USITC Publication 5302•Certain Light-Emitting Diode Products, Systems, and Components Thereof (III), Inv. 337-TA-1168
Certain Light-Emitting Diode Products, Systems, and Components Thereof (III), Inv. 337-TA-1168
USITC Publication 5302Itc
Testo completo
In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS,SYSTEMS,AND COMPONENTS THEREOF (Ill) 337-TA-1168 Publication 5302 March 2022 U.S. International Trade Commission Washington, DC 20436
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Investigation No. 337-TA-1168 NOTICE OF A COMMISSION DETERMINATION TO REVIEW IN PART A FINAL INITIAL DETERMINATION FINDING NO VIOLATION OF SECTION 337 AND, ON REVIEW, TO AFFIRM THE FINAL INITIAL DETERMINATION’S FINDING OF NO VIOLATION; TERMINATION OF THE INVESTIGATION AGENCY: U.S. International Trade Commission. ACTION: Notice. SUMMARY: Notice is hereby given that, on June 26, 2020, the presiding administrative law judge (“ALJ”) issued a combined final initial determination (“ID”) and recommended determination (“RD”) on remedy and bonding. The final ID finds no violation of section 337 in the above-captioned investigation. The Commission has determined to review the final ID in part and, on review, has determined to affirm the final ID’s finding of no violation. The investigation is terminated. FOR FURTHER INFORMATION CONTACT: Richard P. Hadorn, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436, telephone (202) 205-3179. Copies of non-confidential documents filed in connection with this investigation may be viewed on the Commission’s electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General information concerning the Commission may also be obtained by accessing its Internet server at https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission’s TDD terminal, telephone (202) 205-1810. SUPPLEMENTARY INFORMATION: On June 25, 2019, the Commission instituted Investigation No. 337-TA-1163 (“the 1163 investigation”), based on a complaint, as amended, filed by Lighting Science Group Corporation and Health Inc., both of Cocoa Beach, Florida, and Global Value Lighting, LLC of West Warwick, Rhode Island (collectively, “LSG”). 84 FR 29877 (June 25, 2019). The complaint alleges violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337) (“section 337”), based on the importation into the United States, the sale for importation, and the sale within the United States after importation of certain light-emitting diode products, systems, and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 7,098,483 (“the ’483 patent”), 7,095,053 (“the ’053 patent”), 7,528,421 (“the ’421 patent”), 8,506,118, and 8,674,608. Id. The complaint further alleges that
2 a domestic industry exists. Id. The notice of investigation names the following entities as respondents: Nichia Corporation of Tokushima, Japan and Nichia America Corporation of Wixom, Michigan (together, “Nichia”); Cree, Inc. of Durham, North Carolina; Cree Hong Kong, Limited of Shatin, Hong Kong; Cree Huizhou Solid State Lighting Co., Ltd. of Guangdong, China; OSRAM GmbH and OSRAM Licht AG, both of Munich, Germany; OSRAM Opto Semiconductors GmbH of Regensburg, Germany; OSRAM Opto Semiconductors, Inc. of Sunnyvale, California; Lumileds Holding B.V. of Schipol, Netherlands and Lumileds, LLC of San Jose, California (together, “Lumileds”); Signify N.V. (f/k/a Philips Lighting N.V.) of Eindhoven, Netherlands; Signify North America Corporation (f/k/a Philips Lighting North America Corporation) of Somerset, New Jersey; MLS Co., Ltd. of Zhongshan City, China; LEDVANCE GmbH of Garching, Germany; LEDVANCE LLC of Wilmington, Massachusetts; General Electric Company of Boston, Massachusetts; Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC) of Cleveland, Ohio; Current Lighting Solutions, LLC of Cleveland, Ohio; Acuity Brands, Inc. of Atlanta, Georgia; Acuity Brands Lighting, Inc. of Conyers, Georgia; Leedarson Lighting Co., Ltd. of Xiamen, China; and Leedarson America, Inc. of Smyrna, Georgia (collectively, the “Respondents”). Id. at 29878. The Office of Unfair Import Investigations is not a party to this investigation. Id. On July 10, 2019, the ALJ severed from the 1163 investigation the present investigation, Investigation No. 337-TA-1168, which concerns whether there is a violation of section 337 based on allegations of infringement of the ’483, ’053, and ’421 patents. Order No. 5 at 2 (July 10, 2019). On January 20, 2020, the Commission