DCT
6:22-cv-00420
LedComm LLC v. Walgreen Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LedComm LLC (Texas)
- Defendant: Walgreens Boots Alliance, Inc. (Delaware)
- Plaintiff’s Counsel: The Mort Law Firm, PLLC
- Case Identification: 6:22-cv-00420, W.D. Tex., 04/26/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant Walgreens Boots Alliance, Inc. operates physical retail store locations within the Western District of Texas, including a specific location in Waco, Texas, where the Accused Products are offered for sale.
- Core Dispute: Plaintiff alleges that Defendant’s retail sales of various Walgreens-branded and Globe Electric-branded LED lighting products infringe five U.S. patents related to the structural design and manufacturing of LED packages.
- Technical Context: The patents address fundamental challenges in LED package design, such as improving structural integrity, light conversion efficiency, heat dissipation, and manufacturing reliability, which are critical for the performance and longevity of mass-market consumer lighting products.
- 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 |
|---|---|
| 2002-03-20 | '606 Patent Priority Date |
| 2002-10-07 | '522 Patent Priority Date |
| 2003-01-06 | '277 Patent Priority Date |
| 2004-04-27 | '176 Patent Priority Date |
| 2004-08-02 | '190 Patent Priority Date |
| 2004-10-12 | '606 Patent Issue Date |
| 2006-01-03 | '522 Patent Issue Date |
| 2006-03-14 | '277 Patent Issue Date |
| 2007-01-09 | '190 Patent Issue Date |
| 2007-11-27 | '176 Patent Issue Date |
| 2022-04-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,803,606 - "Light Emitting Device and Manufacturing Method Thereof," issued October 12, 2004.
The Invention Explained
- Problem Addressed: The patent recognizes that in conventional LED devices, the resin used to seal the light-emitting element adheres poorly to the smooth surface of the device's reflector, which can lead to detachment due to heat during manufacturing or operation (Compl. ¶17; ’606 Patent, col. 1:24-31). This detachment can break the delicate bonding wires or allow moisture to enter, causing device failure (’606 Patent, col. 1:31-39).
- The Patented Solution: The invention solves this by texturing the face of the reflector to create a "rough surface." This increased surface area and mechanical interlocking create a stronger bond between the reflector and the resin, making detachment "hardly" possible even under thermal stress and thereby improving the device's reliability (Compl. ¶17; ’606 Patent, col. 1:53-2:5).
- Technical Importance: This innovation addressed a critical reliability issue in early-generation LED packages, improving their durability and suitability for long-life applications (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('606 Patent, col. 6:42-59; Compl. ¶47).
- Claim 1 requires:
- A substrate.
- A light emitting element on the substrate.
- A reflector on the substrate for reflecting light from the element.
- A resin disposed between the element and the reflector.
- Wherein a face of the reflector is formed into a rough surface.
U.S. Patent No. 6,982,522 - "LED Device Including Phosphor Layers on the Reflecting Surface," issued January 3, 2006.
The Invention Explained
- Problem Addressed: The patent identifies low luminance in white LEDs, particularly those using more efficient short-wavelength (e.g., blue-violet) LED chips to excite phosphors (Compl. ¶23). A key issue is that the base materials used in the device often have reduced light reflectance at these shorter wavelengths, leading to light loss and lower overall brightness (’522 Patent, col. 1:56-2:3).
- The Patented Solution: The invention places a dedicated phosphor layer directly onto the reflective inner wall of the device's recessed base. Light from the LED chip that strikes this surface is wavelength-converted by the phosphor layer itself before being reflected, which "can be more effectively converted, enhancing reflection efficiency and luminance" (Compl. ¶24; ’522 Patent, col. 2:13-27).
- Technical Importance: This design improved the efficiency of converting short-wavelength light into visible white light, a crucial step in developing brighter and more commercially viable white LEDs for general lighting (Compl. ¶24).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('522 Patent, col. 13:1-19; Compl. ¶60).
- Claim 1 requires:
- A base with a recess, where the inner wall is a reflection surface.
- An LED chip on the inner bottom of the recess.
- A resin filling the recess, which includes phosphors.
- A phosphor layer formed on the reflection surface.
- Wherein the phosphor layer comprises a plurality of phosphor layers, each excited to emit a different wavelength of light.
U.S. Patent No. 7,012,277 - "Semiconductor Light Emitting Device," issued March 14, 2006.
- Technology Synopsis: The patent addresses poor efficiency, reliability, and lifetime in LEDs, which it attributes in part to the effects of electrical current on the LED chip (Compl. ¶29). The disclosed solution is a specific device configuration where a "metal body is located under a region of a first lead frame on which the...LED chip is mounted" to help mitigate these negative effects (Compl. ¶30; ’277 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶73).
