DCT

2:17-cv-08255

Epistar Corp v. All Star Lighting Supplies Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Epistar Corporation (Taiwan)
- Defendant: All Star Lighting Supplies, Inc., d/b/a Luxrite (New York)
- Plaintiff’s Counsel: Blank Rome LLP; WILSON SONSINI GOODRICH & ROSATI, P.C.
Case Identification: 2:17-cv-08255, D.N.J., 10/13/2017
Venue Allegations: Venue is alleged to be proper as Defendant maintains its principal place of business in Avenel, New Jersey, within the district.
Core Dispute: Plaintiff alleges that Defendant’s LED filament-style light bulbs infringe eight U.S. patents related to various aspects of LED semiconductor structure, manufacturing, and device assembly.
Technical Context: The dispute centers on LED filament technology, which arranges LED dies on a transparent substrate to mimic the appearance and light distribution of traditional incandescent bulbs.
Key Procedural History: The complaint alleges that Defendant has had knowledge of Plaintiff's patent portfolio since at least April 20, 2017, a fact that may be central to the allegations of willful infringement.

Case Timeline

Date	Event
2001-02-06	Priority Date for U.S. Patent No. 8,791,467
2001-02-27	Priority Date for U.S. Patent No. 7,355,208
2004-04-13	Priority Date for U.S. Patent No. 7,560,738
2005-01-25	Priority Date for U.S. Patent No. 7,489,068
2008-04-08	U.S. Patent No. 7,355,208 Issues
2008-12-24	Priority Date for U.S. Patent No. 9,257,604
2009-02-10	U.S. Patent No. 7,489,068 Issues
2009-07-14	U.S. Patent No. 7,560,738 Issues
2012-05-29	Priority Date for U.S. Patent Nos. 9,065,022 & 9,488,321
2013-06-11	Priority Date for U.S. Patent No. 9,664,340
2014-07-29	U.S. Patent No. 8,791,467 Issues
2015-05-14	Earliest Alleged Sale Date of Accused Products
2015-06-23	U.S. Patent No. 9,065,022 Issues
2016-02-09	U.S. Patent No. 9,257,604 Issues
2016-11-08	U.S. Patent No. 9,488,321 Issues
2017-05-30	U.S. Patent No. 9,664,340 Issues
2017-10-13	Complaint Filed

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

U.S. Patent No. 7,355,208 - "Nitride-Based Semiconductor Element and Method of Forming Nitride-Based Semiconductor," Issued April 8, 2008

The Invention Explained

Problem Addressed: The patent addresses the technical challenge of growing high-quality nitride semiconductor layers (the active components of many LEDs) on a substrate like sapphire. Mismatches in the crystal lattice structure between the two materials create defects, or "dislocations," that degrade the LED's performance and reliability (’208 Patent, col. 1:29-41). Conventional methods to reduce these defects were described as inefficient for mass production (’208 Patent, col. 2:24-36).
The Patented Solution: The invention proposes a method to improve crystal quality by first etching the substrate to create a surface with "projection portions" and "recess portions." A mask is applied to the projections, and the nitride semiconductor material is then grown from the recesses and laterally over the masks. This "epitaxial lateral overgrowth" technique is intended to reduce the propagation of defects into the active layer of the device, thereby improving its quality and manufacturability in a single growth step (’208 Patent, Abstract; col. 3:1-19).
Technical Importance: This method sought to improve the yield and electrical characteristics of nitride-based semiconductors, which are foundational to the production of high-brightness blue and white LEDs (’208 Patent, col. 1:21-28).

Key Claims at a Glance

The complaint asserts at least independent claim 8 (Compl. ¶32).
Claim 8 Elements:
- A substrate including a surface having projection portions and recess portions;
- A buffer layer formed on bottom surfaces of said recess portions;
- A nitride-based semiconductor layer formed on side surfaces of said recess portions;
- Wherein said recess portions or said projection portions are formed in a circular, hexagonal or triangular shape in a plan view.
The complaint reserves the right to assert additional claims (’208 Patent, Compl. ¶32).