terminated this investigation as to claim 7 of the ’421 patent. Order No. 18 (Dec. 30, 2019), unreviewed by Comm’n Notice (Jan. 29, 2020). On February 7, 2020, the Commission terminated this investigation as to respondents MLS Co., Ltd. and Ledvance GmbH. Order No. 24 (Jan. 14, 2020), unreviewed by Comm’n Notice (Feb. 7, 2020). On February 26, 2020, the Commission terminated this investigation as to: (1) claims 2 and 10 of the ’421 patent; (2) claims 4, 16-20, 22, and 26-30 of the ’053 patent; and (3) as to Lumileds only, claims 1-5 and 12 of the ’053 patent. Order No. 26 (Jan. 29, 2020), unreviewed by Comm’n Notice (Feb. 26, 2020). On February 14, 2020, the ALJ issued an initial determination granting in part Respondents’ motion for summary determination on non-infringement and failure to meet the technical prong of the domestic industry requirement. Order No. 32 (Initial Determination) (Feb. 14, 2020). The Commission declined to review that determination and subsequently terminated the investigation as to: (1) all asserted claims of the ’483 patent; and (2) asserted claims 7 and 11-15 of the ’053 patent. See Comm’n Notice (Apr. 7, 2020). That determination is currently on appeal. Appeal No. 20-1907 (Fed. Cir.). On June 26, 2020, the ALJ issued a combined final ID and RD on remedy and bonding. The final ID finds no violation of Section 337. See Final ID. On July 15, 2020, LSG filed a petition for review of certain findings in the final ID, and Respondents filed a contingent-in-part petition for review. On July 28, 2020, the parties filed responses to each other’s petitions.
3 On July 27, 2020, the Commission received submissions on the public interest pursuant to Commission Rule 210.50(a)(4) (19 CFR 210.50(a)(4)) from the following Respondents: (1) Acuity Brands, Inc. and Acuity Brands Lighting, Inc.; and (2) General Electric Co. and Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC). On July 28, 2020, the Commission received a submission on the public interest from LSG. No submissions were filed in response to the Commission’s Federal Register notice. See 85 FR 40318-19 (July 6, 2020). Having reviewed the record in this investigation, including the ALJ’s orders and final ID, as well as the parties’ petitions and responses thereto, the Commission has determined to review the final ID in part. Specifically, the Commission has determined to review the following issues: (1) whether the accused Nichia products and the alleged domestic industry product satisfy the limitation “and thermally coupled through the metal base to the thermal connection pad” of claim 1 of the ’053 patent; (2) whether the accused products and the alleged domestic industry products satisfy the additional limitation “wherein the thermally conducting base includes a metal base” of claim 6 of the ’421 patent; (3) whether the asserted claims of the ’421 patent are invalid as obvious; and (4) whether LSG satisfied the economic prong of the domestic industry requirement. On review, the Commission has determined to take no position on these issues. Further on review, the Commission has determined to correct two typographical errors in the final ID: in the fourth line of page 34, “does recite” is replaced with “does not recite”; and in the fifth line of page 40, “a thermal via” is replaced with “thermal coupling.” The Commission has determined not to review the remaining findings in the final ID, in particular that the asserted claims of the ’053 and ’421 patents have not been infringed, that the technical prong of the domestic industry requirement has not been satisfied with respect to either the ’053 or ’421 patent, and that the asserted claims of the ’421 patent have been shown invalid as anticipated and for lacking written description support. Accordingly, the Commission has determined to affirm the final ID’s finding of no violation of section 337. The investigation is terminated. The Commission vote for these determinations took place on October 1, 2020. The authority for the Commission’s determinations is contained in section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in Part 210 of the Commission’s Rules of Practice and Procedure (19 CFR part 210). While temporary remote operating procedures are in place in response to COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant(s) complete service for any party/parties without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS).