- Accused Features: The complaint alleges that the Globe A19 100W and Globe Smart A19 60W Bulbs contain the claimed structure, including an LED chip on a first lead frame, a second lead frame, a surrounding resin, and a metal body located under the lead frames (Compl. ¶73(1(f))).
U.S. Patent No. 7,161,190 - "Semiconductor Light-Emitting Device and Method of Manufacturing the Same," issued January 9, 2007.
- Technology Synopsis: The patent recognizes the challenge of dissipating heat from high-intensity LEDs to prevent a drop in optical output (Compl. ¶36). The invention provides a structure including "a heat-radiating member bonded to a back face of the first lead frame with an electrically-conductive layer containing metal interposed therebetween," which allows heat from the light-emitting element to be more effectively transferred away from the device (Compl. ¶37; ’190 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶86).
- Accused Features: The complaint accuses the Globe A19 60W and 100W Bulbs of infringing by having a heat-radiating member bonded to the lead frame via an electrically-conductive layer, as shown in annotated cross-sectional images (Compl. ¶86(1(e))).
U.S. Patent No. 7,301,176 - "Semiconductor Light Emitting Device and Fabrication Method Thereof," issued November 27, 2007.
- Technology Synopsis: The patent addresses performance issues in reduced-size LEDs, including compromised light directivity and lead frame strength (Compl. ¶43). The solution is a device structure where a "light transmitting resin" forms a holding portion for the lead frames, and a separate "light shielding resin" with higher reflectance is formed to cover the bottom and side surfaces of that holding portion to help direct light output (Compl. ¶44; ’176 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶99).
- Accused Features: The Globe Smart A19 60W Bulb and Walgreens Complete Home LED Worklight are alleged to embody this structure, possessing both a light-transmitting resin and a distinct, more reflective light-shielding resin in the claimed configuration (Compl. ¶99(1(f)), (1(g))).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are various consumer LED lighting products, including the "Walgreens Complete Home LED Worklight," "Walgreens Complete Home LED Booklight," and several "Globe Electric" branded A19-style light bulbs (Compl. ¶2).
Functionality and Market Context
These are commercially available products sold for general purpose and task lighting. The complaint focuses on the internal construction of the LED packages within these products, providing detailed photographic evidence from product teardowns. For example, a cross-sectional view of the Globe 40W A19 bulb's internal phosphor LED is provided with the substrate annotated. (Compl. ¶47, p. 15). The complaint alleges these products are marketed and distributed throughout the United States, including in the judicial district where the suit was filed (Compl. ¶¶2, 10).
IV. Analysis of Infringement Allegations
'606 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate | The accused Globe and Walgreens products are alleged to comprise a substrate, as identified in an annotated cross-sectional photograph. | ¶47(1(b)) | col. 6:45-46 |
| a light emitting element on the substrate | The accused products are alleged to comprise a light emitting element on the substrate, identified with a pointer in a photograph. | ¶47(1(c)) | col. 6:47-48 |
| a reflector on the substrate for reflecting a light beam outgoing from the light emitting element | A reflector is alleged to be present on the substrate, shown in a top-down photograph with the phosphor layer removed. | ¶47(1(d)) | col. 6:50-53 |
| a resin disposed between the light emitting element and the reflector on the substrate | A resin is alleged to be disposed between the element and reflector, identified in a photograph with the LED element removed. | ¶47(1(e)) | col. 6:54-56 |
| wherein a face of the reflector on that reflects a light beam outgoing from the light emitting element is formed into a rough surface | The complaint alleges the reflector face is a rough surface, supported by a magnified photograph of the reflector surface. | ¶47(1(f)) | col. 6:57-59 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the definition of "rough surface." The patent specification discloses a preferred "arithmetic mean roughness ranging of 1 um or more and 20 um or less" (’606 Patent, col. 2:7-9), but this numerical range is absent from the claim itself. The dispute will likely focus on whether the term should be limited to this disclosed range during claim construction or given a broader, more qualitative meaning.
- Technical Questions: What evidence does the complaint provide that the accused reflector surface is "rough" as required by the claim? The infringement allegation rests on visual inspection of magnified photographs (Compl. ¶47, p. 18-19). The defense may argue that such visual evidence is insufficient and that quantitative surface measurements are required to meet the limitation as taught in the patent.
