DCT
6:19-cv-01332
Nichia Corp v. Healthe Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nichia Corp (Japan)
- Defendant: Healthe, Inc. (Delaware) and Lighting Science Group Corp. (Delaware)
- Plaintiff’s Counsel: Carlton Fields, P.A.; Rothwell, Figg, Ernst & Manbeck, P.C.
- Case Identification: 6:19-cv-01332, M.D. Fla., 07/31/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendants each have a regular and established place of business in the Middle District of Florida and have committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendants’ LED-based lighting products infringe twelve patents related to the structure, components, and manufacturing processes of semiconductor light emitting devices.
- Technical Context: The technology domain is semiconductor light-emitting diodes (LEDs), which are foundational components for energy-efficient lighting, displays, and other electronic devices.
- Key Procedural History: The complaint notes that U.S. Patent No. 8,530,250, one of the patents-in-suit, was the subject of an inter partes review (IPR) proceeding. A resulting certificate confirms that asserted Claim 1 was found patentable, while other claims were cancelled. The survival of an asserted claim through an IPR proceeding may be a relevant factor in the litigation.
Case Timeline
| Date | Event |
|---|---|
| 1999-03-29 | Priority Date for U.S. Patent No. 7,348,602 |
| 2000-07-07 | Priority Date for U.S. Patent Nos. 6,838,693; 9,444,011; 8,309,948; 7,750,337 |
| 2001-07-24 | Priority Date for U.S. Patent Nos. 9,865,773; 8,796,721; 8,344,402 |
| 2005-01-04 | Issue Date for U.S. Patent No. 6,838,693 |
| 2007-02-01 | Priority Date for U.S. Patent No. 8,120,057 |
| 2008-03-25 | Issue Date for U.S. Patent No. 7,348,602 |
| 2008-09-03 | Priority Date for U.S. Patent No. 8,530,250 |
| 2009-02-25 | Priority Date for U.S. Patent No. 8,728,916 |
| 2010-07-06 | Issue Date for U.S. Patent No. 7,750,337 |
| 2012-02-21 | Issue Date for U.S. Patent No. 8,120,057 |
| 2012-11-13 | Issue Date for U.S. Patent No. 8,309,948 |
| 2013-01-01 | Issue Date for U.S. Patent No. 8,344,402 |
| 2013-09-10 | Issue Date for U.S. Patent No. 8,530,250 |
| 2013-12-09 | Priority Date for U.S. Patent No. 10,276,751 |
| 2014-05-20 | Issue Date for U.S. Patent No. 8,728,916 |
| 2014-08-05 | Issue Date for U.S. Patent No. 8,796,721 |
| 2016-09-13 | Issue Date for U.S. Patent No. 9,444,011 |
| 2018-01-09 | Issue Date for U.S. Patent No. 9,865,773 |
| 2019-04-30 | Issue Date for U.S. Patent No. 10,276,751 |
| 2019-07-31 | Complaint Filing Date |
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 addresses the technical challenge of ensuring strong adhesion between a metal lead frame and a thermosetting resin in the packaging of light-emitting devices (LEDs) (’250 Patent, col. 1:50-55). Poor adhesion can lead to detachment and device failure.
- The Patented Solution: The invention is a manufacturing method where a lead frame is first provided with at least one "notch." After the lead frame is plated, a thermosetting resin is transfer-molded onto it to form a resin-molded body. The final step involves cutting both the resin body and the plated lead frame along the notch to form an individual resin package (’250 Patent, col. 2:19-32). This process is designed to create a final package where the outer surface of the resin and the outer surface of the lead are planar, and the cut side surface of the lead is unplated, which may improve adhesion and simplify manufacturing (’250 Patent, col. 3:7-14).
- Technical Importance: This manufacturing method aims to provide a simple, low-cost process for producing a large number of reliable LED packages with high adhesion between the constituent materials (’250 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶46).
- Essential elements of Claim 1:
- A method providing a lead frame comprising at least one notch.
- Plating the lead frame.
- After plating, providing an upper and lower mold and transfer-molding a thermosetting resin containing a light reflecting material to form a resin-molded body.