4 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: October 1, 2020
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached NOTICE has been served to the following parties as indicated, on October 1, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Lighting Science Group Corporation and Healthe, Inc.: Kayvan B. Noroozi, Esq. NOROOZI PC 11601 Wilshire Blvd., Suite 2170 Los Angeles, CA 90025 Email: kayvan@noroozipc.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Complainant Global Value Lighting, LLC: Richard Rochford, Esq. HAYNES AND BOONE, LLP 30 Rockefeller Plaza, 26th Floor New York, NY 10112 Email: richard.rochford@haynesboone.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent General Electric Company and Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC): Eric S. Namrow. Esq. MORGAN, LEWIS & BOCKIUS LLP 1111 Pennsylvania Ave, N.W. Washington, D.C. 20004 Email: eric.namrow@morganlewis.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 Certificate of Service – Page 2 On Behalf of Respondents OSRAM GmbH, OSRAM Licht AG, OSRAM Opto Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.: Paul M. Bartkowski, Esq. ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1133 Connecticut Avenue, NW, 12th Floor Washington, DC 20036 Email: bartkowski@adduci.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Signify N.V. (f/k/a Philips Lighting N.V.) and Signify North America Corporation (f/k/a Philips Lighting North America Corporation): Adam D. Swain, Esq. ALSTON & BIRD LLP 950 F Street NW Washington, DC 20004 Email: adam.swain@alston.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Nichia Corporation and Nichia America Corporation: Thomas R. Makin, Esq. SHEARMAN & STERLING LLP 599 Lexington Avenue New York, NY 10022 Email: thomas.makin@shearman.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Cree Inc., Cree Hong Kong, Limited, and Cree Huizhou Solid State Lighting Co. Ltd.: S. Alex Lasher, Esq. QUINN EMANUEL URQUHART & SULLIVAN, LLP 1300 I Street, NW, Suite 900 Washington, DC 20005 Email: alexlasher@quinnemanuel.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 Certificate of Service – Page 3 On Behalf of Respondents Lumileds Holding B.V. and Lumileds, LLC: Bryan A. Kohm, Esq. FENWICK & WEST LLP 555 California Street, 12th Floor San Francisco, CA 94104 Email: bkohm@fenwick.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc.: John M. Caracappa, Esq. STEPTOE & JOHNSON, LLP 1330 Connecticut Avenue, N.W. Washington, D.C. 20036 Email: jcaracappa@steptoe.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Acuity Brands, Inc. and Acuity Brands Lighting, Inc.: Matthew S. Yungwirth, Esq. DUANE MORRIS LLP 1075 Peachtree Street NE, Suite 2000 Atlanta, Georgia 30309 Email: MSYungwirth@duanemorris.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Current Lighting Solutions, LLC: Steven E. Adkins, Esq. MCGUIREWOODS LLP 2001 K Street N.W., Suite 400 Washington, D.C. 20006 Email: seadkins@mcguirewoods.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LEDVANCE LLC: Edwin Wheeler, Esq. INTELINK LAW GROUP, PC One Market Street Spear Tower, 36th Floor San Francisco, CA 94105 Email: ewheeler@intelinklaw.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) INV. NO. 337-TA-1168 INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND RECOMMENDED DETERMINATION ON REMEDY AND BOND Administrative Law Judge Clark S. Cheney (June 26, 2020) Appearances: For Complainants Lighting Science Group Corporation and Healthe, Inc.: Kayvan B. Noroozi, Esq., James A. Milkey, Esq., and Karly Valenzuela, Esq. of Noroozi PC of Los Angeles, CA Joel P. Stonedale, Esq. of Noroozi PC of Austin, TX Andrew Gish, Esq. of Noroozi PC of New York, NY Barbara A. Murphy, Esq., David F. Nickel, Esq., Susan Koegel, Esq. Kandis C. Gibson, Esq., and Matthew N. Duesher, Esq. of Foster, Murphy, Altman & Nickel, PC of Washington, DC Bradley W. Caldwell, Esq., John Austin Curry, Esq., Christopher S. Stewart, Esq., Justin T. Nemunaitis, Esq., Hamad M. Hamad, Esq., and Daniel R. Pearson, Esq. of Caldwell Cassady Curry, PC of Dallas, TX For Complainant Global Value Lighting, LLC: Kenneth G. Parker, Esq., Jason T. Lao, Esq., and Andrea Levenson, Esq. of Haynes and Boone, LLP of Costa Mesa, CA Tiffany M. Cooke, Esq. of Haynes and Boone, LLP of Dallas, TX PUBLIC VERSION
