DCT

6:23-cv-00439

Everlight Electronics Co Ltd v. Walmart Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:23-cv-00439, W.D. Tex., 06/09/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant operating a "regular and established place of business" (a Walmart Superstore) within the judicial district and having transacted business and committed alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s sale of various LED light bulbs and related products infringes three patents related to the structure and manufacturing of LED components and devices.
  • Technical Context: The lawsuit concerns the field of light-emitting diode (LED) packaging, specifically the design of carrier leadframes used to manufacture and mount LED chips efficiently and reliably.
  • Key Procedural History: The complaint alleges that on June 14, 2022, the Court in a separate case, Everlight Electronics Co., Ltd. v. Amazon Inc., et al., issued a claim construction order construing terms in U.S. Patent No. 7,554,126, which is also asserted in this action. Plaintiff also alleges it provided Defendant with notice of infringement via letters to its intellectual property counsel on November 17, 2022, and December 22, 2022.

Case Timeline

Date Event
2004-09-27 ’126 Patent Priority Date
2009-06-30 ’126 Patent Issue Date
2014-05-23 ’733 and ’742 Patents Priority Date
2017-05-02 ’733 Patent Issue Date
2018-02-27 ’742 Patent Issue Date
2022-06-14 Claim Construction Order issued in related case concerning the ’126 Patent
Fall 2022 Alleged start of infringing sales of accused products
2022-11-17 Plaintiff allegedly sent first notice letter to Defendant
2022-12-22 Plaintiff allegedly sent second notice letter to Defendant
2023-01-02 Defendant allegedly responded it was investigating claims
2023-02-27 Defendant's supplier allegedly responded to Plaintiff
2023-06-09 Complaint Filing Date

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

U.S. Patent No. 9,640,733 - "Carrier, carrier leadframe, and light emitting device"

  • Issued: May 2, 2017

The Invention Explained

  • Problem Addressed: The patent addresses inefficiencies in traditional "dicing-type" LED manufacturing, where cutting the leadframe material creates plastic and metal dust that can contaminate the final product and degrade its reliability ('733 Patent, col. 1:41-52; Compl. ¶16). This process also prevents electrical testing until after the individual devices are separated, complicating quality control (Compl. ¶16; '733 Patent, col. 1:52-59).
  • The Patented Solution: The invention proposes a carrier leadframe where individual carriers are "separated in advance and mechanically engaged with the leadframe" ('733 Patent, col. 2:5-9; Compl. ¶17). This mechanical engagement allows for die bonding, wire bonding, and encapsulation on a stable frame, but because the carriers are already electrically isolated, they can be tested before being easily released from the frame. This facilitates a "quick release of material" after encapsulation, improving production speed and yield (Compl. ¶17).
  • Technical Importance: This design aims to improve manufacturing efficiency by enabling pre-encapsulation testing and reducing contamination from dicing, thereby increasing the production yield and reliability of LED devices ('733 Patent, col. 2:12-18).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶72).
  • The essential elements of independent claim 1 include:
    • A light emitting device comprising: a carrier; an LED chip within the carrier; and an encapsulant covering the chip.
    • The carrier comprises at least one electrode portion and a housing.
    • The housing has a housing cross section that at least partially covers the electrode portion.
    • Crucially, the "housing cross section and the electrode portion cross section are not level with one another."
    • The electrode portion has a "central area and two edge areas," which "protrude from the housing cross section."
    • The "central area protrudes from the two edge areas."
  • The complaint reserves the right to assert additional claims (Compl. ¶76).

