DCT
1:23-cv-16737
SemiLED Innovations LLC v. Menard Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SemiLED Innovations LLC (Texas)
- Defendant: Menard, Inc. (Wisconsin)
- Plaintiff’s Counsel: Direction IP Law
- Case Identification: 1:23-cv-16737, N.D. Ill., 12/13/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant operates numerous "Menards" retail stores, constituting regular and established places of business, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that a wide range of Defendant’s "Patriot Lighting" branded LED products infringe four patents related to the structural design, thermal management, and electrical configuration of LED packages and modules.
- Technical Context: The technology at issue concerns the fundamental construction of Light Emitting Diode (LED) packages, focusing on methods to create thinner, more robust, and more efficient components for use in solid-state lighting.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-01 | U.S. Patent No. 7,128,454 Priority Date |
| 2006-10-31 | U.S. Patent No. 7,128,454 Issued |
| 2007-12-03 | U.S. Patent Nos. 8,963,196 & 9,530,942 Priority Date |
| 2010-01-07 | U.S. Patent No. 8,309,971 Priority Date |
| 2012-11-13 | U.S. Patent No. 8,309,971 Issued |
| 2015-02-24 | U.S. Patent No. 8,963,196 Issued |
| 2016-12-27 | U.S. Patent No. 9,530,942 Issued |
| 2023-12-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,963,196, “Slim LED package,” issued Feb. 24, 2015
- The Invention Explained:
- Problem Addressed: The patent’s background section describes problems with prior art LED packages, noting that the housing supporting the lead frame resulted in excessive thickness (Compl. ¶19). It also identifies a "yellowing phenomenon" in the encapsulation material caused by energy from the LED chip, which decreased performance and lifetime, and notes that prior solutions involving heat sinks complicated the manufacturing process (’196 Patent, col. 1:49-64).
- The Patented Solution: The invention proposes a slimmer LED package by mounting the LED chip within a "chip mounting recess" formed on the lead frame (’196 Patent, col. 2:62-66). This design allows the thickness of the LED chip to partially overlap with the thickness of the lead frame, reducing the overall package height (Compl. ¶20). This structure also exposes a larger lead frame area to the bottom of the package, which is alleged to improve thermal dissipation efficiency (Compl. ¶20-21; ’196 Patent, col. 3:1-5).
- Technical Importance: The described approach sought to enable the production of thinner, more thermally efficient LED packages, which is a critical factor for improving the longevity and performance of compact solid-state lighting products (Compl. ¶19, 21).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 2 and 8 (Compl. ¶46, 52-53).
- The essential elements of independent claim 1 are:
- A light emitting diode (LED) package comprising:
- a first lead frame and a second lead frame separated from each other;
- an LED chip disposed on the first lead frame and electrically connected to the first lead frame and the second lead frame;
- a wire connecting the LED chip to the second lead frame;
- wherein opposing sides of the first lead frame and the second lead frame face each other in a slanted state to the other sides of the lead frames.
- The complaint reserves the right to assert additional claims during the litigation (Compl. ¶46).
U.S. Patent No. 9,530,942, “Slim LED Package,” issued Dec. 27, 2016
- The Invention Explained:
- Problem Addressed: Similar to the ’196 Patent, the ’942 Patent identifies excessive thickness in prior art LED packages and the degradation of encapsulation material due to a "yellowing phenomenon" as key technical challenges (’942 Patent, col. 1:57-62; Compl. ¶27).
- The Patented Solution: The patent also utilizes a "chip mounting recess" to achieve a slimmer profile (’942 Patent, col. 2:67-3:4). The invention further discloses specific structural features intended to enhance the package's mechanical integrity, such as grooves on the lower surfaces of the lead frames designed to increase the bonding force with the transparent encapsulation material (’942 Patent, col. 4:15-19).
- Technical Importance: This technology aimed to improve the manufacturability and reliability of slim LED packages by strengthening the physical bond between the metallic lead frames and the resin encapsulant, a common point of failure in such components (Compl. ¶29).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claim 3 (Compl. ¶59, 68).
- The essential elements of independent claim 1 are:
- A light emitting diode (LED) package comprising:
- a first lead frame and a second lead frame separated from each other;
- an LED chip disposed on the first lead frame and electrically connected with the second lead frame;
- a resin covering at least portions of surfaces of the first and second lead frames;
- wherein at least one of the lead frames comprises a first edge facing the other and a second side opposite the first;
- the first and second lead frames each comprise a groove on a lower surface thereof;
- each groove is open only on the lower surfaces; and
- a depth of the first groove is equal to a depth of the second groove.
- The complaint reserves the right to assert additional claims (Compl. ¶59).