U.S. Patent No. 7,489,068 - "Light Emitting Device," Issued February 10, 2009

The Invention Explained

Problem Addressed: A primary challenge in LED design is "light extraction efficiency." Much of the light generated within the high-refractive-index semiconductor material becomes trapped by total internal reflection at the interface with the low-refractive-index surrounding medium (e.g., air or encapsulant), reducing the device's overall brightness (’068 Patent, col. 1:27-46).
The Patented Solution: The invention describes an LED structure with a "light emitting stack" having a "diffusing surface" mounted on a transparent substrate. Between the diffusing surface and the substrate is a transparent adhesive layer with a different index of refraction. This combination of a textured surface and mismatched refractive indices is designed to scatter the trapped light, increasing the probability that it will escape the device instead of being internally reflected and absorbed (’068 Patent, Abstract; col. 1:60-67).
Technical Importance: This approach aimed to directly increase the usable light output of an LED chip, making lighting products brighter and more energy-efficient without increasing power consumption (’068 Patent, col. 2:1-4).

Key Claims at a Glance

The complaint asserts at least independent claim 1 (Compl. ¶38).
Claim 1 Elements:
- A transparent substrate;
- A light emitting stack having a first diffusing surface above the transparent substrate; and
- A transparent adhesive layer between the transparent substrate and the first diffusing surface, wherein an index of refraction of the light emitting stack is different from that of the transparent adhesive layer.
The complaint reserves the right to assert additional claims (’068 Patent, Compl. ¶38).

U.S. Patent No. 7,560,738 - "Light-Emitting Diode Array Having an Adhesive Layer," Issued July 14, 2009

Technology Synopsis: Describes an LED array where multiple epitaxial light-emitting stack layers are disposed on an adhesive layer formed on a substrate. This structure, where P-contacts and N-contacts are on the same side, is intended to improve heat ventilation characteristics (’738 Patent, Abstract). (Compl. ¶24).
Asserted Claims: At least claim 1 (Compl. ¶44).
Accused Features: The accused filament products are alleged to be light-emitting diode arrays comprising a substrate, an adhesive layer, and a plurality of electrically connected epitaxial light-emitting stacks disposed on the adhesive layer (Compl. ¶44; Compl. Ex. 11, p. 213-216).

U.S. Patent No. 8,791,467 - "Light Emitting Diode and Method of Making the Same," Issued July 29, 2014

Technology Synopsis: Discloses a light-emitting structure with a "layer structure" for emitting light that is bonded to a "carrier substrate" that is "not being a single crystal wafer." The invention aims to produce a high-output LED (more than 4 mW at 20 mA) while overcoming manufacturing complexities associated with conventional substrates (’467 Patent, Abstract; col. 2:21-34). (Compl. ¶25).
Asserted Claims: At least claim 1 (Compl. ¶50).
Accused Features: The accused products allegedly comprise a layer structure for emitting light bonded to a carrier substrate that is amorphous and not a single crystal wafer (Compl. ¶50; Compl. Ex. 12, p. 221).

U.S. Patent No. 9,065,022 - "Light Emitting Apparatus," Issued June 23, 2015

Technology Synopsis: The patent describes a light emitting apparatus designed for omni-directional light output. It features an LED chip on a transparent substrate, where the light emitting angle is wider than 180°, allowing light to emerge from both the front and back surfaces of the substrate. This assembly is coupled to a support base (’022 Patent, Abstract). (Compl. ¶26).
Asserted Claims: At least claim 1 (Compl. ¶56).
Accused Features: The accused filament bulbs are alleged to have an LED chip on a substrate with a light emitting angle wider than 180°, coupled to a support base (Compl. ¶56; Compl. Ex. 13, p. 226).

U.S. Patent No. 9,257,604 - "Light-Emitting Device Having a Patterned Surface," Issued February 9, 2016

Technology Synopsis: This patent discloses an LED with a substrate having a "first patterned unit bulged on the top surface." The pattern is defined as having a non-polygon shape in a top view and a vertex with two inclined line segments in a cross-sectional view, a structure intended to improve light extraction (’604 Patent, Abstract; col. 2:9-15). (Compl. ¶27).
Asserted Claims: At least claim 1 (Compl. ¶62).
Accused Features: The LED chips within the accused products are alleged to have a substrate with a bulged, patterned top surface matching the claimed geometry (Compl. ¶62; Compl. Ex. 14, p. 232-234).

U.S. Patent No. 9,488,321 - "Illumination Device with Inclined Light Emitting Element Disposed on a Transparent Substrate," Issued November 8, 2016

Technology Synopsis: The invention describes an illumination device where a light-emitting element (comprising LED structures on a transparent substrate) is stacked on a support that is "inwardly inclined against a central axis of the supporting base by a first angle." This configuration is designed for multi-directional light distribution (’321 Patent, Abstract; Claim 1). (Compl. ¶28).
Asserted Claims: At least claim 1 (Compl. ¶68).
Accused Features: The accused filament bulbs are alleged to embody this structure, with the light-emitting filaments being inclined on a central support base (Compl. ¶68; Compl. Ex. 15, p. 240).

