DCT

2:24-cv-00861

BX LED LLC v. ams OSRAM AG

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: BX LED LLC (Texas)
- Defendant: ams-OSRAM AG (Austria)
- Plaintiff’s Counsel: PLATT RICHMOND PLLC
Case Identification: 2:24-cv-00861, E.D. Tex., 10/25/2024
Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district at an office in Plano, Texas, and has committed acts of infringement within the district.
Core Dispute: Plaintiff alleges that Defendant’s LED lighting products, primarily for automotive use, infringe four patents related to foundational LED technologies, including chip geometry, thermal management, spotlight optics, and phosphor-based color conversion.
Technical Context: The technology concerns methods for improving the efficiency, brightness, and thermal stability of high-power Light Emitting Diodes (LEDs), a critical field for the widespread adoption of solid-state lighting.
Key Procedural History: The complaint alleges that Defendant has had actual knowledge of the patents-in-suit since at least September 13, 2022, following receipt of a notice letter from Plaintiff, a fact which underpins the allegations of willful infringement.

Case Timeline

Date	Event
2003-05-13	U.S. Patent No. 6,869,812 Priority Date
2005-03-22	U.S. Patent No. 6,869,812 Issue Date
2007-03-05	U.S. Patent No. 7,883,226 Priority Date
2008-06-30	U.S. Patent No. 7,901,109 Priority Date
2010-06-11	U.S. Patent No. 8,888,318 Priority Date
2011-02-08	U.S. Patent No. 7,883,226 Issue Date
2011-03-08	U.S. Patent No. 7,901,109 Issue Date
2013-10-29	U.S. Patent No. 8,888,318 Issue Date
2022-09-13	Defendant allegedly received Plaintiff's notice letter
2024-10-25	Complaint Filing Date

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

U.S. Patent No. 6,869,812 - “High power AllnGaN based multichip light emitting diode”

Issued: March 22, 2005

The Invention Explained

Problem Addressed: The patent’s background section states that prior art high-power LEDs suffered from poor efficiency and insufficient illumination, particularly as their physical size increased for general lighting applications (’812 Patent, col. 1:24-31). Larger device sizes led to lower light extraction efficiency, as generated light would become trapped, bounce internally, and be absorbed before it could escape (’812 Patent, col. 2:61-3:6).
The Patented Solution: The invention proposes an LED chip with an elongated geometry, defined by a high aspect ratio between its sides, formed on a substantially transparent substrate (’812 Patent, Abstract). This configuration is designed to shorten the average distance light must travel to escape from the sides of the chip, thereby increasing light output efficiency and brightness, while also enhancing heat dissipation (’812 Patent, col. 8:62-9:3).
Technical Importance: This design principle offered a way to improve the performance of high-power LEDs, a key step in making solid-state technology a viable competitor to traditional incandescent and fluorescent lighting sources (’812 Patent, col. 1:46-53).

Key Claims at a Glance

The complaint asserts independent claim 1 (Compl. ¶42).
Claim 1 requires:
- A light emitting diode chip comprising:
- a substantially transparent substrate;
- an active region formed upon the substrate; and
- wherein an aspect ratio of the active area is greater than approximately 1.5 to 1.
The complaint reserves the right to assert additional claims (Compl. ¶42).

U.S. Patent No. 7,901,109 - “Heat sink apparatus for solid state lights”

Issued: March 8, 2011

The Invention Explained

Problem Addressed: The patent identifies that the power, and therefore brightness, of solid-state lights like LEDs is often limited by their inability to effectively dissipate the heat they generate (’109 Patent, col. 1:11-13).
The Patented Solution: The patent discloses a heat sink apparatus designed to be affixed to a solid-state light (’109 Patent, col. 2:1-3). The apparatus comprises an elongated portion with a plurality of fins extending from it, which increases the available surface area for convective heat transfer and allows the light to be operated at higher power levels for increased brightness and efficiency (’109 Patent, col. 1:27-34; Fig. 1A).
Technical Importance: The invention provided a dedicated thermal management solution that could be paired with existing solid-state lights to overcome thermal limitations, enabling them to become brighter and more efficient (’109 Patent, col. 1:18-20).

Key Claims at a Glance

The complaint asserts independent claim 10 (Compl. ¶57).
Claim 10 requires:
- A solid state light assembly, comprising:
- a solid state light; and
- a heat sink integrally affixed to the solid state light, the heat sink comprising at least one fin for dissipating heat generated by the solid state light.
The complaint reserves the right to assert additional claims (Compl. ¶57).

