DCT
6:22-cv-06197
CreeLED Inc v. Star Headlight Lantern Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CreeLED, Inc. (Delaware)
- Defendant: Star Headlight & Lantern Co., Inc. (New York)
- Plaintiff’s Counsel: Harter Secrest & Emery LLP; Womble Bond Dickinson (US) LLP
- Case Identification: 6:22-cv-06197, W.D.N.Y., 05/02/2022
- Venue Allegations: Venue is alleged to be proper in the Western District of New York because the Defendant is a New York corporation that resides in the district, has a regular and established place of business in the district, and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant's LED lighting products, which incorporate certain allegedly infringing LED components, infringe three utility patents and one design patent related to LED package structure, efficiency, and ornamental design.
- Technical Context: The technology concerns the physical packaging of light-emitting diodes (LEDs), focusing on methods to improve light extraction efficiency, thermal management, and emission profiles for use in commercial and industrial lighting.
- Key Procedural History: The complaint alleges that Plaintiff sent a letter to Defendant on September 11, 2020, providing notice of its patents and its belief that Defendant was sourcing infringing components; this event forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-21 | ’510 Patent Priority Date |
| 2012-06-11 | ’396 and ’780 Patents Priority Date |
| 2012-09-02 | ’258 Patent Priority Date |
| 2014-11-11 | ’510 Patent Issue Date |
| 2014-11-25 | ’258 Patent Issue Date |
| 2015-06-02 | ’396 Patent Issue Date |
| 2018-01-09 | ’780 Patent Issue Date |
| 2020-09-11 | Plaintiff sent notice letter to Defendant |
| 2022-05-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,048,396 - "LED package with encapsulant having planar surfaces," issued June 2, 2015
The Invention Explained
- Problem Addressed: Conventional LED packages often use large, hemispherical lenses to minimize the amount of light trapped inside the package by a phenomenon called total internal reflection (TIR), which can make the packages bulky and less than ideal for certain applications (’396 Patent, col. 2:30-44).
- The Patented Solution: The invention proposes an LED package with one or more planar (flat) surfaces on its encapsulant. This design intentionally uses TIR to reflect light back toward a "blanket" wavelength-conversion material layer on the LED and submount. This "recycled" light is then scattered or converted to a different color and re-emitted, with a greater chance of escaping the package. This allows for more compact and efficient package designs with wider emission profiles (’396 Patent, Abstract; col. 5:31-50).
- Technical Importance: This approach provided a method for creating smaller, more versatile LED packages that could achieve wider, more uniform light distribution, challenging the conventional design principle that TIR should always be minimized (’396 Patent, col. 6:43-54).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶17).
- Essential elements of Claim 1:
- A solid state light source on a submount;
- A wavelength conversion material layer covering the solid state light source and the top surface of the submount;
- An encapsulant over the conversion material layer, with the encapsulant having one or more planar surfaces;
- Wherein the planar surfaces cause total internal reflection (TIR) of at least some light from the light source.
U.S. Patent No. 8,884,510 - "Semiconductor light emitting devices with densely packed phosphor layer at light emitting surface," issued November 11, 2014
The Invention Explained
- Problem Addressed: In high-power LEDs, phosphor particles, which convert blue light to other colors (e.g., yellow to make white light), generate heat. When these particles are distributed throughout a thermally insulating encapsulant, the heat becomes trapped, reducing the phosphor's efficiency and the overall performance of the LED (’510 Patent, col. 2:50-68).
- The Patented Solution: The invention describes arranging the phosphor particles into a "densely packed layer" located at the light-emitting surface of the LED chip. This close proximity to the chip, which is typically connected to a heat sink, improves heat transfer away from the phosphors, maintaining their efficiency even at high power levels (’510 Patent, Abstract; col. 3:25-34).
- Technical Importance: This technology addressed a key thermal bottleneck in phosphor-converted LEDs, enabling the development of brighter and more efficient solid-state lighting devices that are less susceptible to performance degradation from self-heating (’510 Patent, col. 8:1-5).
Key Claims at a Glance
- The complaint asserts independent claim 17 (Compl. ¶17).