For Respondents OSRAM GmbH; OSRAM Licht AG; OSRAM Opto Semiconductors GmbH; and OSRAM Opto Semiconductors, Inc.: Tom M. Schaumberg, Esq., Paul M. Bartkowski, Esq., and Michael R. Doman, Jr., Esq. of Adduci, Mastriani & Schaumberg, LLP of Washington, DC Mark A. Hannemann, Esq., Patrick R. Colsher, Esq., Eric S. Lucas, Esq., Shaina L. Schwartz, Esq., and Ahmed E. ElDessouki, Esq. of Shearman & Sterling LLP of New York, NY For Respondents Nichia Corporation and Nichia America Corporation: Thomas R. Makin, Esq., Patrick R. Colsher, Esq., Eric S. Lucas, Esq., Shaina L. Schwartz, Esq., and Ahmed E. ElDessouki, Esq. of Shearman & Sterling LLP of New York, NY Matthew G. Berkowitz, Esq. and Yue (Joy) Wang, Esq. of Shearman & Sterling LLP of Menlo Park, CA For Respondents Lumileds Holding B.V. and Lumileds LLC: Bryan A. Kohm, Esq., Laurence F. Pulgram, Esq., Michael J. Sacksteder, Esq., Shannon E. Turner, Esq., and Sarah V. Lightstone, Esq. of Fenwick & West LLP of San Francisco, CA Jae Won Song, Esq., and Jason E. Amsel, Esq. of Fenwick & West LLP of Mountain View, CA Jessica M. Kaempf, Esq. and Jonathan T. McMichael, Esq. of Fenwick & West LLP of Seattle, WA Eric Menist, Esq. of Fenwick & West LLP of New York, NY For Respondents Cree, Inc.; Cree Hong Kong Ltd.; and Cree Huizhou Solid State Lighting Co. Ltd.: S. Alex Lasher, Esq. and Jared W. Newton, Esq. of Quinn Emanuel Urquhart & Sullivan, LLP of Washington, DC Raymond N. Nimrod, Esq. and Richard W. Erwine, Esq. of Quinn Emanuel Urquhart & Sullivan, LLP of New York, NY For Respondents Acuity Brands, Inc. and Acuity Brands Lighting, Inc.: Matthew S. Yungwirth, Esq., L. Norwood Jameson, Esq., Alice E. Snedeker, Esq., Sajid Saleem, Esq., and Glenn D. Richeson, Esq. of Duane Morris LLP of Atlanta, GA Pierre J. Hubert, Esq. and Jun Zheng, Esq. of Duane Morris LLP of Austin, TX Kevin P. Anderson, Esq. of Duane Morris LLP of Washington, DC Daniel Tarr, Esq. of Duane Morris LLP of Philadelphia, PA PUBLIC VERSION
Benjamin Levi, Esq. of Levi & Snotherly, PLLC of Washington, DC For Respondent Current Lighting Solutions, LLC: Steven E. Adkins, Esq. of McGuireWoods LLP of Washington, DC Darren W. Collins, Esq., Kuan-Chieh Tu, Esq., and Matthew W. Cornelia, Esq. of McGuireWoods LLP of Dallas, TX Tyler T. VanHoutan, Esq. of McGuireWoods LLP of Houston, TX Fredericka J. Sowers, Esq. of McGuireWoods LLP of Raleigh, NC Wanda French-Brown, Esq. of McGuireWoods LLP of New York, NY George B. Davis, Esq. of McGuireWoods LLP of Richmond, VA For Respondents General Electric Company and Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC): Eric S. Namrow, Esq., Natalie A. Bennett, Esq., Riccardo S. Macchiaroli, Esq., Stephanie L. Roberts, Esq., and Calvin M. Brien, Esq. of Morgan, Lewis & Bockius LLP of Washington, DC Hersh Mehta, Esq., Karon N. Fowler, Esq., James J. Kristas, Esq., and Nicholas A. Restauri, Esq. of Morgan, Lewis & Bockius LLP of Chicago, IL Elizabeth M. Chiaviello, Esq. of Morgan, Lewis & Bockius LLP of Houston, TX Christopher D. Bright, Esq. of Morgan, Lewis & Bockius LLP of Costa Mesa, CA For Respondent LEDVANCE LLC: Edwin Wheeler, Esq. and Brad Bertoglio, Esq. of InteLink Law Group, PC of San Francisco, CA Michael B. Marion, Esq. of InteLink Law Group, PC of Phoenix, AZ For Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc.: John M. Caracappa, Esq., Stanley Kuo, Esq., Matthew N. Bathon, Esq., Katherine D. Cappaert, Esq., Thomas C. Yebernetsky, Esq., W. Kiersten Choi, Esq., Nigel G. Ray, Esq., and Christopher Suarez of Steptoe & Johnson, LLP of Washington, DC For Respondents Signify N.V. and Signify North America Corporation: Adam D. Swain, Esq. and Brian D. Hill, Esq. of Alston & Bird LLP of Washington, DC John Haynes, Esq. of Alston & Bird LLP of Atlanta, GA Christopher Ziegler, Esq. of Alston & Bird LLP of Charlotte, NC PUBLIC VERSION
iv Table of Contents I. Introduction ......................................................................................................................... 2 A. Procedural History .............................................................................................................. 2 B. The Parties .......................................................................................................................... 5 1. Complainants ................................................................................................................ 5 2. The Cree Respondents .................................................................................................. 6 3. The Lumileds Respondents ........................................................................................... 7 4. The Nichia Respondents ............................................................................................... 7 5. The OSRAM Respondents............................................................................................ 7 6. The Acuity Respondents ............................................................................................... 8 7. The GE Respondents..................................................................................................... 8 8. Respondent Current ...................................................................................................... 9 9. Respondent LEDVANCE ............................................................................................. 9 10. The Leedarson Respondents ......................................................................................... 9 11. The Signify Respondents .............................................................................................. 