U.S. Patent No. 8,888,318 - “LED spotlight”

Issued: October 29, 2013 (Compl. ¶30)
Technology Synopsis: The patent addresses the problem of non-uniform illuminance and the difficulty of creating a compact form factor in LED spotlights (’318 Patent, col. 1:34-54). The proposed solution is a spotlight with a dish-shaped reflector where the LEDs are configured to emit light in a generally radial direction toward the reflector, rather than forward, which is claimed to enable a compact design with a narrow, uniform emission angle (’318 Patent, col. 2:16-32).
Asserted Claims: Independent claim 1 is asserted (Compl. ¶72).
Accused Features: The Osram LEDriving Round MX180-CB and Lightbar FX250-CB products are accused of infringing, specifically through their use of a dish-shaped reflector and LEDs configured to emit light at an angle to the spotlight's main emission axis (Compl. ¶71, ¶74, ¶76).

U.S. Patent No. 7,883,226 - “LED signal lamp”

Issued: February 8, 2011 (Compl. ¶35)
Technology Synopsis: The patent seeks to solve problems in LED signal lamps like thermal instability and color degradation when an LED fails (’226 Patent, col. 2:2-13). The invention uses an LED excitation source (e.g., blue/UV LEDs) combined with a separate phosphor material to generate the final light color. This approach is asserted to improve thermal stability and color uniformity, and the LEDs are grouped to effectively operate as a single point source (’226 Patent, Abstract; col. 3:6-15).
Asserted Claims: Independent claim 1 is asserted (Compl. ¶89).
Accused Features: The Osram LEDriving Lightbar FX250-CB is accused of infringing based on its alleged combination of a housing, an LED excitation source, a phosphor material for color conversion, a transparent cover, and a grouping of LEDs that operate as a point source (Compl. ¶88, ¶90).

III. The Accused Instrumentality

Product Identification

The complaint identifies several accused product lines, including the Osram LEDriving Round MX180-CB, Lightbar FX250-CB, SL C5W 6419 lamp, SL W5W White lamp, SL 921W White lamp, and the Osram Duris S 8 LED component, among other similar products (Compl. ¶2).

Functionality and Market Context

The accused instrumentalities are commercial solid-state lighting products, with a focus on automotive applications such as auxiliary light bars and interior replacement lamps (Compl. ¶2, ¶41, ¶56). The complaint provides images of the products, such as the packaging for the Osram LEDriving SL W5W White lamp, an automotive interior lamp (Compl. p. 17). The complaint alleges these products are commercially significant, citing a corporate report indicating that over 15% of Defendant's gross revenue is derived from the United States (Compl. ¶10). The infringement allegations map specific products to specific patents; for example, the complaint uses photographs of a disassembled Osram LEDriving Lightbar FX250-CB to allege infringement of the '318 and '226 patents (Compl. p. 22-24, 28-30).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,869,812 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A light emitting diode chip comprising: a substantially transparent substrate;	The Osram LEDriving SL C5W 6419 lamp allegedly contains an LED chip built upon a substrate identified as transparent in an annotated micrograph.	¶43-44	col. 11:43-44
an active region formed upon the substrate; and	An active region is allegedly formed on the substrate, as identified in a separate annotated micrograph.	¶44	col. 11:45
wherein an aspect ratio of the active area is greater than approximately 1.5 to 1.	Plaintiff presents a micrograph of the alleged active region with pixel measurements (2761.37px by 1154.00px), calculating an aspect ratio of 2.393, which exceeds the claimed 1.5 to 1 ratio. The complaint includes a photograph showing the pixel measurements used for this calculation (Compl. p. 13).	¶44	col. 12:12-14

Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the construction of "approximately 1.5 to 1." The parties may contest the degree of variance permitted by the word "approximately."
- Technical Questions: The infringement allegation for the aspect ratio relies on pixel measurements from a photograph. The court may need to consider the reliability of this measurement technique and whether the area identified by the Plaintiff as the "active region" is technically correct according to the patent's teachings.