Multi-Patent Capsule: U.S. Patent No. 8,309,971
- Patent Identification: U.S. Patent No. 8,309,971, “Light emitting diode having electrode pads,” issued Nov. 13, 2012.
- Technology Synopsis: The patent addresses inefficient current distribution in the semiconductor layers of large-area LEDs, which can limit light output and efficacy (Compl. ¶34-35). The claimed solution involves specific arrangements of electrode pads and extensions that are spaced apart from certain semiconductor layers to promote more uniform current spreading across the device’s active area (’971 Patent, col. 2:26-35; Compl. ¶36).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶74).
- Accused Features: The complaint accuses the Patriot Lighting Dusk-to-Dawn Outdoor Security Area Light of infringement (Compl. ¶73). The allegations center on the product's internal LED components, which are alleged to possess the claimed multi-layer semiconductor structure, distinct electrode pads, an insulation layer, and an "upper extension" designed for current spreading, as identified in SEM images provided in the complaint (Compl. ¶75-82).
Multi-Patent Capsule: U.S. Patent No. 7,128,454
- Patent Identification: U.S. Patent No. 7,128,454, “Light emitting diode module for automobile headlights and automobile headlight having the same,” issued Oct. 31, 2006.
- Technology Synopsis: This patent addresses the challenges of using LEDs in demanding environments like automotive headlights, which require robust thermal management and protection from moisture (’454 Patent, col. 1:43-47; Compl. ¶42). The invention is an integrated LED module comprising a high thermal conductivity body, a sealed electrical connector, and a transparent member that both protects the internal LED and can be configured as a lens to shape the light output (’454 Patent, Abstract; Compl. ¶43).
- Asserted Claims: Independent claim 1 and dependent claim 15 are asserted (Compl. ¶88).
- Accused Features: The complaint accuses the Patriot Lighting Recessed Light (Compl. ¶87). Infringement allegations focus on the overall construction of the product as an LED module, identifying its allegedly high-thermal-conductivity body, a lighting unit with an LED chip, a connector for external voltage, and a transparent member that seals the unit and functions as a lens (Compl. ¶89-94).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are a range of "Patriot Lighting" branded LED lighting products, including under-cabinet lights, outdoor security lights, track lights, wall packs, and recessed lights (Compl. ¶2). The complaint groups these products by the specific patent(s) they are alleged to infringe (e.g., Compl. ¶45, 58, 73, 87).
- Functionality and Market Context: These are finished lighting fixtures for residential and commercial use, which Defendant allegedly sells through its "Menards" retail stores and its e-commerce website (Compl. ¶9-10). The complaint’s allegations focus not on the end-use function of the lights, but on the internal construction of the LED packages and modules within them. The complaint provides numerous photographs and annotated micrographs to illustrate the allegedly infringing micro-structures inside the accused products. For example, Figure 1B-17 of the complaint is a micrograph purporting to show the slanted, opposing sides of the lead frames within an accused LED package (Compl. ¶51).
IV. Analysis of Infringement Allegations
'196 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A light emitting diode (LED) package, comprising: | The accused products are alleged to each contain an LED package. | ¶47 | col. 2:53-55 |
| a first lead frame and a second lead frame separated from each other; | The internal LED package allegedly includes first and second lead frames with a physical separation between them. | ¶48 | col. 4:59-61 |
| an LED chip disposed on the first lead frame and electrically connected to the first lead frame and the second lead frame; | An LED chip is allegedly mounted on the first lead frame and electrically connected to both lead frames. | ¶49 | col. 4:61-63 |
| a wire connecting the LED chip to the second lead frame; | A bonding wire is alleged to provide the electrical connection from the LED chip to the second lead frame. | ¶50 | col. 4:63-65 |
| wherein opposing sides of the first lead frame and the second lead frame face each other in a slanted state to the other sides of the lead frames. | The sides of the lead frames that face each other across the separation are allegedly angled or slanted relative to other sides of the frames. | ¶51 | col. 6:14-18 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the construction of "slanted state." The claim requires the opposing sides to be in a "slanted state to the other sides of the lead frames." The interpretation of this relational and geometric language will be critical. The defense may argue for a narrow construction tied to the specific function of dispersing molding force, as described in the specification (’196 Patent, col. 6:30-33), which may not be met by the accused products.
- Technical Questions: The complaint's infringement theory rests heavily on visual evidence from micrographs, such as Figure 1B-21, which purports to show the "Opposing Sides" in a slanted configuration (Compl. ¶51). A key factual question will be whether discovery and expert analysis validate that these images accurately represent a structure meeting the claim's geometric requirements.