'522 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base having a recess with the upper surface opened, the inner wall surface of the recess constituting a reflection surface | The accused Globe bulbs are alleged to have a base with a recess whose inner wall serves as a reflection surface, as shown in annotated cross-sectional views. | ¶60(1(b)) | col. 13:2-4 |
| a LED chip disposed on the inner bottom of the recess | The accused bulbs allegedly contain an LED chip on the inner bottom of the recess, as identified in a cross-sectional photograph. | ¶60(1(c)) | col. 13:5-6 |
| a resin filled in the recess, the resin including phosphors which absorb a part of light...to convert the wavelength thereof and emit light | The accused bulbs are alleged to contain a resin with phosphors filling the recess, as identified in a close-up photograph. | ¶60(1(d)) | col. 13:7-11 |
| a phosphor layer formed on the reflection surface, the phosphor layer including the phosphors | The accused bulbs are alleged to have a phosphor layer formed on the reflection surface, as identified in an annotated cross-sectional view. | ¶60(1(e)) | col. 13:12-14 |
| wherein the phosphor layer comprises a plurality of phosphor layers each of which is excited to emit a different wavelength of light from each other | The complaint alleges the phosphor layer comprises a plurality of layers, providing a photograph that demarcates a "First Phosphor Layer" and a "Second Phosphor Layer" within the coating. | ¶60(1(e)) | col. 13:15-19 |
- Identified Points of Contention:
- Technical Questions: Does the single-colored coating on the reflection surface of the accused products (Compl. ¶60, p. 30) in fact constitute a "plurality of phosphor layers"? The complaint provides an annotated image attempting to distinguish two layers (Compl. ¶60, p. 31), but they appear visually indistinct. This raises a key factual question of whether the layer is physically or chemically stratified into multiple layers or is a single, homogenous mixture of different phosphors.
- Scope Questions: What is the scope of "plurality of phosphor layers"? The patent describes forming layers sequentially ("in the order of the third layer 6c, the second layer 6b and the first layer 6a" at col. 11:58-62), which may support a narrower interpretation requiring distinct, separately applied layers. The defense may argue that a single, mixed-phosphor coating does not meet this limitation.
V. Key Claim Terms for Construction
Term: "rough surface" ('606 Patent, Claim 1)
- Context and Importance: This term is the central inventive concept of the '606 Patent. Whether the accused products infringe will depend heavily on if their reflector surfaces are deemed "rough" under the court's construction. Practitioners may focus on this term because the patent's specification provides a quantitative definition that is absent from the claim itself, creating a classic claim construction dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is unqualified, suggesting the term should be given its ordinary meaning of a surface that is not smooth, without a specific numerical constraint.
- Evidence for a Narrower Interpretation: The specification explicitly states that when roughness is below 1 µm, adherence is insufficient, and when it is above 20 µm, luminance is insufficient (’606 Patent, col. 2:9-17). The abstract and summary also center on the "rough surface" concept. This may support an argument that the disclosed numerical range is not merely a preferred embodiment but is essential to the invention's function and should be read into the claim.
Term: "a plurality of phosphor layers" ('522 Patent, Claim 1)
- Context and Importance: This limitation is critical to the infringement analysis for the '522 Patent, as the plaintiff's evidence shows what appears to be a single, uniform coating. The viability of the infringement claim hinges on whether that coating can be considered a "plurality of layers."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "comprises" is open-ended. A party could argue that a single coating containing a stratified mix of different phosphor types that functionally operate as separate layers meets the "plurality" requirement, even if not structurally distinct.
- Evidence for a Narrower Interpretation: The detailed description explains a method of forming the layers sequentially, starting with the outermost layer and working inward ("in the order of the third layer 6c, the second layer 6b and the first layer 6a") (’522 Patent, col. 11:58-62). This description of a sequential manufacturing process may strongly support an interpretation that a "plurality" requires structurally distinct and separately formed layers.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all five patents-in-suit. Inducement is primarily based on allegations that the defendant promotes, advertises, and provides instructions for the accused products via its website, thereby encouraging customers to use the products in their intended, infringing manner (Compl. ¶¶49-50, 62-63, 75-76, 88-89, 101-102).
- Willful Infringement: Willfulness is alleged for all asserted patents. The primary basis for knowledge is the filing and service of the complaint itself, establishing a claim for post-suit willfulness (Compl. ¶¶51, 64, 77, 90, 103). The complaint also makes conclusory allegations of pre-suit willful blindness without providing specific supporting facts.
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of physical structure: For the '522 patent, does the phosphor coating in the accused products consist of a "plurality of phosphor layers"? The resolution of this question may depend on sophisticated materials analysis to determine if the visually uniform coating is, in fact, composed of chemically or structurally distinct strata, or if it is a single homogenous mixture.
- A core issue will be one of definitional scope: For the '606 patent, what is the proper legal construction of the term "rough surface"? The case may turn on whether the court adopts a broad, qualitative meaning or imports the specific numerical roughness range (1-20 µm) from the patent's specification into the claim.
- A central strategic question will be one of portfolio assertion: Plaintiff has asserted five patents covering distinct, and in some cases potentially alternative, solutions to LED design challenges. The litigation will likely explore whether any single accused product truly embodies this combination of disparate inventive features, or if the infringement case is stronger for some patents and weaker for others, turning the case into a series of smaller, independent infringement analyses.