U.S. Patent No. 9,664,340 - "Light Emitting Device," Issued May 30, 2017

Technology Synopsis: Discloses an LED device structure, seemingly directed at filament-style constructions, comprising a carrier with top and bottom surfaces, first and second electrodes, and a light-emitting unit. The entire assembly is covered by a transparent body (’340 Patent, Abstract). (Compl. ¶29).
Asserted Claims: At least claim 1 (Compl. ¶74).
Accused Features: The accused LED filaments are alleged to comprise a carrier, electrodes, a light-emitting unit, and a transparent body arranged in the claimed configuration (Compl. ¶74; Compl. Ex. 16, p. 244-248).

III. The Accused Instrumentality

Product Identification

The primary accused product is the Luxrite LR21205 40 W Equivalent Incandescent Warm White Chandelier Light Bulb (Manufacturer Part Number: LED4EFC/CL/27K), along with "similar products" (Compl. ¶16).

Functionality and Market Context

The Accused Products are LED light bulbs designed in a "filament style" to replicate the aesthetic of traditional incandescent bulbs for decorative and general lighting applications (Compl. ¶18). The complaint alleges these products contain a variety of electrical components and are assembled with pre-configured components to control their operation (Compl. ¶17). The complaint includes a screenshot from an archived version of Defendant's website from May 14, 2015, showing "Filament Style" LED bulbs for sale (Compl. Fig. 5). This image shows several bulb shapes, including the chandelier "flame tip" style specifically identified in the complaint (Compl. ¶18; Fig. 5). The products are allegedly sold through wholesale distributors and resellers (Compl. ¶7).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,355,208 Infringement Allegations

Claim Element (from Independent Claim 8)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a substrate including a surface having projection portions and recess portions;	The LED chips within the Accused Product allegedly contain a substrate with a surface featuring microscopic projections and recesses. The complaint provides a scanning electron microscope (SEM) image purporting to show these features in cross-section. (Compl. Ex. 9, p. 203).	¶32	col. 7:26-34
a buffer layer formed on bottom surfaces of said recess portions;	The complaint alleges the presence of a buffer layer on the bottom surfaces of the substrate's recess portions, supported by a transmission electron microscope (TEM) image. (Compl. Ex. 9, p. 204).	¶32	col. 7:40-48
a nitride-based semiconductor layer formed on side surfaces of said recess portions,	A nitride-based semiconductor layer is alleged to be formed on the side surfaces of the recess portions. (Compl. Ex. 9, p. 204-205).	¶32	col. 8:15-18
wherein said recess portions or said projection portions are formed in a circular, hexagonal or triangular shape in a plan view.	The projections on the substrate are alleged to be formed in a circular shape when viewed from above. The complaint provides a top-down SEM image showing circular features. (Compl. Ex. 9, p. 206).	¶32	col. 18:20-24

Identified Points of Contention:

Scope Questions: The analysis may focus on whether the microscopic features identified on the accused chips constitute "projection portions and recess portions" within the meaning of the patent. The patent describes these features as being intentionally created via etching to guide crystal growth, raising the question of whether any surface unevenness resulting from a different manufacturing process would fall within the claim scope.
Technical Questions: A factual dispute will likely arise over the interpretation of the electron microscopy images provided in the complaint. The existence, composition, and precise location of the "buffer layer" and "nitride-based semiconductor layer" on the specific surfaces required by the claim will depend on expert analysis of this visual evidence.

U.S. Patent No. 7,489,068 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a transparent substrate;	The light-emitting filament of the Accused Product is alleged to include a transparent substrate. (Compl. Ex. 10, p. 209).	¶38	col. 2:5-7
a light emitting stack having a first diffusing surface above the transparent substrate;	The filament allegedly has a light emitting stack with a "diffusing surface" positioned over the substrate. The complaint provides an SEM image purporting to show this textured surface. (Compl. Ex. 10, p. 210).	¶38	col. 2:7-8
and a transparent adhesive layer between the transparent substrate and the first diffusing surface, wherein an index of refraction of the light emitting stack is different from that of the transparent adhesive layer.	The complaint alleges the presence of a transparent adhesive layer between the substrate and the diffusing surface, and asserts that the required difference in refractive index exists. (Compl. Ex. 10, p. 210-211).	¶38	col. 2:8-12