- Cutting the resin-molded body and the plated lead frame along the notch to form a resin package.
- The cutting step is performed such that an outer surface of the resin part and an outer surface of the at least one lead are planar at an outer side surface of the package.
- The plated lead frame is cut to form an unplated outer side surface on the lead.
- The complaint also asserts infringement of Claim 1 under 35 U.S.C. § 271(g), which pertains to the importation, sale, or use of a product made by a patented process (Compl. Count II).
U.S. Patent No. 10,276,751 - "Light emitting element"
The Invention Explained
- Problem Addressed: The patent's background describes the problem of uneven current distribution between the electrodes of a light-emitting element, which can cause non-uniform light emission and reduce efficiency (’751 Patent, col. 1:39-44).
- The Patented Solution: The invention claims a specific electrode structure for a light-emitting element designed to reduce this uneven current density. The solution is a precise geometric arrangement of the first and second electrodes on the same face of the semiconductor stack (’751 Patent, col. 2:51-60). In plan view, the first electrode includes a central linear portion and two flanking portions that have bent sections. The second electrode has portions that extend into the spaces created by the first electrode's geometry, as illustrated in Figure 1A of the patent. This configuration is intended to diffuse the current more uniformly across the face of the LED chip.
- Technical Importance: This electrode design provides a structural solution to improve the uniformity of light emission, a critical factor for the performance and efficiency of LEDs used in lighting and displays.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶62).
- Essential elements of Claim 1:
- A light emitting element comprising a semiconductor stack, a first electrode, and a second electrode on the same face side of the semiconductor layers.
- The first electrode has a first connecting portion, a first extending portion, and two second extending portions.
- The first extending portion extends linearly from the first connecting portion toward the second connecting portion.
- Each of the two second extending portions has two bent portions and a linear portion extending parallel to the first extending portion.
- The second electrode has a second connecting portion and two third extending portions.
- The two third extending portions extend parallel to the first extending portion between the first and second extending portions.
- Each of the second extending portions extends beyond a position of the second connecting portion.
- The first and second connecting portions have maximum lengths larger than the maximum widths of the extending portions.
U.S. Patent No. 9,865,773 - "Semiconductor light emitting device"
- Technology Synopsis: This patent relates to improving light extraction from a semiconductor light emitting diode by creating a specific pattern of protruding portions on the surface of the sapphire substrate upon which the semiconductor layers are grown. The protrusions are designed to scatter or diffract light generated in the semiconductor layers and have a specific range of taper angles to enhance this effect.
- Asserted Claims: At least Claim 1 (Compl. ¶70).
- Accused Features: The complaint alleges that the semiconductor light emitting diodes within the JOURNI, Awake & Alert, GoodDay, and Sleepy Baby products incorporate this technology (Compl. ¶¶70-71, 77).
U.S. Patent No. 8,796,721 - "Semiconductor light emitting device"
- Technology Synopsis: This patent describes a sapphire substrate for an LED that includes a plurality of protrusions formed in a specific two-dimensionally repeated pattern. The protrusions have a polygonal shape with sides not parallel to the M-axis of the substrate, and the repeated pattern involves six polygons forming a hexagon that surrounds another protrusion, with the goal of improving light extraction efficiency.
- Asserted Claims: At least Claim 1 (Compl. ¶81).
- Accused Features: The complaint alleges that LED chips in the Awake & Alert and GoodDay products contain sapphire substrates with the claimed features (Compl. ¶¶81, 87).
U.S. Patent No. 8,344,402 - "Semiconductor light emitting device"
- Technology Synopsis: This patent is directed to a semiconductor light emitting device with a patterned sapphire substrate. The substrate has a plurality of protrusions in a repeated pattern, where the protrusions have a triangular shape with sides not parallel to the A-axis of the GaN-based semiconductor layers. This structure is intended to scatter or diffract light generated in the semiconductor layers.
- Asserted Claims: At least Claim 1 (Compl. ¶91).
- Accused Features: The complaint alleges that LED devices within the Awake & Alert and GoodDay products infringe by including the claimed patterned sapphire substrate structure (Compl. ¶¶91, 98).