- Essential elements of Claim 17:
- A semiconductor light emitting element having a light emitting surface;
- An element in adjacent, spaced-apart relationship with the light emitting surface;
- A coating of phosphor-containing material on the element, where the material comprises at least two quantities of different phosphor particles arranged in a densely packed layer within the coating.
Multi-Patent Capsule: U.S. Patent No. 9,865,780
- Patent Identification: U.S. Patent No. 9,865,780, "LED package with encapsulant having planar surfaces," issued January 9, 2018 (’780 Patent, Compl. ¶13).
- Technology Synopsis: Related to the ’396 Patent, this invention describes an LED package with an encapsulant having a flat top surface. This geometry is designed to reflect a portion of the light emitted from the light source back toward a wavelength conversion layer on the submount, a process that improves light extraction efficiency and can produce a broader emission profile compared to conventional packages with hemispheric lenses (’780 Patent, Abstract).
- Asserted Claims: Independent claim 14 (Compl. ¶17, 39).
- Accused Features: The complaint alleges that the accused LEDs' lighting package—which includes a solid state light source, submount, wavelength conversion layer, and an encapsulant with a flat top—infringes this patent (Compl. ¶¶40-42).
Multi-Patent Capsule: U.S. Patent No. D718,258
- Patent Identification: U.S. Patent No. D718,258, "LED package," issued November 25, 2014 (’258 Patent, Compl. ¶14).
- Technology Synopsis: This is a design patent that protects the unique ornamental appearance of an LED package. The claimed design is defined by its overall shape, proportions, and the specific configuration of features visible on its exterior surfaces, particularly its bottom contacts.
- Asserted Claims: The claimed ornamental design for an LED package (Compl. ¶17, 48).
- Accused Features: The complaint alleges that the overall visual appearance of the accused LED components is substantially the same as the patented design in the eyes of an ordinary observer. It supports this with side-by-side visual comparisons of the bottom plan view, a front elevation view, and a bottom perspective view of the patented design and the accused product (Compl. ¶49; pp. 9-10).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Defendant’s "Star Six LED Microstar, Wide Spread, Black Die Cast Base, Flush Mount, 10-30V DLITE" product (the "Infringing DLITE Product") (Compl. ¶15). The direct infringement allegations, however, are aimed at the "knock-off light-emitting diode ('LED') components" contained within this and other finished products sold by the Defendant (Compl. ¶1).
Functionality and Market Context
- The accused DLITE product is marketed as an LED light for various applications, including emergency and police warning lights (Compl. ¶15). The complaint alleges that the key infringing functionality resides in the physical structure of the internal LED components. Specifically, these components are alleged to possess a package with planar surfaces that cause TIR, a densely packed phosphor layer for wavelength conversion, and an ornamental appearance that mirrors the asserted patents (Compl. ¶¶22-24, 31-33, 40-42, 49). The complaint includes a visual depicting an "Emitter package removed from DLITE product," which is the focus of the infringement allegations (Compl. ¶15, Figure 1). The complaint further provides detailed photographic comparisons of the accused LED package to the drawings of the ’258 design patent (Compl. ¶49, pp. 9-10).
IV. Analysis of Infringement Allegations
’396 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a solid state light source on a submount | The Infringing LEDs are comprised of a lighting package that includes a solid state light source on a submount. | ¶22 | col. 9:1-2 |
| a wavelength conversion material layer covering said solid state light source and the top surface of said submount | The lighting package includes a wavelength conversion material layer covering the solid state light source and the top surface of the submount. | ¶23 | col. 9:5-9 |
| an encapsulant over said conversion material layer, said encapsulant having one or more planar surfaces, wherein said planar surfaces cause total internal reflection (TIR) of at least some light from said light source | The lighting package includes an encapsulant over the conversion material layer which has one or more planar surfaces that cause total internal reflection of at least some light. | ¶24 | col. 5:31-50 |
- Identified Points of Contention:
- Scope Questions: The claim requires a "wavelength conversion material layer covering" both the light source and the submount surface. A question for the court may be whether the layer in the accused product provides the specific "blanket" coverage taught in the patent and required to enable the photon recycling mechanism.
- Technical Questions: The complaint asserts that the planar surfaces of the accused encapsulant "cause total internal reflection". The extent to which this alleged TIR actually occurs and functions to "recycle" light, as opposed to simply being an incidental feature of a flat-topped package, may be a central point of factual dispute.