9 C. The Asserted Patents ......................................................................................................... 10 1. The ’053 Patent ........................................................................................................... 10 2. The ’421 Patent ........................................................................................................... 12 II. Jurisdiction & Importation ................................................................................................ 13 A. Subject Matter Jurisdiction ............................................................................................... 13 B. Personal Jurisdiction ......................................................................................................... 13 C. Importation ........................................................................................................................ 14 D. In Rem Jurisdiction ........................................................................................................... 16 E. Standing ............................................................................................................................ 16 III. Legal Principles ................................................................................................................ 17 A. Infringement ...................................................................................................................... 17 B. Claim Construction ........................................................................................................... 17 C. Validity ............................................................................................................................. 19 1. Anticipation................................................................................................................. 19 2. Obviousness ................................................................................................................ 20 3. Written Description..................................................................................................... 21 4. Indefiniteness .............................................................................................................. 22 D. Domestic Industry ............................................................................................................. 22 PUBLIC VERSION
v 1. Economic Prong .......................................................................................................... 22 2. Technical Prong .......................................................................................................... 23 IV. The ’053 Patent ................................................................................................................. 24 A. Infringement ...................................................................................................................... 24 1. The ’053 Accused Products ........................................................................................ 24 2. Claim 1 ........................................................................................................................ 27 3. Claim 2 ........................................................................................................................ 45 4. Claim 3 ........................................................................................................................ 45 5. Claim 5 ........................................................................................................................ 46 6. Claims 6 and 21 .......................................................................................................... 47 B. Technical Prong of the Domestic Industry Requirement .................................................. 47 1. The ’053 Domestic Industry Product .......................................................................... 47 2. Claim 1 ........................................................................................................................ 48 3. Claim 2 ........................................................................................................................ 56 4. Claim 5 ........................................................................................................................ 57 C. Validity ............................................................................................................................. 57 1. Obviousness: Harrah in view of Griffin...................................................................... 57 V. The ’421 Patent ................................................................................................................. 59 A. Infringement ...................................................................................................................... 59 1. The Accused Products................................................................................................. 