-25 Earliest Priority Date for U.S. Patent 9,105,762
2012-03-27 Earliest Priority Date for U.S. Patents 9,035,341 & 9,373,746
2015-05-19 Issue Date for U.S. Patent 9,035,341
2015-08-11 Issue Date for U.S. Patent 9,105,762
2016-06-21 Issue Date for U.S. Patent 9,373,746
2023-02-17 Alleged date of actual notice to TCP for all four asserted patents
2023-06-29 Alleged date of actual notice to HGC for the ’140 patent
2023-10-26 First Amended Complaint Filed

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

U.S. Patent No. 9,035,341 - “SEMICONDUCTOR LIGHT EMITTING DEVICE WITH WIRING UNIT ARRANGEMENT”

  • Patent Identification: U.S. Patent No. 9035341, issued May 19, 2015.

The Invention Explained

  • Problem Addressed: The patent addresses a challenge in manufacturing large-area, multi-cell LED chips. To connect the individual light-emitting cells, metal wiring must be deposited over sloped surfaces created during the cell isolation process. If these slopes are too steep, the wiring can have defects. However, making all slopes gentle to accommodate the wiring reduces the "effective light emitting area" of the chip, thereby lowering its efficiency (’341 Patent, col. 1:42-55).
  • The Patented Solution: The invention is a device structure where the side walls of the LED cells are selectively engineered. The specific regions of the cell’s lateral surfaces where the wiring unit is to be disposed are designed to have a gentler slope, ensuring a reliable connection. Other lateral surfaces, not involved in wiring, can be made steeper, maximizing the active light-emitting area. This design decouples the requirements for manufacturing from the requirements for light emission (’341 Patent, Abstract; col. 2:1-7; Fig. 4).
  • Technical Importance: This approach provides a structural solution to produce high-output, reliable LED chips by optimizing the device topography for both electrical connectivity and optical performance (’341 Patent, col. 1:56-61).

Key Claims at a Glance

  • The complaint asserts exemplary independent claim 1 (Compl. ¶21).
  • The essential elements of claim 1 are:
    • A substrate;
    • A semiconductor laminate disposed on the substrate and divided into a plurality of light emitting cells;
    • A wiring unit electrically connecting the plurality of light emitting cells;
    • Wherein a region of the side surfaces of each cell where the wiring unit is disposed has a slope gentler than the slopes of other regions of the side surfaces.
  • The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶21).

U.S. Patent No. 9,373,746 - “MANUFACTURING METHOD OF SEMCONDUCTOR LIGHT EMITTING DEVICE HAVING SLOPED WIRING UNIT”

  • Patent Identification: U.S. Patent No. 9373746, issued June 21, 2016.

The Invention Explained

  • Problem Addressed: This patent, a divisional of the application leading to the ’341 patent, addresses the same manufacturing challenge: efficiently creating a multi-cell LED chip that has both reliable electrical interconnections and a large light-emitting area (’746 Patent, col. 1:49-55).
  • The Patented Solution: The patent claims a method for making the device. The method includes forming a semiconductor laminate, dividing it into cells via an isolation region, and specifically forming a "wiring region" on the cell side walls with a gentler slope than other side wall regions. The patent discloses that this can be achieved in a single photolithography and etching process by using a specialized mask that gradually changes the amount of light exposure, which in turn creates the varied slope profile in the photoresist and the subsequent etch (’746 Patent, col. 2:51-63; Fig. 9).
  • Technical Importance: The invention provides an efficient fabrication process for creating the topographically-optimized LED chip structure, potentially reducing manufacturing complexity and cost compared to multi-step processes (’746 Patent, col. 2:56-59).

Key Claims at a Glance

  • The complaint asserts exemplary independent claim 1 (Compl. ¶39).
  • The essential elements of method claim 1 are:
    • Forming a semiconductor laminate on a substrate;
    • Forming an isolation region to divide the laminate into a plurality of light emitting cells;
    • Forming a wiring region on a portion of the side surfaces of the cells, such that the slopes in the wiring region are gentler than slopes in other regions; and
    • Forming a wiring unit positioned at least in part in the wiring region.
  • The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶39).

