DCT
2:16-cv-00246
Nichia Corp v. Vizio Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nichia Corporation (Japan)
- Defendant: VIZIO, Inc. (California/Delaware)
- Plaintiff’s Counsel: Ireland Carroll & Kelley; Rothwell, Figg, Ernst & Manbeck, P.C.
- Case Identification: 2:16-cv-00246, E.D. Tex., 03/21/2016
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant’s business activities in the Eastern District of Texas, including sales through major retailers like Walmart and Target, and the operation of a third-party distribution center in Grand View, Texas.
- Core Dispute: Plaintiff alleges that LED components within Defendant’s LED-backlit televisions, which are imported into the U.S., are either made by a process that infringes, or themselves infringe, a patent related to LED device manufacturing and structure.
- Technical Context: The patent relates to methods for manufacturing light-emitting diode (LED) packages, a foundational component for backlighting in modern flat-screen televisions and other electronic displays.
- Key Procedural History: The complaint heavily relies on a prior lawsuit, Nichia Corp. v. Everlight Elecs. Co., in which the same court found the same patent claims asserted here to be valid and infringed by LED products from manufacturer Everlight. Plaintiff alleges the accused VIZIO products incorporate these same infringing Everlight LEDs. Subsequent to the filing of this complaint, an Inter Partes Review (IPR) was initiated against the patent-in-suit. The IPR resulted in the cancellation of asserted claims 17, 19, and 21, while confirming the patentability of asserted claims 1 and 7. This development significantly narrows the scope of the present dispute to the surviving method claims.
Case Timeline
| Date | Event |
|---|---|
| 2008-09-03 | ’250 Patent Priority Date |
| 2013-09-10 | ’250 Patent Issue Date |
| 2015-05-11 | Everlight Litigation Trial Start Date |
| 2016-01-25 | Court issues Memorandum and Opinion in Everlight Litigation |
| 2016-03-21 | Complaint Filing Date |
| 2021-03-01 | Inter Partes Review Certificate issued, cancelling claims 17 & 21 |
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," issued September 10, 2013
The Invention Explained
- Problem Addressed: The patent's background section describes challenges in manufacturing LEDs. Conventional methods using thermoplastic resins resulted in poor adhesion between the plastic package and the metal lead frame, while methods using more adhesive thermosetting resins were not well-suited for mass production of complex shapes and could be inefficient and costly (’250 Patent, col. 1:49-63; col. 2:9-13).
- The Patented Solution: The invention provides a manufacturing method that aims to combine the benefits of thermosetting resins with efficient, high-volume production. It involves using a "lead frame" (a metal grid) with pre-formed "notches." A thermosetting resin is transfer-molded onto this frame, filling the notches. The entire assembly is then cut along these notches to singulate the individual LED packages (’250 Patent, Abstract). This technique is designed to create a strong bond between the resin and the metal leads while enabling many devices to be made at once from a single frame, as illustrated in the manufacturing process of Figure 4 (’250 Patent, col. 11:5-13, Fig. 4).
- Technical Importance: This method sought to provide a simple, low-cost process for rapidly manufacturing large quantities of LED devices with high adhesion between the lead frame and the resin body, addressing a key bottleneck in producing reliable LEDs for the growing display and lighting markets (’250 Patent, col. 2:49-53).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method claim) and 17 (a device claim), as well as dependent claims 7 and 21 (Compl. ¶¶ 30, 35). As noted, claims 17 and 21 were subsequently cancelled by an IPR.
- Independent Claim 1 (Method):
- providing a lead frame comprising at least one notch;
- plating the lead frame;
- after plating, providing an upper mold and a lower mold and transfer-molding a thermosetting resin to form a resin-molded body; and
- cutting the resin-molded body and plated lead frame along the notch to form a resin package, where an outer surface of the resin part and lead are planar, and the cut creates an unplated outer side surface on the lead.
- Independent Claim 17 (Device - Cancelled):
- a resin package comprising a resin part and at least one lead;
- an outer surface of the resin part and lead are planar at an outer surface of the package;
- a plating is disposed on an upper and lower surface of the lead;
- an outer side surface of the lead is unplated; and
- a portion of the resin part is disposed over a portion of the plating on the lead's upper surface.
III. The Accused Instrumentality
- Product Identification: The accused products are VIZIO’s LED-backlit televisions, with the "VIZIO D-Series 28” Class Full-Array LED TV D28h-C1" cited as a specific, non-limiting example (Compl. ¶¶ 1, 24). The infringement allegations are directed at the LED devices incorporated into the backlighting apparatus of these televisions (Compl. ¶1).
- Functionality and Market Context: The relevant functionality is that of the component LEDs which serve as the light source for the television's display backlight (Compl. ¶1). The complaint alleges that VIZIO does not manufacture these components but rather imports and sells televisions containing them, with the components being procured or manufactured by third parties (Compl. ¶13). The core of the allegation is that these component LEDs are the same as the "Everlight XI3030 series products" that were previously found to infringe the ’250 Patent (Compl. ¶24).
IV. Analysis of Infringement Allegations
The complaint alleges direct infringement of device claims under 35 U.S.C. § 271(a) and infringement via importation of products made by a patented process under 35 U.S.C. § 271(g) for method claims (Compl. ¶¶ 28-38).
