DCT

6:22-cv-00420

LedComm LLC v. Walgreen Co

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:22-cv-00420, W.D. Tex., 06/21/2022
  • Venue Allegations: Venue is based on Defendant operating physical retail store locations within the Western District of Texas, including a specific address in Waco, Texas.
  • Core Dispute: Plaintiff alleges that a range of Defendant's commercial LED lighting products infringes five U.S. patents relating to the structural design and manufacture of LED components.
  • Technical Context: The patents address foundational aspects of LED package design, focusing on solutions to improve device reliability, thermal management, and light conversion efficiency.
  • Key Procedural History: The operative complaint is an Amended Complaint, filed after the initial action. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving 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
2022-06-21 Amended 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 identifies that in conventional light-emitting devices, the resin used to encapsulate the device components adheres poorly to the device's reflector. Heat generated during mounting or operation can cause the reflector to detach from the resin, which may in turn destroy the wire bonds or create spaces for water to enter, causing the device to malfunction (Compl. ¶17; ’606 Patent, col. 1:24-39).
  • The Patented Solution: The invention proposes forming the face of the reflector into a rough surface. This technique is intended to increase the adherence between the reflector and the resin, making it "hardly detached from the resin" even when subjected to heat. This structural improvement helps prevent the associated failure modes and ensures more reliable device operation (’606 Patent, Abstract; col. 1:57-2:5).
  • Technical Importance: The invention addressed a key reliability and durability challenge in early LED packages, where thermal stress and cycling were common causes of mechanical failure (Compl. ¶17).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶47).
  • The essential elements of claim 1 are:
    • a substrate;
    • a light emitting element on the substrate;
    • a reflector on the substrate for reflecting a light beam outgoing from the light emitting element; and
    • a resin disposed between the light emitting element and the reflector on the substrate,
    • 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 presents claim 1 as a "non-limiting example," reserving the right to assert other claims (Compl. ¶47).

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 describes that white LEDs of the era, which combined a blue LED with various phosphors, suffered from low luminance due to "low excitation efficiency or a low wavelength conversion efficiency" (Compl. ¶23; ’522 Patent, col. 1:48-54). While using shorter wavelength (e.g., blue-violet) emitters could improve phosphor excitation, the base materials used for the LED package often had poor light reflectance at these shorter wavelengths, which would again reduce the device's overall luminance (’522 Patent, col. 1:56-2:3).
  • The Patented Solution: The invention discloses an LED device structure that includes a phosphor layer formed directly on the reflection surface within the device's recess. When light from the LED chip hits this phosphor layer on the reflection surface, the wavelength conversion occurs at the surface itself. This configuration allows the emitted light to be "more effectively converted, enhancing reflection efficiency and luminance" (Compl. ¶24; ’522 Patent, Abstract; col. 2:22-27).
  • Technical Importance: This design provided a method to improve the luminous efficiency of phosphor-converted LEDs, a critical factor in the development of brighter and more commercially viable solid-state lighting (Compl. ¶23-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶60).
  • The essential elements of claim 1 are:
    • a base having a recess with the upper surface opened, the inner wall surface of the recess constituting a reflection surface;
    • a LED chip disposed on the inner bottom of the recess;
    • a resin filled in the recess, the resin including phosphors which absorb a part of light emitted from the LED chip to convert the wavelength thereof and emit light; and
    • a phosphor layer formed on the reflection surface, the phosphor layer including the phosphors, 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 presents claim 1 as a "non-limiting example," thereby reserving the right to assert other claims (Compl. ¶60).

Multi-Patent Capsule: U.S. Patent No. 7,012,277

  • Patent Identification: U.S. Patent No. 7,012,277, "Semiconductor Light Emitting Device," issued March 14, 2006 (Compl. ¶25).
  • Technology Synopsis: The patent addresses deficiencies in traditional LEDs related to light emitting efficiency, reliability, and lifetime, which it links to the electrical current the LED chip must handle (Compl. ¶29). The proposed solution is an LED device configuration that includes a metal body located under the region of the first lead frame (where the LED chip is mounted) and also under a portion of the second lead frame to help mitigate the negative effects of the current (’277 Patent, Abstract; Compl. ¶30).
  • Asserted Claims: The complaint asserts independent claim 1 as an example (Compl. ¶73).
  • Accused Features: The complaint alleges that the accused Globe A19 100W Bulb and Globe Smart A19 60W Bulb contain the claimed combination of an LED chip on a first lead frame, a second lead frame, a resin portion, and a metal body located under specific regions of both lead frames (Compl. ¶73).

