Cao Lighting, Inc. v. Feit Electric Company, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CAO LIGHTING, INC.,
Plaintiff-Appellant
v.
FEIT ELECTRIC COMPANY, INC.,
Defendant-Appellee
______________________
2023-1906
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:20-cv-04926-AB-SP,
Judge André Birotte, Jr.
______________________
Decided: October 16, 2024
______________________
RONALD E. CAHILL, Barnes & Thornburg LLP, Boston,
MA, argued for plaintiff-appellant. Also represented by
HEATHER B. REPICKY; TODD VARE, Indianapolis, IN.
RYAN DYKAL, Boies Schiller Flexner LLP, Washington,
DC, argued for defendant-appellee. Also represented by
MARK SCHAFER; MAXWELL C. MCGRAW, Shook, Hardy &
Bacon, LLP, Kansas City, MO; AMELIA ELIZABETH MURRAY,
Chicago, IL.
______________________
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 2
Before DYK, STOLL, Circuit Judges, and MURPHY, District
Judge.1
Dyk, Circuit Judge.
CAO Lighting, Inc. (“CAO Lighting”), the owner of U.S.
Patent No. 6,465,961 (“the ’961 patent”), brought suit
against Feit Electric Company, Inc. (“Feit Electric”) for
infringement of claim 21 of the ’961 patent. The District
Court for the Central District of California granted
summary judgment of non-infringement, and CAO
Lighting appeals. Because the judgment of non-
infringement is based on an improper construction
requiring the recited “first reflective layer” to be an
epitaxial layer, and the district court also erred in
requiring the first reflective layer and the substrate to be
composed of different materials, we vacate the judgment
and remand for further proceedings consistent with this
opinion.
BACKGROUND
The ’961 patent concerns a semiconductor light source
that can illuminate a space and efficiently dissipate heat.
’961 patent, Abstract; id. at col. 1, ll. 46–58. The patent
explains that these light sources may use a variety of
semiconductors, such as a light emitting diode (“LED”)
chip, laser arrays, an array of chips, or a vertical-cavity
surface-emitting laser (“VCSEL”) chip. Id. at Abstract.
1 Honorable John F. Murphy, District Judge, United
States District Court for the Eastern District of
Pennsylvania, sitting by designation.
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 3
Relevant here, claim 21 depends from cancelled claim
8, which in turn depends from cancelled claim 7 of the ’961
patent.2
Claim 7 recites:
7. A device as recited in claim 1 wherein said chip
includes
a substrate on which epitaxial layers are
grown,
a buffer layer located on said substrate,
said buffer layer serving to mitigate
differences in material properties between
said substrate and other epitaxial layers,
a first cladding layer serving to confine
electron movement within the chip, said
first cladding layer being adjacent said
buffer layer,
an active layer, said active layer emitting
light when electrons jump to a valance
state,
a second cladding layer, said second
cladding layer positioned so that said
active layer lies between cladding layers,
and
2 The ’961 patent originally issued on October 15,
2002 with twenty claims. The original claims, including
claims 7 and 8, were later subject to inter partes and ex
parte reexamination proceedings. As a result of those
proceedings, the original claims were cancelled, and new
claims 21–103 were added.
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 4
a contact layer on which an electron may be
mounted for powering said chip.
’961 patent, col. 10, ll. 28–43 (emphasis added). Claim 8
recites:
8. A device as recited in claim 7 further comprising
a first and a second reflective layers, each of said
first and second reflective layers being located on
opposite sides of said active layer, said reflective
layers serving to reflect light emitted by said active
layer.
Id., col. 10, ll. 44–48 (emphasis added). Claim 21 recites:
21. The semiconductor light source as recited in
claim 8 wherein:
said at least one semiconductor chip is a
light emitting diode (LED) chip configured
to output light at greater than about 40
milliwatts, and
said LED chip is configured to emit
monochromatic visible light.
Id., Ex Parte Reexamination Certificate at col. 1, ll. 32–38.
During claim construction, the parties requested the
construction of the term “reflective layers” in claim 8. In
its September 1, 2021 Markman order, the district court
construed the term as “distinct layers of material that
reflect light emitted by said active layer.” The district court
explained that the reference to “distinct layers” in its
construction means the first reflective layer and second
reflective layer must be distinct. The parties do not dispute
this construction on appeal.
After claim construction and expert discovery, Feit
Electric moved for summary judgment of non-
infringement. CAO Lighting contended that Feit Electric’s
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 5
accused products have LED chips with the following basic
structure:
The parties appeared to agree that the upper reflective
layer in this schematic was a second reflective layer, but
they disputed whether the lower reflective layer was a
claimed first reflective layer.
