DCT
3:24-cv-00099
SemiLED Innovations LLC v. Menard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SemiLED Innovations LLC (Texas)
- Defendant: Menard, Inc. (Wisconsin)
- Plaintiff’s Counsel: Direction IP Law; Key IP Law Group, PLLC
- Case Identification: 1:23-cv-16737, N.D. Ill., 12/13/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant operates numerous "Menards" retail stores in the district, has committed substantial acts of infringement in the district, and maintains regular and established places of business there.
- Core Dispute: Plaintiff alleges that Defendant’s "Patriot Lighting" brand of commercial LED lighting products infringes four U.S. patents related to the structural design, electrical configuration, and thermal management of LED packages and modules.
- Technical Context: The technology at issue concerns the physical construction of light-emitting diode (LED) packages, focusing on methods to create thinner designs, improve heat dissipation, and enhance electrical current spreading for better performance and longevity.
- Key Procedural History: The complaint does not reference any prior litigation between the parties, Inter Partes Review (IPR) proceedings involving the patents-in-suit, or prior licensing history.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-01 | ’454 Patent Priority Date |
| 2006-10-31 | ’454 Patent Issue Date |
| 2007-12-03 | ’196 and ’942 Patent Priority Date |
| 2010-01-07 | ’971 Patent Priority Date |
| 2012-11-13 | ’971 Patent Issue Date |
| 2015-02-24 | ’196 Patent Issue Date |
| 2016-12-27 | ’942 Patent Issue Date |
| 2023-12-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,963,196 - “Slim LED package”
- Patent Identification: U.S. Patent No. 8,963,196, titled “Slim LED package,” issued February 24, 2015.
The Invention Explained
- Problem Addressed: The patent’s background describes issues with prior art LED packages, which were often thick due to the structure of the housing supporting the lead frame. Additionally, the encapsulation material covering the LED chip was prone to a "yellowing phenomenon" caused by heat, which degraded performance and shortened the device's lifetime (Compl. ¶19; ’196 Patent, col. 1:47-57).
- The Patented Solution: The invention proposes a design where an LED chip is mounted within a "chip mounting recess" formed directly on a lead frame. This allows the thickness of the LED chip to "partially overlap" the thickness of the lead frame, enabling a slimmer overall package without the need for a separate housing component. This design is also described as improving thermal dissipation (Compl. ¶¶20-21; ’196 Patent, col. 2:62-66).
- Technical Importance: This approach aimed to facilitate the production of thinner, more thermally efficient LED packages, which was a key factor in enabling the integration of LEDs into more compact electronic devices and lighting fixtures (Compl. ¶21).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent Claims 2 and 8 (Compl. ¶¶46, 52-53).
- The essential elements of independent Claim 1 are:
- A light emitting diode (LED) package, comprising:
- a first lead frame and a second lead frame separated from each other;
- an LED chip disposed on the first lead frame and electrically connected to the first lead frame and the second lead frame;
- a wire connecting the LED chip to the second lead frame;
- wherein opposing sides of the first lead frame and the second lead frame face each other in a slanted state to the other sides of the lead frames.
U.S. Patent No. 9,530,942 - “Slim LED Package”
- Patent Identification: U.S. Patent No. 9,530,942, titled “Slim LED Package,” issued December 27, 2016.
The Invention Explained
- Problem Addressed: Like the ’196 Patent, this patent addresses the problems of excessive thickness and heat-induced "yellowing" of the encapsulation material in prior art LED packages, which limited performance and lifespan (Compl. ¶27; ’942 Patent, col. 1:57-62).
- The Patented Solution: The invention describes an LED package with separated lead frames where a resin covers portions of the frames. A key feature is the inclusion of a "first groove" on the lower surface of the first lead frame and a "second groove" on the lower surface of the second lead frame, with the grooves having equal depths. This structure is intended to improve thermal dissipation and bonding force with the encapsulation material (Compl. ¶¶28-29; ’942 Patent, col. 4:35-41, 4:56-62).
- Technical Importance: The claimed design elements, particularly the grooves, suggest a focus on improving the structural integrity and manufacturing consistency of slim LED packages while maintaining thermal efficiency (Compl. ¶29).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent Claim 3 (Compl. ¶¶59, 68).
- The essential elements of independent Claim 1 are:
- A light emitting diode (LED) package, comprising:
- a first lead frame and a second lead frame separated from each other;
- an LED Chip disposed on the first lead frame and electrically connected with the second lead frame;
- a resin covering at least portions of surfaces of the first and second lead frames;
- wherein at least one lead frame comprises a first edge facing the other lead frame and a second side opposite the first side;
- the first lead frame comprising a first groove on a lower surface thereof, and the second lead frame comprising a second groove on the lower surface thereof;
- each groove is open only on the lower surfaces of the respective lead frames;
- a depth of the first groove is equal to a depth of the second groove.
U.S. Patent No. 8,309,971 - “Light emitting diode having electrode pads”
- Patent Identification: U.S. Patent No. 8,309,971, titled “Light emitting diode having electrode pads,” issued November 13, 2012 (Compl. ¶30).