U.S. Patent No. 8,728,916 - "Method for manufacturing semiconductor element"
- Technology Synopsis: This is a method patent for dividing a wafer of semiconductor elements. The process involves focusing a pulsed laser beam inside a sapphire substrate to form isolated processed portions along a dividing line, creating a fissure that runs from these portions to the main face of the substrate. The wafer is then divided along this line.
- Asserted Claims: At least Claim 1 (Compl. ¶102).
- Accused Features: The complaint alleges on information and belief that the semiconductor elements in the JOURNI, Awake & Alert, GoodDay, and Sleepy Baby products are made according to this patented process (Compl. ¶¶102-103, 106).
U.S. Patent No. 7,348,602 - "Nitride semiconductor device"
- Technology Synopsis: This patent describes a nitride semiconductor device with a specific layered structure. It includes an n-type layer, a p-type layer, and an active layer in between. The p-type layer is detailed as having a cladding layer, a low-doped layer with a lower impurity concentration, and a p-contact layer with a higher impurity concentration, a structure designed to manage carrier injection and electrical properties.
- Asserted Claims: At least Claim 2 (Compl. ¶118).
- Accused Features: The complaint alleges that the LED chips within the GoodDay product have the claimed multi-layer nitride semiconductor structure (Compl. ¶¶118, 121).
U.S. Patent No. 6,838,693 - "Nitride semiconductor device"
- Technology Synopsis: This patent relates to the structure of an active layer in a nitride semiconductor device. The active layer has a quantum well structure with well layers and barrier layers. The invention specifies that a first barrier layer on the p-side of the well layer has a greater thickness than a second barrier layer on the n-side of the well layer, a design intended to improve carrier injection and device performance.
- Asserted Claims: At least Claim 1 (Compl. ¶125).
- Accused Features: The complaint alleges that the LED chips in the Sleepy Baby product include the claimed active layer structure (Compl. ¶¶125, 129).
U.S. Patent No. 9,444,011 - "Nitride semiconductor device"
- Technology Synopsis: This patent describes a nitride semiconductor device with an active layer having a specific quantum well structure. It claims an arrangement of multiple barrier layers where the final barrier layer (nearest the p-type layer) is thicker than the other barrier layers and where certain layers are doped with an n-type impurity while others are undoped.
- Asserted Claims: At least Claim 1 (Compl. ¶133).
- Accused Features: The complaint alleges that LED chips in the Sleepy Baby product contain the claimed quantum well structure (Compl. ¶¶133, 137).
U.S. Patent No. 8,309,948 - "Nitride semiconductor device"
- Technology Synopsis: This patent describes a nitride semiconductor structure where the active layer includes an electrons confining layer made of a nitride semiconductor containing aluminum (Al). The active layer also has a quantum well structure where a first barrier layer (nearest the p-type side) does not have an n-type impurity, while a second barrier layer does, a configuration intended to improve device lifetime and performance.
- Asserted Claims: At least Claim 1 (Compl. ¶141).
- Accused Features: The complaint alleges that LED chips in the Sleepy Baby product utilize this specific active layer and electron confining layer structure (Compl. ¶¶141, 145).
U.S. Patent No. 7,750,337 - "Nitride semiconductor device"
- Technology Synopsis: This patent is substantially similar to the '948 Patent, claiming a nitride semiconductor structure with an electrons confining layer containing Al and a quantum well structure. The claims focus on the strategic absence and presence of n-type impurities in different barrier layers within the active layer to control carrier injection.
- Asserted Claims: At least Claim 1 (Compl. ¶149).
- Accused Features: The complaint alleges that LED chips in the Sleepy Baby product utilize the claimed structure (Compl. ¶¶149, 153).
U.S. Patent No. 8,120,057 - "Semiconductor light emitting element"
- Technology Synopsis: This patent is directed to the structure of electrodes and an insulating film on a semiconductor light emitting element. It claims a light transmissive insulating film positioned to overlap an electrode, where the film has a larger thickness at an inner area than at a perimeter area, a feature intended to manage light transmission and electrical properties.
- Asserted Claims: At least Claim 14 (Compl. ¶157).