U.S. Patent No. 9,105,762 - “SEMICONDUCTOR LIGHT EMITTING DEVICE AND MANUFACTURING METHOD THEREOF”

  • Patent Identification: U.S. Patent No. 9105762, issued August 11, 2015.
  • Technology Synopsis: The patent discloses an LED device structure designed to enhance current spreading and light extraction efficiency. It teaches forming an insulating layer and a transparent electrode to distribute current evenly, and placing a distinct reflection unit underneath the primary electrode to reflect light that would otherwise be absorbed and lost, thereby increasing the device's optical output (’762 Patent, Abstract; col. 2:6-12).
  • Asserted Claims: Exemplary claim 1 (Compl. ¶57).
  • Accused Features: The complaint alleges the LED chips in the Accused Products contain a structure of stacked semiconductor layers, an insulating layer (allegedly SiO2), a transparent electrode (allegedly ITO), and a reflective layer (allegedly Al) that reflects light from the active region, corresponding to the claimed invention (Compl. ¶¶ 68-70).

U.S. Patent No. 7,759,140 - “LIGHT-EMITTING DEVICE AND METHOD OF MANUFACTURING THE SAME”

  • Patent Identification: U.S. Patent No. 7759140, issued July 20, 2010.
  • Technology Synopsis: This patent describes a method for improving LED efficiency by texturing the growth substrate. The method involves forming "at least one protruded portion with a curved surface" on the substrate before growing the semiconductor layers. This textured surface is intended to reduce crystal defect density during growth and to create an optical lens effect, altering the path of generated light to improve the probability of its extraction from the chip (’140 Patent, Abstract; col. 2:43-54).
  • Asserted Claims: Exemplary claim 1 (Compl. ¶75).
  • Accused Features: The complaint accuses the manufacturing process of the LED chips in the Defendants' products, alleging that they are formed by growing semiconductor crystal layers on a substrate having protruded portions, as shown in scanning transmission electron microscope (STEM) images provided in the complaint (Compl. ¶¶ 80-83).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies two categories of accused products: the TCP L60A19N06V30K4 light bulb and the Gavita HGC906052 light fixture (Compl. ¶¶ 16, 18). Collectively, these are referred to as the "Accused Products" (Compl. ¶19, fn. 3).

Functionality and Market Context

  • The accused products are commercially available LED lighting devices. The TCP L60A19N06V30K4 is a general-purpose light bulb (Compl. ¶16, Fig. 1). The Gavita HGC906052 is a light fixture marketed to the hydroponics industry (Compl. ¶18, Fig. 2).
  • The core of the infringement allegations centers not on the final products themselves, but on the semiconductor LED chips contained within them. The complaint alleges, on information and belief, that these LED chips are manufactured by Seoul Semiconductor Co., Ltd. and incorporate the patented technologies (Compl. ¶¶ 17, 19). The complaint uses annotated scanning electron microscope (SEM) and STEM images of these chips, after removal from the products, as the primary evidence of infringement (e.g., Compl. ¶¶ 27, 80). Figure 21 shows images of an LED chip from an accused TCP light bulb both before and after chemical removal of the phosphorus layer, revealing the underlying LED dies (Compl. ¶79, Fig. 21).

IV. Analysis of Infringement Allegations

’341 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a semiconductor laminate disposed on the substrate and divided to a plurality of light emitting cells with an isolation region The accused LED chip contains a plurality of light emitting cells (labeled Cell 1, 2, 3) separated from each other by an isolation region, as shown in an SEM image. ¶28, Fig. 4 col. 4:26-34
a wiring unit electrically connecting the plurality of light emitting cells An SEM image shows a "wiring unit" located in a "wiring region" that electrically connects Cell 1 to Cell 2 of the accused chip. ¶31, Fig. 6 col. 4:40-43
wherein a region of side surfaces of the first conductivity-type semiconductor layer of each of the light emitting cells in which the wiring unit is disposed has a slope gentler than slopes of other regions of the side surfaces of the first conductivity-type semiconductor layer of each of the light emitting cells The complaint alleges that a visual comparison of cross-sectional SEM images shows the side surfaces in the wiring region (Fig. 6) are "gentler in slope" than the side surfaces in other regions (Fig. 8). ¶34 col. 2:1-7

’746 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
forming an isolation region to divide the semiconductor laminate into a plurality of light emitting cells The accused chip is alleged to be formed with multiple light emitting cells separated by an isolation region, as depicted in an SEM image. ¶46, Fig. 10 col. 1:45-50
forming a wiring region on a portion of both side surfaces of each of the light emitting cells such that slopes of the side surface...in the wiring region are gentler than slopes of the side surfaces...in other region... The complaint alleges the accused manufacturing method forms side surfaces in the wiring region (Fig. 12) that are "gentler in slope" than side surfaces in other regions (Fig. 14), as evidenced by cross-sectional SEM images. ¶52 col. 2:51-55
forming a wiring unit such that at least a portion thereof is positioned in the wiring region, the wiring unit electrically connecting the plurality of light emitting cells The accused method is alleged to result in a wiring unit being formed in the wiring region to connect the p-finger of one cell to the n-finger of an adjacent cell. ¶49, Fig. 12 col. 12:5-12