Multi-Patent Capsule: U.S. Patent No. 7,161,190

  • Patent Identification: U.S. Patent No. 7,161,190, "Semiconductor Light-Emitting Device and Method of Manufacturing the Same," issued January 9, 2007 (Compl. ¶31).
  • Technology Synopsis: The patent recognizes that high-intensity LEDs require superior heat dissipation to prevent temperature rises that decrease optical output (Compl. ¶36). The invention provides a structure including a heat-radiating member that is bonded to the back face of the primary lead frame (which holds the light-emitting element) with an electrically-conductive layer, creating a more direct path for heat to be transferred away from the element (’190 Patent, Abstract; Compl. ¶37).
  • Asserted Claims: The complaint asserts independent claim 1 as an example (Compl. ¶86).
  • Accused Features: The accused Globe A19 60W and 100W Bulbs are alleged to contain a light-emitting element on a first lead frame fixed by a resin portion, with a heat-radiating member bonded to the back of that lead frame via an electrically-conductive layer (Compl. ¶86).

Multi-Patent Capsule: U.S. Patent No. 7,301,176

  • Patent Identification: U.S. Patent No. 7,301,176, "Semiconductor Light Emitting Device and Fabrication Method Thereof," issued November 27, 2007 (Compl. ¶38).
  • Technology Synopsis: The patent addresses the problem that simply shrinking the components of an LED device can lead to performance issues, such as compromised light output directivity or reduced lead frame strength (Compl. ¶43). The disclosed solution is a configuration where a light transmitting resin forms a holding portion for the lead frames, and a separate light shielding resin covers the bottom and side surfaces of that holding portion, enabling a smaller device size while maintaining structural integrity and adjusting light output (’176 Patent, Abstract; Compl. ¶44).
  • Asserted Claims: The complaint asserts independent claim 1 as an example (Compl. ¶99).
  • Accused Features: The accused Globe Smart A19 60W Bulb and Walgreens Complete Home LED Worklight are alleged to embody the claimed structure, including a light transmitting resin holding the lead frames and a light shielding resin with higher reflectance covering the bottom and sides of the holding portion (Compl. ¶99).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are a range of commercial lighting products, including Walgreens-branded items such as the "Walgreens Complete Home LED Worklight" and "Walgreens Complete Home LED Booklight," as well as certain "Globe Electric Products" such as the "Globe 40W A19 3000k Bulb," "Globe 60W A19 Bulb," "Globe 100W A19 Bulb," and "Globe Smart A19 60W Bulb" (Compl. ¶2). The complaint notes this list is exemplary of "other substantially similar products" (Compl. ¶2).

Functionality and Market Context

The accused products are consumer-grade LED lights sold by Defendant through its retail stores, including in the judicial district where the suit was filed (Compl. ¶2, ¶11). The infringement allegations focus on the internal physical construction of the LED packages within these products, rather than their external function as light bulbs or worklights. The complaint alleges that the accused products incorporate proprietary technologies owned by the Plaintiff (Compl. ¶2). An image from the product packaging for an accused Globe light bulb is included in the complaint (Compl. p. 11).

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 products are alleged to comprise a substrate, as shown in annotated cross-sectional views. ¶47(b) col. 6:46-52
a light emitting element on the substrate Each accused product allegedly comprises a light emitting element situated on the substrate. ¶47(c) col. 6:46-52
a reflector on the substrate for reflecting a light beam outgoing from the light emitting element A reflector is allegedly present on the substrate, with the complaint providing a visual of the purported reflector after other layers were removed. ¶47(d) col. 6:46-52
a resin disposed between the light emitting element and the reflector on the substrate The accused products are alleged to have a resin positioned between the light emitting element and the reflector. ¶47(e) col. 6:50-55
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 that a face of the reflector is formed into a rough surface, supported by a close-up image of the reflector surface. ¶47(f) col. 1:57-61

’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 bulbs are alleged to have a base with an open recess, where the inner wall acts as a reflection surface. An annotated cross-sectional view shows this alleged structure. ¶60(b) col. 2:13-16
a LED chip disposed on the inner bottom of the recess An LED chip is allegedly located on the inner bottom of the recess in the accused products. ¶60(c) col. 2:16-17
a resin filled in the recess, the resin including phosphors which absorb a part of light emitted from the LED chip to convert the wavelength thereof and emit light The recess is allegedly filled with a resin containing phosphors for wavelength conversion. ¶60(d) col. 2:17-20
a phosphor layer formed on the reflection surface, the phosphor layer including the phosphors, 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 accused bulbs allegedly have a phosphor layer on the reflection surface that itself comprises a "plurality of phosphor layers." A cross-sectional view of an LED from an accused Globe bulb allegedly identifies a first and second phosphor layer (Compl. p. 31). ¶60(e) col. 8:12-17