U.S. Patent No. 9,905,742 - "Carrier, Carrier Leadframe, and Light Emitting Device"

  • Issued: February 27, 2018

The Invention Explained

  • Problem Addressed: As a divisional of the application leading to the ’733 Patent, the ’742 Patent addresses the same technical problems of dust creation and inefficient testing in conventional LED leadframe manufacturing ('742 Patent, col. 1:29-58; Compl. ¶20).
  • The Patented Solution: The invention provides a similar solution centered on a carrier that is "separated in advance and mechanically engaged with the leadframe" to allow for quick release and improved testing capabilities, thereby enhancing production speed and yield ('742 Patent, Abstract; Compl. ¶21).
  • Technical Importance: The technology provides a method to manufacture more reliable LED components at a higher speed by solving key problems associated with traditional dicing processes ('742 Patent, col. 2:5-18).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and claims 11, 18, and 20-23 (Compl. ¶48, ¶50, ¶52).
  • The essential elements of independent claim 1 include:
    • A light emitting device comprising at least one electrode portion and a resin housing.
    • The electrode portion comprises a "wing portion" that is "exposed outside the housing" and protrudes from it.
    • The wing portion comprises a "central area" and "at least one edge area" with specific relative dimensions and orientations.
    • The device includes an "electrode portion cross section" and a "housing cross section" that are "not level with" each other.
    • The housing cross section is located "in a vicinity of four corners of the resin housing."
  • The complaint reserves the right to supplement its asserted claims (Compl. ¶54).

Multi-Patent Capsule: U.S. Patent No. 7,554,126

  • Patent Identification: "Semiconductor Light-Emitting Element, Manufacturing Method and Mounting Method of the Same and Light-Emitting Device," issued June 30, 2009.
  • Technology Synopsis: The patent addresses the difficulty of using low-cost solder to mount large, high-power LED chips, as the small size of the conventional n-electrode is not suitable for such bonding methods ('126 Patent, col. 1:59-col. 2:40; Compl. ¶24). The invention describes a novel layered structure for an LED element that creates larger secondary n- and p-electrodes on top of an insulating layer, making the element compatible with more robust and lower-cost mounting techniques like soldering ('126 Patent, Abstract).
  • Asserted Claims: Claims 1, 2, 4, and 13 are asserted (Compl. ¶60, ¶62, ¶64).
  • Accused Features: The complaint accuses various Walmart products, including the "Great Value G25 60W EQ Amber Lightbulb," "Automotive headlight and filament products," and "UVC products" of infringing the ’126 Patent (Compl. ¶32, ¶41, ¶43).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a broad range of LED lighting products sold by Defendant, including numerous "Great Value" branded consumer light bulbs (e.g., A19, E26, BR30, G25), grow lights, motion sensor lamps, automotive headlights, and UVC products (Compl. ¶28, ¶31, ¶32, ¶39, ¶41, ¶43). Products from other manufacturers sold by Walmart, such as "GE Soft White LED Light Bulbs," are also accused (Compl. ¶39).

Functionality and Market Context

  • The accused products are commercially available LED devices for a variety of consumer and specialty applications. The complaint alleges these products are sold and offered for sale throughout the United States via Defendant's physical retail locations and online store, establishing their market presence (Compl. ¶10, ¶11). The complaint does not provide detailed technical breakdowns of the accused products' internal components, instead referencing forthcoming claim chart exhibits to map product features to patent claims (Compl. ¶39, ¶28, ¶33).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (e.g., Ex. 7, Ex. 8, Ex. 9, Ex. 10) that were not provided with the pleading. Therefore, the infringement allegations are summarized below in prose. No probative visual evidence provided in complaint.

  • ’733 Patent Infringement Allegations

    • The complaint alleges that the "'733 Accused Products," which include certain GE-branded LED light bulbs sold by Walmart, practice at least claim 1 of the ’733 Patent (Compl. ¶39, ¶72). The infringement theory is based on an unprovided claim chart (Ex. 7) that allegedly maps the structural limitations of claim 1 to the accused products (Compl. ¶39). The core of this allegation is that the physical leadframe and housing components within the accused bulbs contain the specific geometric and positional relationships required by the claim.
    • Identified Points of Contention:
      • Structural Questions: The infringement analysis will likely depend on detailed factual evidence from teardowns or imaging of the accused products. A key question is whether the products' internal leadframes possess the precise three-dimensional structures claimed, such as an "electrode portion cross section" and "housing cross section" that are "not level with one another," and a "central area" that "protrudes from the two edge areas" (Compl. ¶18).