Feit Electric made two arguments in support of
summary judgment of non-infringement with respect to the
first reflective layer. It first argued that CAO Lighting did
not identify a “distinct layer of material” as the first
reflective layer. Instead, CAO Lighting identified the
interface or boundary between the patterned sapphire
substrate and the buffer layer, which Feit Electric
contended was not a distinct layer as required by the
district court’s claim construction. This argument, rejected
by the district court, is not pressed on appeal, and we need
not discuss it further.
CAO Lighting ultimately argued that it had identified
a distinct layer—the patterned portion of the sapphire
substrate (denoted by the cones in the schematic)—as the
first reflective layer. Feit Electric replied that because
claims 7 and 8 of the ’961 patent identify the substrate and
first reflective layer as separate limitations, the substrate
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 6
of claim 7 cannot then be the first reflective layer of claim
8.
On December 13, 2022, the district court ordered
supplemental briefing on claim construction as to the
meaning of both “a substrate on which epitaxial layers are
grown” and “epitaxial layers.” Following that briefing, the
court rejected Feit Electric’s argument that the substrate
and first reflective layer must be separate components but
held that the first reflective layer must be an epitaxial
layer that is grown on or above the substrate. Then, it sua
sponte construed the term “other epitaxial layers” as used
in claim 7 and found that the substrate and first reflective
layer must be different materials. Subsequently, the court
granted summary judgment of non-infringement on the
ground that the substrate and first reflective layer of the
accused products are not different materials.
CAO Lighting appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
I
We review the district court’s grant of summary
judgment de novo. Sound View Innovations, LLC v. Hulu,
LLC, 33 F.4th 1326, 1335 (Fed. Cir. 2022); Munden v.
Stewart Title Guar. Co., 8 F.4th 1040, 1044 (9th Cir. 2021);
Greater Yellowstone Coal. v. Lewis, 628 F.3d 1143, 1148
(9th Cir. 2010).
II
CAO Lighting first argues that the district court erred
in concluding that the “first reflective layer” must be an
epitaxial layer. Claim construction is a question of law
with underlying questions of fact. See Teva Pharms. USA,
Inc. v. Sandoz, Inc., 574 U.S. 318, 320 (2015). Where the
district court relies only on intrinsic evidence to construe
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 7
the claims, as it has done here, we review the construction
de novo. Id. at 331.
Claim construction begins with the words of the claim.
Claims are generally given their ordinary and customary
meaning that is the meaning understood by a person of
ordinary skill in the art when read in the context of the
specification and prosecution history. Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
In this case, the district court construed the “first
reflective layer” as an epitaxial layer by first noting that
claim 7 lists several layers, which it understood to be grown
on the substrate (i.e., epitaxial), and then concluding that
“the device of claim 8 may ‘further comprise’ a ‘first
reflective layer’ in the sense that an additional layer is
added to the substrate of [c]laim 7.” J.A. 8. We disagree
with the court’s construction. Claim 8 simply recites that
“a first and a second reflective layers [are] located on
opposite sides of said active layer” and “serv[e] to reflect
light.” ’961 patent, col. 10, ll. 44–48. Nowhere does this
language limit the reflective layers to epitaxial layers or to
layers grown on or above the substrate.
When read as a whole, claims 7 and 8 demonstrate that
the reflective layers need not be epitaxial. We have
explained that “[d]ifferences among claims can . . . be a
useful guide in understanding the meaning of particular
claim terms.” Phillips, 415 F.3d at 1314; see also Ancora
Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014)
(explaining that the difference in terminology between two
claims “tends to reinforce, rather than undermine,
adoption of the broad ordinary meaning” of a disputed
claim term). Here, claim 7 recites “a substrate on which
epitaxial layers are grown,” ’961 patent, col. 10, l. 30
(emphasis added), demonstrating that the inventor knew
how to describe and restrict layers to be epitaxial layers.
Claim 8, in contrast, lacks a similar modifier of the
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 8
reflective layers and instead simply recites “a first and a
second reflective layers.” In such cases where two claims
recite different terms, we have declined to limit the broader
claim to the narrower embodiment. See Ancora Techs., 744
F.3d at 735 (declining to narrow the term “program” to
“application programs” where the disputed claim only
recited a program and another claim referred to an
application software program); Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009)
(finding that disputed terms do not require the use of a
“key” because the claims at issue did not recite the term
while other claims did).