59 2. Claim 1 ........................................................................................................................ 71 3. Claim 6 ........................................................................................................................ 93 4. Infringement Conclusion ............................................................................................ 94 B. Technical Prong of the Domestic Industry Requirement .................................................. 94 C. Validity ............................................................................................................................. 97 1. Priority Date ................................................................................................................ 97 2. Anticipation: BL-3000 On-Sale Bar ......................................................................... 106 3. Obviousness: Hammond ........................................................................................... 107 4. Anticipation: Yoganandan ........................................................................................ 111 5. Anticipation: Seko .................................................................................................... 112 6. Written Description................................................................................................... 113 7. Indefiniteness ............................................................................................................ 116 VI. Economic Prong of the Domestic Industry Requirement ............................................... 116 A. The Relevant Industry ..................................................................................................... 116 PUBLIC VERSION
vi B. LSG/Healthe’s Domestic Expenditures .......................................................................... 119 1. Labor Activities and Expenditures............................................................................ 119 2. Capital Expenditures ................................................................................................. 125 C. Significance..................................................................................................................... 126 VII. Conclusions of Law ........................................................................................................ 129 VIII. Recommended Determination on Remedy & Bond ....................................................... 130 A. Findings of Fact Relevant to Remedy and Bond ............................................................ 130 B. Limited Exclusion Order................................................................................................. 130 C. Cease and Desist Order ................................................................................................... 132 D. Bond During Presidential Review .................................................................................. 137 IX. Initial Determination on Violation .................................................................................. 139 X. Order ............................................................................................................................... 139 PUBLIC VERSION
vii Table of Abbreviations CC Tr. Transcript of claim construction hearing held October 17, 2019 CDX Complainants’ demonstrative exhibit CIB Complainants’ initial post-hearing brief CPB Complainants’ pre-hearing brief CPX Complainants’ physical exhibit CRB Complainants’ responsive post-hearing brief CX Complainants’ exhibit Dep. Deposition JX Joint Exhibit RDX Respondents’ demonstrative exhibit RIB Respondents’ initial post-hearing brief RPB Respondents’ pre-hearing brief RPX Respondents’ physical exhibit RRB Respondents’ responsive post-hearing brief RX Respondents’ exhibit Stip. Stipulation of the parties Tr. Transcript PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) INV. NO. 337-TA-1168 INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND RECOMMENDED DETERMINATION ON REMEDY AND BOND Administrative Law Judge Clark S. Cheney (June 26, 2020) Pursuant to the Notice of Investigation, 84 Fed. Reg. 29877 (June 25, 2019), and 19 C.F.R. §§ 210.10(b), 210.42(a)(1)(i), this is the final Initial Determination in the matter of Certain Light- Emitting Diode Products, Systems, and Components Thereof (III), Investigation No. 337-TA-1168. For the reasons stated herein, I have determined that a violation of section 337 of the Tariff Act, as amended, has not occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain light-emitting diode products, systems, and components thereof based on allegations of infringement of U.S. Patent No. 7,095,053 and U.S. Patent No. 7,528,421. PUBLIC VERSION