Identified Points of Contention:

Scope Questions: A central issue will likely be the construction of "diffusing surface." The patent describes this as a surface, such as a rough surface with micro-protrusions, that enhances light extraction (’068 Patent, col. 2:26-32). The question for the court will be whether the surface texture of the accused device, as shown in the SEM image (Compl. Ex. 10, p. 210), meets the functional and/or structural requirements of this term.
Technical Questions: The allegation that the refractive indices of the light emitting stack and the adhesive layer are different is a technical fact that will require evidentiary support, such as material analysis and optical testing, beyond the visual evidence provided in the complaint.

V. Key Claim Terms for Construction

From U.S. Patent No. 7,355,208:

The Term: "projection portions and recess portions"
Context and Importance: This phrase defines the fundamental substrate structure required by the asserted claim. Infringement depends entirely on whether the microscopic topography of the accused LED substrate meets this definition. Practitioners may focus on this term because the patent links it to a specific manufacturing process (etching) intended to guide crystal growth.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not specify how the portions are formed, only that they exist. This may support an argument that any substrate with a textured surface of high and low points meets the plain and ordinary meaning of the term.
- Evidence for a Narrower Interpretation: The specification repeatedly describes forming these portions via etching to create a "ridged shape" (’208 Patent, col. 2:25-30). Figures such as FIG. 2 and FIG. 9 depict distinct, sharply-defined features, which may support a narrower construction limited to intentionally patterned, geometric structures designed for epitaxial lateral overgrowth.

From U.S. Patent No. 7,489,068:

The Term: "diffusing surface"
Context and Importance: This is the core inventive concept of the ’068 Patent. The infringement case hinges on whether the interface on the accused device's light emitting stack functions as a "diffusing surface" to enhance light extraction.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional. An argument may be made that any surface that is not perfectly smooth and scatters light, thereby altering its path to overcome total internal reflection, qualifies as a "diffusing surface."
- Evidence for a Narrower Interpretation: The specification provides specific examples, stating the "diffusing surface is a rough surface" which "comprises a plurality of micro protrusions" shaped as a "semi-sphere, pyramid, pyramid polygon, and combinations thereof" (’068 Patent, col. 2:26-32). This language could support a construction requiring a specific type of engineered surface texture rather than incidental roughness from manufacturing.

VI. Other Allegations

Indirect Infringement

The complaint makes formulaic allegations of induced and contributory infringement for all eight patents-in-suit. It alleges that Luxrite encourages and provides instructions to its customers, resellers, and end users on how to use the accused products in an infringing manner (e.g., Compl. ¶33, ¶39, ¶45). No specific instructional materials, such as user manuals or marketing documents, are cited in the complaint to support these allegations.

Willful Infringement

Willfulness is alleged for all asserted patents. The allegations are based on knowledge allegedly obtained "at least as of the filing of this complaint and/or has been willfully blind" (e.g., Compl. ¶33). The complaint also makes a more specific allegation that "Luxrite has had knowledge of Epistar’s patent portfolio at least as of April 20, 2017," pre-dating the lawsuit by approximately six months (Compl. ¶30).

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

A core issue will be one of structural scope at two different scales: the case juxtaposes infringement theories targeting the microscopic, semiconductor-level features of the LED chips (e.g., the '208 patent's "projection portions") against theories targeting the macroscopic, final-product assembly (e.g., the '321 patent's "inwardly inclined" filament). The court will need to conduct parallel analyses, first determining if the fundamental building blocks infringe, and second, if their final arrangement in the bulb infringes separate patents.
A central evidentiary question will be the interpretation of technical imagery: the complaint relies heavily on electron microscopy photographs to support its infringement allegations for patents covering semiconductor structures (e.g., '208, '604, '068 patents). The case will likely turn on a "battle of the experts" to interpret these images and determine if the depicted structures possess the specific characteristics and compositions required by the asserted claims.
A key legal question will be the sufficiency of the willfulness pleading: the complaint's assertion of pre-suit knowledge from a specific date (April 20, 2017) raises the stakes for potential damages. A likely early focal point of the litigation will be whether the factual basis for this alleged pre-suit knowledge is pleaded with enough specificity to survive a motion to dismiss under the heightened standards established by the Supreme Court.