Feit Electric, in support of the district court’s claim
construction, argues that the only discussion of reflective
layers in the ’961 patent is within the context of the VCSEL
chip referenced in the specification, where reflective layers
are described and depicted as epitaxial. See ’961 patent,
col. 5, ll. 38–47, id. at col. 6, ll. 1–8; id. at Figs. 3f, 3h. But
the chip at issue here is not a VCSEL chip, and there is
nothing in the specification that limits the claims to a
VCSEL chip. Nor does the specification, in depicting the
reflective layers of the VCSEL chip as epitaxial, state that
reflective layers must be epitaxial.
Our case law has repeatedly “cautioned against
limiting the claimed invention to preferred embodiments or
specific examples in the specification.” Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015)
(quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)); see also Phillips, 415 F.3d at
1323. Even in the case where the specification describes
only a single embodiment, we will not limit the claims to
that embodiment “unless the specification makes clear that
‘the patentee . . . intends for the claims and the
embodiments in the specification to be strictly
coextensive.’” JVW Enters., Inc. v. Interact Accessories,
Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (quoting Phillips,
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 9
415 F.3d at 1323). Neither the district court nor Feit
Electric identifies any language in the claims, specification,
or the prosecution history that demonstrates the inventors
intended to limit the reflective layers to the VSCEL
embodiment or that the reflective layers must be epitaxial
layers. We conclude that the first reflective layer need not
be epitaxial.
III
Based on its erroneous construction of “reflective
layers” as epitaxial, the district court concluded that “other
epitaxial layers” as recited in claim 7 must refer to the
epitaxial layers grown on the substrate, which it had
concluded encompassed the reflective layers of claim 8. It
further explained that “[b]ecause claim 7 requires a buffer”
and because, as recited by claim 7, the buffer layer
mitigates differences in material properties between the
substrate and other epitaxial layers, “claim 7 contemplates
that the substrate and . . . the ‘first reflective layer,’
comprise different materials.” J.A. 10. The district court’s
construction requiring different materials thus turns on its
requirement that the first reflective layer must be an
epitaxial layer. Because we hold that the first reflective
layer need not be an epitaxial layer, it follows that the
district court’s construction requiring the first reflective
layer and the substrate to comprise different materials is
incorrect.3
3 CAO Lighting argues on appeal that the district
court’s grant of summary judgment violated Rule 56 and
its due process rights as CAO Lighting was not given the
opportunity to argue non-infringement under a
construction requiring the first reflective layer and
substrate be different materials. Having vacated the
district court’s grant of non-infringement, we need not
reach the merits of CAO Lighting’s argument.
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 10
IV
Feit Electric argues that the non-infringement decision
can nonetheless be affirmed on two alternative grounds.
First, Feit Electric argues that the patterned substrate
cannot be the first reflective layer because it is not an
epitaxial layer. We decline to affirm summary judgment
under this alternative theory as it relies on the now
rejected claim construction that the first reflective layer is
an epitaxial layer.
Second, Feit Electric argues that the patterned
substrate cannot be a first reflective layer because the first
reflective layer and substrate cannot be satisfied by the
same component. Notably, the substrate and the first
reflective layer are in different claims—the substrate is
recited in claim 7 and the first reflective layer is recited in
claim 8. And in claim 8, the reflective layers are preceded
by the preamble “[a] device as recited in claim 7 further
comprising[.]” ’961 patent, col. 10, ll. 44–45. Citing Becton,
Dickinson & Co. v. Tyco Healthcare Group, 616 F.3d 1249,
1254 (Fed. Cir. 2010), Feit Electric argues here as it did in
the district court that because the substrate and first
reflective layer are listed separately, this creates a “clear
implication” that the two elements are distinct. The
district court disagreed, stating:
The Court finds that the ‘first reflective layer’ and
‘substrate’ need not be distinct components[.]
. . . [T]he ‘first reflective layer’ must be an epitaxial
layer grown on the substate [sic]. The parties
explain that the ‘first reflective layer’ would be a
crystalline growth on the substrate wherein the
crystalline growth is controlled by the
substrate . . . the crystal growth here suggests the
first reflective layer and substrate may be the same
component.
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CAO LIGHTING, INC. v. FEIT ELECTRIC COMPANY, INC. 11
J.A. 9–10 (emphasis added). The district court’s conclusion
again relied on its erroneous understanding that the first
reflective layer must be an epitaxial layer. Under these
circumstances, we think a remand is necessary to give the
parties an opportunity to address the issues without regard
to the district court’s erroneous claim construction.
CONCLUSION
For the foregoing reasons, we vacate the district court’s
claim construction of “first reflective layer” requiring that
it be an epitaxial layer and that the first reflective layer
and substrate be different materials. We also vacate the
court’s grant of summary judgment on non-infringement
and remand for further proceedings consistent with this
opinion.
VACATED AND REMANDED.
COSTS
Costs to Plaintiff-Appellant.
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