2 I. INTRODUCTION A. Procedural History On May 20, 2019, complainants Lighting Science Group Corporation; Healthe, Inc.; and Global Value Lighting, LLC (collectively, “LSG” or “Complainants”) filed an Amended Complaint (“Compl.”) alleging violations of section 337 based on the importation into the United States, the sale for importation, and the sale within the United States after importation of certain light-emitting diode (“LED”) products, systems, and components thereof. 84 Fed. Reg. 24180 (May 24, 2019); see EDIS Doc. ID 681033. On June 25, 2019, the Commission instituted Investigation No. 337-TA-1163 (“the 1163 investigation”) to determine: [W]hether there is a violation of subsection (a)(1)(B) of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain products identified in paragraph (3) by reason of infringement of one or more of claims 11 and 14–16 of the ’483 patent [U.S. Patent No. 7,098,483]; claims 1–7, 11–22, and 26–30 of the ’053 patent [U.S. Patent No. 7,095,053]; claims 1, 2, 6, 7, and 10 of the ’421 patent [U.S. Patent No. 7,528,421]; claims 1, 2, 5, 10, 12, 14, 15, 17, and 18 of the ’118 patent [U.S. Patent No. 8,506,118]; and claims 1, 2, 6, 12, 13, 16, 19–22, 24, 28, and 37 of the ’608 patent [U.S. Patent No. 8,674,608]; and whether an industry in the United States exists as required by subsection (a)(2) of section 337. 84 Fed. Reg. 29877 (June 25, 2019) (“Notice of Investigation”). The Notice of Investigation named the following entities as respondents: • Nichia Corporation • Nichia America Corporation • Cree, Inc. • Cree Hong Kong, Limited • Cree Huizhou Solid State Lighting Co. Ltd. PUBLIC VERSION
3 • OSRAM GmbH • OSRAM Licht AG • OSRAM Opto Semiconductors GmbH • OSRAM Opto Semiconductors, Inc. • Lumileds Holding B.V. • Lumileds, LLC • Signify N.V. (f/k/a Philips Lighting N.V.) • Signify North America Corporation (f/k/a Philips Lighting North America Corporation) • MLS Co., Ltd. • LEDVANCE GmbH • LEDVANCE LLC • General Electric Company • Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC) • Current Lighting Solutions, LLC • Acuity Brands, Inc. • Acuity Brands Lighting, Inc. • Leedarson Lighting Co., Ltd. • Leedarson America, Inc. Id.1 The Office of Unfair Import Investigations is not a party to this investigation. Id. 1 All named respondents remaining in this investigation are hereinafter collectively referred to as “Respondents.” PUBLIC VERSION
4 On July 10, 2019, I issued Order No. 5 severing the 1163 investigation into two investigations. This investigation is the second of the severed investigations and concerns whether there is a violation of section 337 based on allegations of infringement of the ’483, ’053, and ’421 patents. Order No. 5 at 2. I subsequently set the target date for this investigation at sixteen months, which makes this final initial determination due no later than June 26, 2020. Order No. 6 (July 17, 2019). On December 30, 2019, I granted an unopposed motion by LSG for termination of the investigation with respect to claim 7 of the ’421 patent. Order No. 18, aff’d, Comm’n Notice (Jan. 29, 2020). On January 14, 2020, I granted an unopposed motion by LSG for termination of the investigation with respect to respondents MLS Co., Ltd., and Ledvance GmbH. Order No. 24, aff’d, Comm’n Notice (Feb. 7, 2020). On January 29, 2020, I granted an unopposed motion by LSG for termination of the investigation with respect to (1) claims 2 and 10 of the ’421 patent and claims 4, 16–20, 22, and 26–30 of the ’053 patent and (2) claims 1–5 and 12 of the ’053 patent as asserted against respondents Lumileds Holding B.V. and Lumileds LLC. Order No. 26, aff’d, Comm’n Notice (Feb. 26, 2020). In accordance with the procedural schedule issued as Order No. 7 on July 22, 2019, the parties submitted a joint chart of proposed claim constructions on September 12, 2019. The parties submitted opening claim construction briefs on September 20, 2019, and responsive claim construction briefs on October 4, 2019. On October 17, 2019, I convened a claim construction hearing.2 I subsequently issued Order No. 31 (“CC Order”) on February 11, 2020, construing certain disputed claims. 2 The transcript of the claim construction hearing is available as EDIS Doc. ID 691452 and is hereinafter referred to as “CC Tr.” PUBLIC VERSION
5 On February 14, 2020, I granted a motion filed by Respondents seeking findings on summary determination that (1) none of the products accused in this investigation infringe asserted claims 11 and 14–16 of the ’483 patent or asserted claims 7 and 11–15 of the ’053 patent and (2) the technical prong of the domestic industry requirement is not satisfied with respect to those same claims. Order No. 32.3 The Commission declined to review my initial determination finding no violation of section 337 as to these claims. Comm’n Notice (Apr. 7, 2020).4 I held a prehearing conference on February 18, 2020, and convened the evidentiary hearing immediately afterwards. The evidentiary hearing ended on February 26, 2020. See Tr. 1–1455.5 B. The Parties 1. Complainants Lighting Science Group Corporation (“Lighting Science”) is a corporation organized under the laws of Delaware with its corporate headquarters at 1350 Division Road, Suite 204, West Warwick, Rhode Island 02893. Its principal place of business is at 801 N. Atlantic Avenue, Cocoa Beach, Florida 32931. Compl. ¶ 10. Lighting Science is in the business of manufacturing, researching, developing, and selling devices and systems that use LEDs as the light source. See id. ¶ 11. 