'942 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first lead frame...second lead frame...an LED Chip...a resin... | The accused products allegedly contain an LED package with two lead frames, an LED chip, and a resin encapsulant. | ¶60-63 | col. 4:8-14 |
| at least one of the first and second lead frames comprises a first edge facing the other lead frame and a second side opposite the first side; | The lead frames allegedly possess the basic geometry of having a first edge and an opposite second side. | ¶64 | col. 8:15-18 |
| the first lead frame comprising a first groove disposed on a lower surface thereof, and the second lead frame comprises a second groove disposed on the lower surface thereof; | Both lead frames allegedly have grooves formed on their bottom surfaces. Figure 2B-21 in the complaint depicts these alleged grooves on an accused product (Compl. ¶65). | ¶65 | col. 4:15-17 |
| each of the first and second grooves is open only on the lower surfaces of the first and second lead frames, respectively; | The grooves are allegedly open only on the bottom, not extending to the top or side surfaces of the lead frames. | ¶66 | col. 4:15-17 |
| a depth of the first groove is equal to a depth of the second groove. | The complaint alleges that the depth of the groove on the first lead frame is equal to the depth of the groove on the second. | ¶67 | col. 8:28-30 |
- Identified Points of Contention:
- Scope Questions: The term "equal to" in the final limitation ("a depth of the first groove is equal to a depth of the second groove") presents a significant construction question. A defendant could argue for a strict, literal interpretation requiring mathematical identity, while the plaintiff may argue for "substantially equal," accounting for manufacturing tolerances.
- Technical Questions: The infringement allegation hinges on the physical presence, location, and dimensions of micro-structures. The core factual dispute will likely concern whether the accused products' lead frames actually possess grooves on their lower surfaces and, critically, whether those grooves have depths that can be considered "equal."
V. Key Claim Terms for Construction
'196 Patent: "slanted state"
- The Term: "wherein opposing sides of the first lead frame and the second lead frame face each other in a slanted state to the other sides of the lead frames"
- Context and Importance: This limitation defines the core distinguishing geometry of the claimed LED package. The entire infringement case for claim 1 depends on whether the accused products embody this specific spatial relationship between the lead frames.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not recite a specific angle or range of angles. This may support an interpretation where any non-perpendicular orientation of the opposing sides qualifies as a "slanted state."
- Evidence for a Narrower Interpretation: The specification describes "slant parts" that "disperse the force diagonally," which serves to prevent breakage of the encapsulation material during manufacturing (’196 Patent, col. 6:30-33). Practitioners may focus on whether the term "slanted state" should be limited to structures that achieve this disclosed functional advantage, potentially narrowing its scope.
'942 Patent: "equal to"
- The Term: "a depth of the first groove is equal to a depth of the second groove"
- Context and Importance: This limitation imposes a precise dimensional requirement on the accused products. A finding of non-infringement could result from even minor dimensional differences if the term is construed strictly.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that a person of ordinary skill in the art of semiconductor packaging would understand "equal to" in the context of a claim to permit minor, unintentional variations inherent in manufacturing processes.
- Evidence for a Narrower Interpretation: The patentee chose the explicit term "equal to" without qualifiers like "substantially" or "approximately." The specification does not appear to provide context suggesting anything other than a literal meaning. A defendant may argue that this choice was deliberate and should be strictly enforced, requiring dimensional identity.
VI. Other Allegations
- Indirect Infringement: The complaint includes conclusory allegations of indirect infringement in each count (e.g., Compl. ¶45, 58, 73, 87). However, it does not plead specific facts to support the requisite elements of knowledge of the patents and intent to induce infringement.
- Willful Infringement: The complaint does not explicitly allege "willful infringement" but does assert that Defendant's infringement is "exceptional" and entitles Plaintiff to attorneys' fees under 35 U.S.C. § 285 for each patent-in-suit (Compl. ¶54, 69, 83, 95). The complaint does not provide a factual basis for this allegation, such as pre-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and definitional scope: can terms with plain but exacting meanings, such as "equal to" ('942 Patent), be interpreted to encompass the inherent variability of mass-produced micro-structures, or will they be construed strictly? Similarly, will a geometric term like "slanted state" ('196 Patent) be defined broadly by its form or narrowly by the specific function described in the patent's embodiments?
- A second central issue will be one of evidentiary proof and technical reality: the complaint’s allegations for the '196, '942, and '971 patents are heavily reliant on its own analysis of micrographs and SEM images. A key question for the litigation will be whether discovery and independent expert analysis confirm that the accused products actually contain the claimed grooves, slanted sides, and multi-layer semiconductor structures as depicted and required by the claims.
- A third question may arise concerning technological mismatch: for the '454 patent, which is titled and described in the context of "automobile headlights," the court may need to decide whether the claims are properly asserted against a general-purpose residential "Recessed Light." While claim language is paramount, the patent's explicit focus may be used to argue for a narrower construction of claim terms that limits their applicability to the automotive field.