U.S. Patent No. 7,901,109 Infringement Allegations

Claim Element (from Independent Claim 10)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A solid state light assembly, comprising: a solid state light; and	The Osram LEDriving SL W5W White lamp is identified as a solid state light assembly containing a solid state light.	¶58	col. 3:33-34
a heat sink integrally affixed to the solid state light, the heat sink comprising at least one fin for dissipating heat generated by the solid state light.	The product allegedly includes a heat sink that is integrally affixed to the light source. The complaint provides a photograph showing the product's heatsink with a "Plurality of Fins" annotated (Compl. p. 19).	¶59	col. 3:35-38

Identified Points of Contention:
- Scope Questions: The construction of "integrally affixed" will be a central issue. The question for the court is whether this term requires a monolithic, single-piece construction, or if it can read on a permanently attached but separately manufactured component.
- Technical Questions: While the complaint's photos appear to show a single extruded aluminum component serving as the heat sink, the exact manufacturing process and the method of attachment between the LED board and the heat sink will be a key factual question for determining if the "integrally affixed" limitation is met.

V. Key Claim Terms for Construction

'812 Patent: "greater than approximately 1.5 to 1"

The Term: "greater than approximately 1.5 to 1"
Context and Importance: This quantitative limitation is the central feature of the asserted independent claim. The infringement case hinges on whether the accused LED chip’s dimensions satisfy this ratio. Practitioners may focus on this term because its inherent imprecision invites disputes over both its numerical boundary and the methodology used to measure it.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses the invention in general terms as an "elongated geometry" and a "high aspect ratio," suggesting the numerical value is illustrative of a broader principle rather than a rigid cutoff (’812 Patent, col. 8:62-64). The use of "approximately" explicitly introduces flexibility.
- Evidence for a Narrower Interpretation: A preferred embodiment described in the specification has dimensions of 250x1000 microns, a 4:1 ratio (’812 Patent, col. 5:51-54). A dependent claim (Claim 4) recites an aspect ratio of "approximately 4 to 1," which could be used to argue that "1.5 to 1" in claim 1 defines a lower bound that is distinct and not meant to be stretched significantly.

'109 Patent: "integrally affixed"

The Term: "integrally affixed"
Context and Importance: This term defines the physical relationship between the heat sink and the solid-state light. Its construction will determine whether the accused product's assembly, where the LED is mounted on a heat sink, constitutes infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary describes an embodiment as a "solid state light and a heat sink affixed to the solid state light," and the background discusses the goal of "affixing a separate heat sink" (’109 Patent, col. 1:27, col. 2:1-2). This language may support a construction that includes securely attaching two distinct components.
- Evidence for a Narrower Interpretation: The specification also discusses an alternative where the invention "integrates the solid state light source into the heat sink itself" (’109 Patent, col. 2:5-6). Furthermore, claim 1 of the patent (not asserted in the complaint) recites a "first end integrally formed with the solid state light." A party could argue that "integrally affixed" in asserted claim 10 should be read in light of this more restrictive language, implying a unitary or near-unitary construction.

VI. Other Allegations

Indirect Infringement: The complaint alleges inducement of infringement across all asserted patents, stating that Defendant’s promotional materials, product websites, and instructions encourage customers to use the accused products in an infringing manner (Compl. ¶47, ¶62, ¶79, ¶93). It also pleads contributory infringement, alleging the accused products are not staple articles of commerce and are specially made for use in an infringing way (Compl. ¶49, ¶64, ¶81, ¶95).
Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful. This allegation is primarily based on Defendant’s alleged actual knowledge of the patents-in-suit since receiving a notice letter on September 13, 2022 (Compl. ¶48, ¶63, ¶80, ¶94).

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

A core issue will be one of definitional scope: The outcomes for the '812 and '109 patents will heavily depend on the court's construction of the key terms "greater than approximately 1.5 to 1" and "integrally affixed," respectively. These terms sit at the intersection of quantitative measurement and qualitative description, making them prime candidates for claim construction disputes.
A second key question will be evidentiary proof: How will Plaintiff substantiate its technical allegations? For the '812 patent, the case may turn on the validity of proving a microscopic aspect ratio via photographic pixel measurements. For the other patents, the internal construction of the accused products will be critical, turning a legal dispute into a factual one resolvable through discovery and expert testimony.
Finally, a central strategic question will be the interplay of technologies: Plaintiff has asserted four patents covering distinct but related aspects of LED product design (chip structure, thermal management, spotlight optics, color conversion). The case will test whether these represent independent and cumulative infringement theories or if a single defensive strategy, such as an invalidity challenge based on comprehensive prior art, can neutralize multiple claims simultaneously.