Identified Points of Contention

  • Scope Questions: For the ’341 and ’746 patents, the infringement analysis will turn on the construction of the phrase "slope gentler than." The patents do not mandate a specific numerical difference, creating a potential dispute over what degree of difference is legally significant. The question arises: does any visually discernible difference in slope suffice, or must the difference meet a quantitative threshold, such as the exemplary 10-degree difference mentioned in the specification (’341 Patent, col. 6:55-59)?
  • Technical Questions: The complaint's evidence for the "gentler slope" limitation relies on a qualitative visual comparison of SEM images (e.g., Compl. ¶¶ 34, 52). A key factual question will be whether this visual evidence is sufficient to prove the claimed structural and methodological limitations. A defendant may argue that the images are not representative, are misinterpreted, or that quantitative analysis (e.g., angle measurements) is required to establish that one slope is demonstrably "gentler" than another in a manner consistent with the patent's teachings. Another question is whether the protruded substrate taught in the '140 patent (Compl. ¶80, Fig. 22) affects the formation of the "gentler slope" taught in the '341 and '746 patents.

V. Key Claim Terms for Construction

  • The Term: "slope gentler than" (’341 patent, claim 1) / "gentler in slope than" (’746 patent, claim 1)
  • Context and Importance: This comparative term is the central point of novelty for the ’341 and ’746 patents, distinguishing the invention from devices that might have uniform side-wall slopes. Proving that the accused devices meet this limitation is critical for the Plaintiff's infringement case on these two patents. Practitioners may focus on this term because the patents' specifications provide both qualitative descriptions and quantitative examples, creating a focal point for claim construction arguments.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims themselves do not set a numerical value, suggesting that any slope that is functionally "gentler" to achieve the patent's stated purpose—ensuring a smooth wiring deposition process—could fall within the scope (’341 Patent, col. 5:12-16). A party might argue that the term should be given its plain and ordinary meaning, where any observable difference in gentleness is sufficient.
    • Evidence for a Narrower Interpretation: The specification provides specific, quantitative examples. It states that the slope angle in the wiring region may range from 40° to 60°, while the slope angle in other regions may be 70° or more, and that the difference may be "about 10° or more" (’341 Patent, col. 6:53-59). A party could argue that these explicit disclosures limit the term to a significant, numerically measurable difference in angle, rather than any slight or incidental variation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that both Defendants induced infringement of all asserted patents. The factual basis for this allegation includes Defendants’ alleged creation of advertisements, establishment of distribution channels, and provision of instructions, manuals, and technical support for the Accused Products, which allegedly encourage and instruct others (e.g., distributors, end-users) to use, sell, and import the infringing products (Compl. ¶¶ 22-23, 40-41, 58-59, 76-77, 85).
  • Willful Infringement: Willfulness is alleged for all asserted patents against both Defendants. The allegations are based on continued infringement after receiving alleged actual notice of the patents and the infringing conduct. The complaint specifies notice dates of "at least as of February 17, 2023" for TCP and "at least as early as June 29, 2023" for HGC with respect to the '140 patent, asserting that subsequent infringing acts were undertaken with knowledge or willful blindness (Compl. ¶¶ 36, 54, 72, 85, 93).

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

  • A core issue will be one of definitional scope and proof: how will the court construe the term "slope gentler than," which is central to two of the four patents? The case may turn on whether the qualitative evidence from SEM images is deemed sufficient to meet this limitation, or if a specific, quantitative angular difference is required, as suggested by the patent specifications' examples.
  • A second key question will relate to supply chain liability and knowledge: the complaint targets downstream sellers (TCP and HGC) for incorporating LED chips allegedly made by a third party (Seoul Semiconductor). A central challenge for the plaintiff will be to establish the defendants' knowledge and intent regarding the specific micro-fabrication details of these components, which will be critical for proving the claims of indirect and willful infringement.
  • A third question is one of technological intersection: the complaint asserts four patents covering distinct technological features (selective slope engineering, internal reflective layers, and textured substrates) are all embodied in the same LED chip. The litigation will explore whether the accused devices in fact practice all of these claimed inventions and whether the combination of these features creates any unaddressed complexities or interdependencies relevant to the infringement analysis.