’250 Patent Infringement Allegations (Claim 17 - Device, Cancelled)
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a resin package comprising a resin part and at least one lead | The accused LED devices are light emitting devices that include a resin package comprising a resin part and at least one lead. | ¶25 | col. 6:7-9 |
| an outer surface of the resin part and an outer surface of the at least one lead are planar at an outer surface of the resin package | The accused LED devices include an outer surface of the resin part and an outer surface of the at least one lead that are planar at an outer surface of the resin package. | ¶25 | col. 6:5-7 |
| a plating is disposed on an upper surface and a lower surface of the at least one lead | The accused LED devices include a plating disposed on an upper surface and a lower surface of the at least one lead. | ¶25 | col. 5:64-6:3 |
| an outer side surface of the at least one lead is unplated | The accused LED devices include an outer side surface of the at least one lead that is unplated, as a result of the manufacturing process. | ¶25, ¶26 | col. 25:54-56 |
| a portion of the resin part is disposed over a portion of the plating on the upper surface of the at least one lead | The accused LED devices include a portion of the resin part disposed over a portion of the plating on the upper surface of the at least one lead. | ¶25 | col. 25:65-26:1 |
’250 Patent Infringement Allegations (Claim 1 - Method)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a lead frame comprising at least one notch | The process used to make the accused LED devices includes the step of providing a lead frame comprising at least one notch. | ¶26 | col. 25:28-30 |
| plating the lead frame | The manufacturing method includes the step of plating the lead frame. | ¶26 | col. 25:31 |
| transfer-molding a thermosetting resin containing a light reflecting material... to form a resin-molded body | The process includes transfer-molding a thermosetting resin containing a light reflecting material to form a resin-molded body on the plated lead frame. | ¶26 | col. 25:36-45 |
| cutting the resin-molded body and the plated lead frame along the at least one notch... such that an outer surface of the resin part and an outer surface of the at least one lead are planar | The process includes cutting the body and frame along the notch to form a resin package where the resin and lead surfaces are planar. | ¶26 | col. 25:46-53 |
| wherein the plated lead frame is cut so as to form an unplated outer side surface on the lead | The cutting step is performed so that the plated lead frame is cut to form an unplated outer side surface on the lead. | ¶26 | col. 25:54-56 |
- Identified Points of Contention:
- Factual Identity: The complaint's primary assertion is that the LEDs in Vizio's TVs are identical to those previously adjudicated in the Everlight case (Compl. ¶24). A central question will be what evidence Plaintiff can produce to prove that the components are not merely similar, but are the same products made by the same infringing process.
- Proving the Method: For the surviving method claim (Claim 1), asserted under § 271(g), infringement hinges on the specific process used by Vizio's overseas, third-party manufacturers (Compl. ¶13). A key challenge for the Plaintiff will be to secure evidence of that foreign manufacturing process and demonstrate that it meets every step of the claimed method.
- Mootness of Device Claims: The IPR cancellation of claims 17 and 21 raises the critical question of whether Count I of the complaint, which is based entirely on these claims, is moot and must be dismissed.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The complaint identifies several terms construed by the Court in the prior Everlight litigation, which are likely to be central here (Compl. ¶20).
The Term: "notch"
Context and Importance: This term is a core element of method claim 1. Its definition dictates the type of feature the lead frame must possess. The complaint notes the term was previously construed as "an opening that penetrates the lead frame" (Compl. ¶20.iv). Practitioners may focus on this term because the physical nature of the "notch" is fundamental to the claimed manufacturing method that allegedly improves adhesion and enables singulation.
Intrinsic Evidence for Interpretation:
- Evidence for the Court's Interpretation: The specification describes cutting the lead frame "along the notch parts 21a" to separate the devices, which supports the idea that the notch is a penetrating feature intended for cutting (’250 Patent, col. 11:40-42). Figure 3, showing notches (21a) as complete cutouts through the lead frame (21), provides strong visual support for a "penetrating opening."
- Evidence for an Alternative Interpretation: An argument for a broader meaning (e.g., to include a groove or indentation that does not fully penetrate) would likely need to argue against the clear depiction in Figure 3 and the functional description of cutting along the notch.
The Term: "planar"
Context and Importance: This term appears in both method claim 1 and the cancelled device claim 17, defining the final structural relationship between the resin and the lead at the outer edge of the device. The complaint states the prior construction was "in a substantially same plane," clarifying that "perfectly flat" is not required (Compl. ¶20.vi). This construction is critical for determining if the cut surface of an accused device meets the claim limitation.
Intrinsic Evidence for Interpretation:
- Evidence for the Court's Interpretation: The patent repeatedly uses the phrase "formed in a substantially same plane in an outer side surface" when describing the invention, directly supporting the "substantially same plane" construction (’250 Patent, col. 3:1-3; Abstract).
- Evidence for a Narrower Interpretation: A party arguing for a stricter, "perfectly flat" interpretation would have to contend with the specification's explicit use of the qualifier "substantially," which suggests that some deviation was contemplated by the inventors.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement (induced or contributory infringement). Count I alleges direct infringement under § 271(a) and Count II alleges infringement based on importation under § 271(g) (Compl. ¶¶ 28, 34).
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, the prayer for relief requests a finding that the case is "exceptional" under 35 U.S.C. § 285, which could lead to an award of attorneys' fees (Compl. Prayer for Relief ¶E). The basis for this appears to be an unstated assertion that Vizio should have been aware of the infringement given the public nature of the Everlight litigation.
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of IPR: The primary legal issue is the effect of the IPR decision that cancelled device claims 17 and 21. With these claims invalidated, the case now appears to rest entirely on the method claims (1 and 7) asserted under 35 U.S.C. § 271(g).
- Evidentiary Link: A key factual question will be one of product and process identity: can Nichia produce discovery and evidence to definitively establish that the LED components found in Vizio’s televisions are the exact same Everlight products and, crucially, were made by the exact same manufacturing process that was adjudicated in the prior litigation?
- Proving Foreign Acts: As the case now centers on method claims asserted against an importer, the dispositive evidentiary challenge for Nichia will be proving the overseas process: can it obtain sufficient evidence from Vizio’s third-party foreign suppliers to prove that their manufacturing process practices every single step of the asserted method claims?