Identified Points of Contention

  • Scope Questions: For the ’606 Patent, a central issue may be the definition of "rough surface". The patent specification provides a quantitative range for roughness ("1 μm or more and 20 μm or less") which is not recited in the claim itself (’606 Patent, col. 2:7-9). This raises the question of whether the claim scope should be limited to that specific range, which would require quantitative evidence beyond the qualitative images provided in the complaint.
  • Technical Questions: For the ’522 Patent, the allegation of a "plurality of phosphor layers" will be a key factual dispute. The complaint's visual evidence purports to show two distinct layers (Compl. p. 31). The court will need to determine if discovery confirms the existence of physically and functionally distinct layers, as opposed to a single, non-homogenous layer that may exhibit stratification as a byproduct of its manufacturing process.

V. Key Claim Terms for Construction

’606 Patent, Claim 1

  • The Term: "rough surface"
  • Context and Importance: This term captures the point of novelty for the invention. The infringement analysis for claim 1 depends entirely on whether the accused devices possess a "rough surface" as understood in the context of the patent. Practitioners may focus on this term because its construction will determine the type of evidence (qualitative vs. quantitative) needed to prove infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain language of claim 1 does not quantify the term, suggesting any surface that is intentionally non-smooth to improve adhesion could be covered. The summary of the invention describes the effect functionally: "so that adherence between the reflector and the resin through the rough surface of the reflector becomes relatively larger" (’606 Patent, col. 1:57-61).
    • Evidence for a Narrower Interpretation: The detailed description provides a specific, quantitative definition: "the rough surface of the reflector has an arithmetic mean roughness ranging of 1 μm or more and 20 μm or less" (’606 Patent, col. 2:7-9). A defendant may argue this disclosure limits the scope of the claim term.

’522 Patent, Claim 1

  • The Term: "a plurality of phosphor layers"
  • Context and Importance: This limitation is critical for infringement, as it requires proof of more than one distinct layer. The viability of the infringement claim for the ’522 Patent hinges on whether the structure in the accused products meets this requirement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff may argue that the term covers any structure with functionally different phosphor materials arranged in a layered fashion, even without perfectly discrete physical boundaries. The specification describes forming layers sequentially via methods like vacuum deposition or ink-jet application, which could support a process-oriented definition (’522 Patent, col. 4:58-62).
    • Evidence for a Narrower Interpretation: A defendant may argue that the term requires physically separate and distinct layers. The patent's drawings depict clearly demarcated layers (e.g., layers 6a, 6b, and 6c in Fig. 3), which could be cited to support a narrower construction requiring clear physical separation (’522 Patent, Fig. 3).

VI. Other Allegations

  • Indirect Infringement: For each patent, the complaint alleges induced infringement, stating that Defendant encourages infringement by promoting, advertising, and providing instructions for the accused products (e.g., Compl. ¶49-50). It also alleges contributory infringement, asserting that the accused products are not staple articles of commerce and are especially made or adapted for use in an infringing manner (e.g., Compl. ¶52).
  • Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful, based on knowledge of the patents acquired "at least as early as the filing and/or service of the Complaint" (e.g., Compl. ¶51, ¶53). The complaint also makes a pre-suit allegation that Defendant was "willfully blind" to the existence of the patents, though it does not plead specific facts, such as a prior notice letter, to support this assertion (e.g., Compl. ¶51).

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

  • A core issue will be one of definitional scope and proof: For the ’606 patent, can the term "rough surface" be proven based on qualitative visual evidence, or will its construction be limited by the quantitative range in the specification, requiring more technical measurement and expert testimony?
  • A second central issue will be one of physical structure: For the ’522 patent and its requirement of a "plurality of phosphor layers," the case will turn on an evidentiary question: does detailed analysis of the accused LEDs reveal distinct, functionally different layers as claimed, or a single, blended phosphor composition that does not meet the claim's requirement?
  • Finally, a key question across several of the asserted patents (e.g., ’277, ’190, ’176) will be one of architectural mapping: Will discovery and reverse engineering demonstrate that the complex, multi-component structures for thermal management and light control within the accused products align with the specific architectures recited in the patent claims, or do they achieve similar results through fundamentally different designs?