- Accused Features: The complaint alleges that the LED chips in the GoodDay, Sleepy Baby, and JOURNI products incorporate this specific insulating film and electrode structure (Compl. ¶¶157-158, 163).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are LED-based lighting products, including the Awake & Alert (LS BR30 75WE AA 120 G2 BX), the GoodDay #FG-07005 (LSH A19 60WE GD 120 SH BX), the Sleepy Baby #FG-07000 (LSH P15 25WE SLPB 120 SH BX), and the JOURNI #FG-07028 (LSH TRVLGT GDGN 10W SL) (Compl. ¶5). The complaint notes that this list is exemplary (Compl. ¶22).
Functionality and Market Context
- The accused products are commercially available light bulbs and portable lighting devices that use LEDs as their light source (Compl. ¶¶5-21). The complaint includes numerous photographs of the products' packaging and internal components, including images of disassembled products that show the packaged LED devices and the underlying LED chips (Compl. ¶¶6-21). For example, images of the interior of the "Awake & Alert" product show the disassembled product and the packaged LED devices within it (Compl. ¶8). These products are marketed for general and specialized illumination, with branding that suggests specific biological effects on users (e.g., "Awake & Alert," "Sleepy Baby").
- The complaint alleges that Defendants manufacture, offer for sale, import, and sell these products throughout the United States, including in the state of Florida (Compl. ¶¶24, 28-29).
IV. Analysis of Infringement Allegations
’8,530,250 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for manufacturing a light emitting device, comprising: providing a lead frame comprising at least one notch; | One or more of the light emitting devices in the JOURNI product are allegedly made according to a process that includes providing a lead frame with at least one notch. | ¶51 | col. 7:5-10 |
| plating the lead frame; | The lead frame used in the manufacturing process is allegedly plated. | ¶51 | col. 7:11-13 |
| 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 containing a light reflecting material...to form a resin-molded body; | A thermosetting resin is allegedly transfer-molded between an upper and lower mold onto the plated lead frame to form a resin-molded body. | ¶51 | col. 7:16-24 |
| and cutting the resin-molded body and the plated lead frame along the at least one notch to form a resin package...the cutting step being performed such that an outer surface of the resin part and an outer surface of the at least one lead are planar at an outer side surface of the resin package. | The resin-molded body and plated lead frame are allegedly cut along the notch, resulting in a resin package where the outer surfaces of the resin and lead are planar. An x-ray image of a light emitting device from JOURNI is provided as evidence (Compl. at p. 26). | ¶51 | col. 7:25-36 |
| The plated lead frame is cut so as to form an unplated outer side surface on the lead. | The cutting process allegedly results in an unplated outer side surface on the lead. | ¶51 | col. 7:39-41 |
- Identified Points of Contention:
- Evidentiary Questions: The ’250 Patent claims a method of manufacturing, not a final product. A central issue will be whether Plaintiff can produce sufficient evidence to demonstrate that the accused JOURNI product's internal LED components were in fact made by the claimed process. The analysis may depend on inferences drawn from the final product's structure, such as the planarity of the lead and resin surfaces and the presence of an unplated cut edge on the lead, which the complaint alleges are hallmarks of the patented process (Compl. ¶51).
’10,276,751 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a semiconductor stack including a first conductivity type semiconductor layer and a second conductivity type semiconductor layer; a first electrode formed on the first...layer; and a second electrode formed on the second...layer, the first electrode and the second electrode being disposed on the same face side... | Light emitting elements in the JOURNI product allegedly include a semiconductor stack with first and second electrodes disposed on the same face. Images of the accused LED chip show this general arrangement (Compl. at p. 31). | ¶66 | col. 3:5-11 |
| the first electrode having a first connecting portion, a first extending portion, and two second extending portions...the first extending portion extending linearly from the first connecting portion toward the second connecting portion, and the two second extending portions arranged on two sides of the first extending portion... | The JOURNI LED element's first electrode allegedly has a first connecting portion, a linear first extending portion, and two second extending portions on either side of the first extending portion. | ¶66 | col. 11:50-12:5 |
| with each of the second extending portions having two bent portions and a linear portion extending parallel to the first extending portion and disposed between the two bent portions, | Each of the two second extending portions of the JOURNI LED element allegedly has two bent portions and a parallel linear portion between them. | ¶66 | col. 12:1-5 |
| the second electrode having a second connecting portion and two third extending portions...the two third extending portions extending parallel to the first extending portion between the first extending portion and the two second extending portions | The JOURNI LED element's second electrode allegedly has a second connecting portion and two third extending portions that extend parallel to the first extending portion and are located between the first and second extending portions. | ¶66 | col. 12:6-12 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis for the ’751 Patent will likely focus on a detailed comparison of the accused LED's physical electrode geometry against the specific limitations of Claim 1. A key question for construction may be the scope of the term "bent portions," including what degree of curvature or angularity is required to meet this limitation. The complaint provides images of the accused LED chips, which show curved electrode traces (Compl. ¶64).