’510 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a semiconductor light emitting element having a light emitting surface | The Infringing LEDs are comprised of a semiconductor light emitting device which includes a semiconductor light emitting element having a light emitting surface. | ¶31 | col. 8:15-18 |
| an element in adjacent, spaced-apart relationship with the light emitting surface | The device includes an element in adjacent, space-apart relationship with the light emitting surface. | ¶32 | col. 14:55-58 |
| a coating of phosphor-containing material on the element wherein the phosphor-containing material comprises at least two quantities of different phosphor particles, and wherein the phosphor particles are arranged in a densely packed layer within the coating | The device includes a coating of phosphor-containing material on the element, which comprises at least two quantities of different phosphor particles arranged in a densely packed layer. | ¶33 | col. 8:21-30 |
- Identified Points of Contention:
- Scope Questions: Claim 17 requires "an element in adjacent, spaced-apart relationship with the light emitting surface". The complaint's corresponding allegation is generic. Identifying the specific structure in the accused device that allegedly meets this limitation and determining whether it falls within the claim's scope will be a key issue.
- Technical Questions: A core technical question will be whether the phosphor particles in the accused LEDs are arranged in a "densely packed layer" as the term is understood in the patent. This may involve determining if the particles have a density greater than what would occur from simple mixing and if their arrangement provides the enhanced thermal transfer that is the object of the invention.
V. Key Claim Terms for Construction
Term from ’396 Patent, Claim 1: "wavelength conversion material layer covering said solid state light source and the top surface of said submount"
- Context and Importance: This "blanket" coverage is central to the patent’s theory of recycling light that undergoes TIR. Infringement may turn on how broadly the term "covering" is construed. Practitioners may focus on this term because Defendant could argue its conversion material only covers the LED chip itself, not the surrounding submount, thereby avoiding this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the degree or uniformity of the "covering."
- Evidence for a Narrower Interpretation: The specification repeatedly describes and illustrates the concept of "blanketing the LED and the surrounding surfaces" to prevent reflected light from being absorbed by the substrate, suggesting a more comprehensive coverage is intended (’396 Patent, col. 5:3-9; Fig. 17).
Term from ’510 Patent, Claim 17: "densely packed layer"
- Context and Importance: This term is the technological core of the ’510 Patent. Its construction will determine whether infringement requires a specific particle density and structure achieved through a deliberate process, or if any sufficiently concentrated phosphor layer meets the limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim does not recite a specific numerical density or a particular method of formation, which may support a construction based on the plain and ordinary meaning of the words.
- Evidence for a Narrower Interpretation: The specification defines "densely packed" as having a particle density "greater than that which would occur naturally" and describes specific processes to achieve this, such as using centrifugal force or solvents to settle the particles, implying a structure that is the result of a non-standard manufacturing step (’510 Patent, col. 7:26-34; col. 3:25-42).
VI. Other Allegations
- Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) by alleging Defendant makes and sells products containing the infringing components. It does not plead specific facts to support separate counts for induced or contributory infringement.
- Willful Infringement: The complaint alleges willful infringement for all four asserted patents. This allegation is based on Defendant's purported continuation of infringing activities after receiving a notice letter from Plaintiff on or about September 11, 2020, which allegedly identified the patents and Plaintiff's belief of infringement (Compl. ¶¶18, 26, 35, 44, 51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the utility patents will be one of structural and functional correspondence: does the physical construction of the accused LED components—specifically the nature of the phosphor layer and the encapsulant's geometry—perform the specific efficiency-enhancing functions of creating a "densely packed layer" for thermal management (’510 patent) and intentionally "recycling" light via TIR (’396 and ’780 patents), as described and claimed?
- For the design patent (’258 patent), the key question will be one of visual identity: would an ordinary observer, giving the degree of attention a purchaser of such components normally gives, find the overall ornamental appearance of the accused LED package to be substantially the same as the claimed design, a question highlighted by the complaint's side-by-side visual comparisons?
- A key procedural and damages question will be one of willfulness: the court will examine the factual record surrounding the September 2020 notice letter to determine if Defendant's conduct after receiving notice was sufficiently egregious to be considered willful, which could potentially expose it to enhanced damages.