- Technology Synopsis: The patent addresses the technical problem of "current crowding" in larger LEDs, where electrical current is not distributed evenly across the semiconductor layers, leading to reduced efficiency (Compl. ¶35; ’971 Patent, col. 1:46-52). The patented solution provides specific electrode pad and extension structures that are insulated from certain semiconductor layers to enhance current spreading over a wider area of the LED, thereby improving luminous efficacy (Compl. ¶36; ’971 Patent, Abstract).
- Asserted Claims: Claim 1 is asserted (Compl. ¶74).
- Accused Features: The complaint accuses the Patriot Lighting Dusk-to-Dawn Outdoor Security Area Light of infringing by allegedly incorporating the claimed arrangement of semiconductor layers, electrode pads, an insulation layer, and at least one "upper extension" to manage current flow (Compl. ¶¶75-82).
U.S. Patent No. 7,128,454 - “Light emitting diode module for automobile headlights and automobile headlight having the same”
- Patent Identification: U.S. Patent No. 7,128,454, titled “Light emitting diode module for automobile headlights and automobile headlight having the same,” issued October 31, 2006 (Compl. ¶37).
- Technology Synopsis: The patent recognized that as LEDs began to replace halogen lamps in applications like automotive headlights, new challenges arose concerning heat and moisture, as LEDs generate more heat and require greater protection from the elements (Compl. ¶42; ’454 Patent, col. 1:43-47). The invention describes an integrated LED module that comprises both a "water proof structure" and a "heat radiating structure" to prevent moisture permeation while efficiently dissipating heat to the outside environment (Compl. ¶42; ’454 Patent, col. 1:59-61).
- Asserted Claims: Claims 1 and 15 are asserted (Compl. ¶88).
- Accused Features: The complaint accuses the Patriot Lighting Recessed Light of infringing by allegedly being an LED module with a lighting unit, a module body made of a high thermal conductivity material with a through-hole, a connector for supplying external voltage, and a transparent member that seals the assembly (Compl. ¶¶89-93).
III. The Accused Instrumentality
Product Identification
The complaint names a broad range of LED lighting products sold under the "Patriot Lighting" brand, including under-cabinet strip lights, solar motion sensor lights, landscape lights, track heads, wall packs, vanity lights, and recessed lights (Compl. ¶2).
Functionality and Market Context
The accused products are commercial lighting fixtures sold for residential and commercial use through Defendant's retail and online stores (Compl. ¶¶2, 10). The complaint alleges that the LED packages within these products incorporate the patented technologies. To support this, it provides numerous annotated photographs of disassembled products, purporting to show the internal components such as separated lead frames, mounted LED chips, bonding wires, encapsulation resin, and specific geometric features like slanted edges and grooves (Compl. ¶¶47-53, 60-68). An annotated photograph in Figure 4B-6, for example, identifies a "Modular Body" and a "Through Hole" in the accused Patriot Lighting Recessed Light (Compl. Figure 4B-6, p. 51).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,963,196 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first lead frame and a second lead frame separated from each other; | The accused products allegedly contain a first and second lead frame with a physical separation between them, as shown in annotated photographs. Figure 1B-1 shows this separation in a Patriot Lighting Cabinet Light (Compl. Figure 1B-1, p. 11). | ¶48 | col. 3:61-64 |
| an LED chip disposed on the first lead frame and electrically connected to the first lead frame and the second lead frame; | The products are alleged to have an LED chip mounted on the first lead frame and electrically connected to both frames. Figure 1B-5 shows the alleged electrical connection to the first lead frame (Compl. Figure 1B-5, p. 13). | ¶49 | col. 3:64-66 |
| a wire connecting the LED chip to the second lead frame; | The products allegedly use a wire to connect the LED chip to the second lead frame. Figure 1B-13 shows a wire making this connection (Compl. Figure 1B-13, p. 17). | ¶50 | col. 3:66-67 |
| wherein opposing sides of the first lead frame and the second lead frame face each other in a slanted state to the other sides of the lead frames. | The internal opposing sides of the lead frames are alleged to be slanted relative to the other sides of the frames. Figure 1B-17 purports to show these slanted "Opposing Sides" (Compl. Figure 1B-17, p. 19). | ¶51 | col. 6:15-24 |
- Identified Points of Contention:
- Scope Questions: The interpretation of the phrase "in a slanted state to the other sides of the lead frames" will be a central issue. The dispute may focus on whether this requires a specific angle or a particular geometric relationship between the slanted surface and the outer edges of the lead frame that the accused products may not possess.
- Technical Questions: A key factual question will be whether the annotated photographs provided in the complaint (e.g., Compl. Figures 1B-17 to 1B-24) accurately depict the accused product's structure and whether the identified angled surfaces satisfy the "slanted state" limitation as properly construed.