- Technical Questions: A factual dispute may arise over whether the physical layout and dimensions of the electrodes in the JOURNI product satisfy all the relative positioning and dimensional requirements of Claim 1, such as the parallel arrangement of certain portions and the requirement that the second extending portions extend beyond the second connecting portion.
V. Key Claim Terms for Construction
For the ’250 Patent:
- The Term: "planar at an outer side surface"
- Context and Importance: This term is critical because it defines the resulting structural characteristic of the package created by the claimed cutting process. The infringement analysis for a process claim often relies on inferring the process from the final product's structure. Whether the accused product's resin and lead surfaces are sufficiently "planar" to evidence the use of the claimed method will be a central point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "planar." A party could argue that in the context of microscopic manufacturing, the term should be given its plain and ordinary meaning, allowing for minor manufacturing tolerances and imperfections, rather than requiring perfect mathematical planarity.
- Evidence for a Narrower Interpretation: A party might argue that the term, in the context of the invention's goal to improve adhesion, implies a very high degree of co-planarity to maximize surface contact and that the figures (e.g., Fig. 1) illustrate a flush, continuous surface.
For the ’751 Patent:
- The Term: "two bent portions"
- Context and Importance: The specific geometry of the electrodes is the core of the invention. Whether the curved sections of the accused product's electrodes (Compl. ¶64) meet the definition of "bent portions" is central to the infringement analysis. Practitioners may focus on this term because its construction will determine whether curved or rounded electrode paths fall within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the phrase "Bent at their distal ends" encompasses both "when the extending portions bend, and when they curve" (’751 Patent, col. 5:35-39). This language explicitly supports construing "bent" to include curved structures, not just sharp angles.
- Evidence for a Narrower Interpretation: A party could argue that the term "bent" in the context of the claim's other linear and parallel elements implies a more defined, angular change in direction, as arguably depicted in the schematic of Figure 1A, rather than a continuous, gentle curve.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain any counts for indirect infringement under 35 U.S.C. § 271(b) or (c). The asserted counts are for direct infringement under § 271(a) and infringement via importation of a product made by a patented process under § 271(g) (Compl. Counts I-XIV).
- Willful Infringement: The complaint's prayer for relief seeks a declaration that Defendants' infringement has been willful and requests enhanced damages (Compl. p. 61, ¶e). However, the body of the complaint does not allege specific facts to support a finding of willfulness, such as pre-suit knowledge of the patents or objective recklessness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the process patents (e.g., the '250 and '916 Patents) will be one of evidentiary proof: can the Plaintiff demonstrate, by a preponderance of the evidence, that the accused LED components were manufactured using the specific steps recited in the claims, potentially relying on inferences drawn from the structure of the final products?
- A key question for the structural patents (e.g., the '751, '773, and '721 Patents) will be one of claim scope and technical comparison: how will the court construe the detailed geometric and structural limitations of the claims, such as "two bent portions" in an electrode or a specific pattern of "protrusions" on a substrate, and does the physical structure of the accused products fall within that construed scope?
- Given the assertion of twelve distinct patents against multiple products, a significant case management question will be one of litigation efficiency: how will the parties and the court structure the case to manage the complexity, potentially by focusing on a subset of representative claims, patents, and products for initial discovery, claim construction, and dispositive motions?