  • ’742 Patent Infringement Allegations

    • The complaint alleges that various "Great Value" branded LED bulbs sold by Walmart infringe claims 1, 11, 18, and 20-23 of the ’742 Patent (Compl. ¶48, ¶50, ¶52). The allegations are supported by references to unprovided claim charts (Compl. ¶28, ¶33, Ex. 8). The theory posits that the electrode and housing structures within these bulbs embody the features recited in the asserted claims, such as an exposed "wing portion" with a specific geometry.
    • Identified Points of Contention:
      • Scope Questions: A central dispute may be whether the term "wing portion" as used in the patent can be fairly applied to the lead structure in the accused products.
      • Technical Questions: The claim requires that the "housing cross section is located in a vicinity of four corners of the resin housing" and is "not level with the electrode portion cross section" (Compl. ¶22). The factual determination of whether the accused products meet these specific spatial and geometric requirements will be a primary point of contention.

V. Key Claim Terms for Construction

  • For the ’733 Patent:

    • The Term: "protrudes from" (Claim 1)
    • Context and Importance: This term appears twice in claim 1 to define the required three-dimensional relationship between different areas of the electrode portion and the housing. Its construction is critical for determining if the physical topography of the accused device's leadframe meets the claim's geometric limitations. Practitioners may focus on this term because the infringement case for the ’733 patent rests on these specific structural relationships.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification uses the term without providing a special definition, which may support giving it a plain and ordinary meaning of simply extending beyond or being raised relative to another surface ('733 Patent, col. 6:50-55).
      • Evidence for a Narrower Interpretation: The figures, such as Figure 6 and Figure 12A, depict distinct, stepped structures. A party may argue that "protrudes" should be limited to such clearly defined, non-continuous height differences, rather than a mere gentle slope or curvature ('733 Patent, Figs. 6, 12A).

  • For the ’742 Patent:

    • The Term: "wing portion" (Claim 1)
    • Context and Importance: This term defines the primary structure of the electrode portion that is "exposed outside the housing." Whether the accused products' leads can be characterized as a "wing portion" is fundamental to the infringement allegation. Practitioners may focus on this term because it is a non-standard anatomical descriptor whose scope will be heavily debated.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the wing portion (112A) as being exposed outside the housing and extending along an edge, which could be argued to cover any laterally extending lead ('742 Patent, col. 7:2-6, Fig. 1).
      • Evidence for a Narrower Interpretation: The embodiments consistently depict a specific shape that is wider than a simple lead and often has a distinct central area and edge areas ('742 Patent, Figs. 6-11). A party could argue that "wing portion" requires this specific, more complex geometry and is not just a generic term for an electrode lead.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Defendant's infringement has been and continues to be willful for all asserted patents (Compl. ¶55, ¶67). The allegations are based on Defendant's alleged pre-suit knowledge of the patents and its infringement. This knowledge is supported by specific factual allegations that Plaintiff's counsel sent notice letters, including claim charts, to Defendant's "Lead-Counsel—Intellectual Property Litigation" on November 17, 2022, and December 22, 2022, but Defendant nevertheless continued its allegedly infringing sales (Compl. ¶27, ¶30, ¶55, ¶67).

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

  • A core issue will be one of structural correspondence: for the ’733 and ’742 patents, can the specific three-dimensional geometries claimed—such as "protruding" areas, non-level cross-sections, and "wing portions"—be mapped onto the physical leadframe structures found within the accused consumer light bulbs? The resolution will likely depend on expert testimony and detailed technical analysis of the products' internal construction.
  • A second key question will be the impact of prior claim construction: for the ’126 patent, how will the court’s existing claim construction order from the related Everlight v. Amazon case govern the infringement analysis in this dispute? The viability of the infringement allegations may hinge on whether the technology in Walmart's accused products falls within the scope of those previously construed terms.
  • Finally, a central question will be one of objective recklessness: did Defendant's continued sale of the accused products after receiving multiple, specific notice letters with claim charts from Plaintiff's counsel constitute willful infringement? The detailed pre-suit notice allegations raise a significant risk of enhanced damages for the Defendant if infringement is found.