U.S. Patent No. 9,530,942 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first lead frame and a second lead frame separated from each other; | The accused products are alleged to comprise two physically separated lead frames. | ¶61 | col. 4:10-11 |
| an LED Chip disposed on the first lead frame and electrically connected with the second lead frame; | An LED chip is allegedly mounted on the first lead frame and electrically connected to the second. Figure 2B-5 purports to show this connection (Compl. Figure 2B-5, p. 29). | ¶62 | col. 4:14-17 |
| a resin covering at least portions of surfaces of the first and second lead frames... | The accused products allegedly include a resin material that covers parts of the lead frames. Figure 2B-9 identifies this resin (Compl. Figure 2B-9, p. 31). | ¶63 | col. 4:18-21 |
| the first lead frame comprising a first groove disposed on a lower surface thereof, and the second lead frame comprises a second groove disposed on the lower surface thereof; | The accused products allegedly have grooves on the bottom surfaces of both lead frames. Figure 2B-21 identifies these grooves (Compl. Figure 2B-21, p. 35). | ¶65 | col. 4:56-62 |
| each of the first and second grooves is open only on the lower surfaces of the first and second lead frames, respectively; | The grooves are alleged to be open only on the bottom surfaces of the lead frames. Figure 2B-25 identifies the "Lower Surface of First Lead Frame" and the groove's location (Compl. Figure 2B-25, p. 37). | ¶66 | col. 4:56-62 |
| a depth of the first groove is equal to a depth of the second groove. | The complaint alleges that the first and second grooves in the accused products have equal depths, supported by cross-section photographs (e.g., Compl. Figure 2B-29, p. 39). | ¶67 | col. 4:56-62; Fig. 2 |
- Identified Points of Contention:
- Scope Questions: The requirement that the groove depths be "equal" will likely be a significant point of contention. The case may turn on whether this term requires strict mathematical identity or allows for manufacturing tolerances and can be satisfied by a showing of "substantially equal."
- Technical Questions: The complaint asserts the grooves have equal depths based on visual inspection of photographs. A primary technical question will be what factual evidence exists to prove this equality and whether precise measurements of the accused products confirm the allegation.
V. Key Claim Terms for Construction
For the ’196 Patent:
- The Term: "in a slanted state to the other sides of the lead frames"
- Context and Importance: This term defines the core distinguishing geometry of the claimed lead frames. The construction of "slanted state" and the relational phrase "to the other sides" will be critical in determining whether the accused products, which feature angled edges, infringe Claim 1.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the purpose of the "slant parts" as dispersing force and more rigidly holding the encapsulation material, which may support a functional interpretation where any angle that achieves this purpose qualifies as a "slanted state" (’196 Patent, col. 6:30-40).
- Evidence for a Narrower Interpretation: Figure 6 of the patent depicts a specific, uniform angle for the "slant parts" (125, 145). A party could argue the term is limited to this disclosed embodiment or that the phrase "to the other sides" requires a specific geometric relationship to the outer frame edges not present in the accused products.
For the ’942 Patent:
- The Term: "a depth of the first groove is equal to a depth of the second groove"
- Context and Importance: This limitation imposes a precise dimensional relationship between two separate features. Infringement of Claim 1 hinges on whether the accused products meet this standard of equality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the purpose of the grooves is to "increase a bonding force" with the encapsulation material (’942 Patent, col. 4:35-41). An argument could be made that this function does not require mathematical equality, suggesting "equal" could be construed as "substantially equal" to account for manufacturing tolerances.
- Evidence for a Narrower Interpretation: The claim uses the specific word "equal," not "substantially equal." The patent drawings, such as Figure 2, depict grooves (122, 142) that appear to be of identical depth, which may support a narrower, more literal interpretation requiring dimensional identity.
VI. Other Allegations
- Indirect Infringement: The complaint includes general allegations of direct and/or indirect infringement for each asserted patent (Compl. ¶¶45, 58, 73, 87). However, it does not plead specific facts to support the knowledge and intent elements required for induced or contributory infringement, such as references to user manuals or marketing materials that instruct on an infringing use.
- Willful Infringement: The complaint alleges that Defendant's infringement is "exceptional" and requests attorneys' fees under 35 U.S.C. § 285 for each count (Compl. ¶¶54, 69, 83, 95). This allegation serves as the basis for a claim of willful infringement, likely predicated on the notice provided by the filing of the complaint itself.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: For the ’196 patent, can the term "slanted state to the other sides of the lead frames," which describes a specific spatial relationship, be construed broadly enough to read on the angled lead frame edges depicted in the complaint’s photographic evidence of the accused products?
- A key evidentiary question will be one of dimensional precision: For the ’942 patent, does the evidence support the allegation that the depths of two separate grooves on the accused products' lead frames are "equal," as required by the claim, or will the dispute center on whether substantial equality is sufficient for a finding of infringement?
- A central strategic question concerns the breadth of the assertion: The complaint asserts four patents covering different aspects of LED technology against a wide array of lighting products. The case will likely test whether Plaintiff can successfully map the distinct technical requirements of each asserted patent's claims onto the specific, and potentially varied, designs of each accused product line.