3 Order No. 32 granted in part Respondents’ Motion No. 1168-004 for summary determination. To the extent issues raised in that motion remain at issue, Motion No. 1168-004 is denied as moot in view of the findings and conclusions set forth in this initial determination. 4 The asserted patent claims remaining at issue are: claims 1, 2, 3, 5, 6, and 21 of the ’053 patent; and claims 1 and 6 of the ’421 patent. 5 After initial versions of the evidentiary hearing transcript were filed on EDIS, some portions of the transcript were declassified, changing some pagination. To clarify which transcript pagination is cited herein, citations to the public hearing transcript will be made in reference to EDIS Doc. IDs 705937, 705942, 705946, 705948, and 705949. Citations to the confidential hearing transcript will be made in reference to EDIS Doc. IDs 702885, 703084, 703335, 703849, and 703578. PUBLIC VERSION
6 Healthe, Inc. (“Healthe”) is a corporation organized under the laws of Delaware, with corporate headquarters and principal place of business at 801 N. Atlantic Avenue, Cocoa Beach, Florida 32931. Compl. ¶ 27. Healthe was founded as a wholly-owned subsidiary of Lighting Science on October 23, 2018, and it is a licensee of the ’483, ’053, and ’421 patents. See id. ¶ 28. Global Value Lighting, LLC (“GVL”) is a corporation organized under the laws of Delaware, with corporate headquarters and principal place of business at 1350 Division Road, Suite 204, West Warwick, Rhode Island 02893. Compl. ¶ 30. GVL was founded as a majority- owned subsidiary of Lighting Science on May 8, 2017, and it is a licensee of the ’483, ’053, and ’421 patents. See id. ¶ 31. 2. The Cree Respondents Cree, Inc., is a publicly traded corporation organized under the laws of the State of North Carolina with a principal place of business at 4600 Silicon Drive, Durham, North Carolina 27703. Cree Resp. to Compl. ¶ 38 (EDIS Doc. ID 681480) (July 15, 2019). Cree Hong Kong, Limited, is organized under the laws of Hong Kong with its principal place of business at 18 Science Park East Avenue, Hong Kong Science Park, Shatin, New Territories, Hong Kong. Id. ¶ 40. Cree Hong Kong, Limited, is a wholly owned subsidiary of Cree, Inc. Id. Cree Huizhou Solid State Lighting Company Limited is organized under the laws of the People’s Republic of China with a principal place of business in Huizhou, Guangdong Province, China. Id. ¶ 42. Cree Huizhou Solid State Lighting Company Limited is a wholly owned subsidiary of Cree Hong Kong, Limited. Id. These three entities are hereinafter collectively referred to as “Cree.” PUBLIC VERSION
7 3. The Lumileds Respondents Lumileds Holding B.V. is a privately held company organized under the laws of the Netherlands and has its principal place of business and corporate headquarters at The Base Building B, 5th Floor, Evert van de Beeksttraat 1-107, 1118 CN Schipol, Netherlands. Compl. ¶ 58; Lumileds Resp. to Compl. ¶ 58 (EDIS Doc. ID 681420) (July 15, 2019). Lumileds, LLC, is a privately held company organized under the laws of the State of Delaware and has its principal place of business and operational headquarters at 370 West Trimble Road, San Jose, California 95131. Compl. ¶ 60; Lumileds Resp. to Compl. ¶ 60. Lumileds, LLC, is an indirect subsidiary of Lumileds Holding B.V. Lumileds Resp. to Compl. ¶ 61. These two entities are hereinafter collectively referred to as “Lumileds.” 4. The Nichia Respondents Nichia Corporation is a privately held corporation organized under the laws of Japan and has its principal place of business at 491 Oka, Kaminaka-Cho, Anan-Shi, Tokushima 774-8601, Japan. Nichia Resp. to Compl. ¶ 32 (EDIS Doc. ID 681396) (July 15, 2019). Nichia America Corporation is a privately held corporation organized under the laws of the State of Michigan. Id. ¶ 34. It has its principal place of business at 48561 Alpha Drive, Suite 100, Wixom, Michigan 48393, and a sales office at 3625 Del Amo Boulevard, Suite 325, Torrance, California 90503. Id. Nichia America Corporation is a subsidiary of Nichia Corporation. Id. ¶ 35. These two entities are hereinafter collectively referred to as “Nichia.” 5. The OSRAM Respondents OSRAM Licht AG is a publicly traded company organized under the laws of Germany and has its principal place of business at Marcel-Breuer-Strasse 6, 80807 Munich, Germany. OSRAM Resp. to Compl. ¶ 48 (EDIS Doc. ID 681474) (July 15, 2019). PUBLIC VERSION
8 OSRAM GmbH is a privately held company organized under the laws of Germany and has its principal place of business at Marcel-Breuer-Strasse 6, 80807 Munich, Germany. Id. ¶ 50. OSRAM GmbH is a (partly indirectly) wholly-owned subsidiary of OSRAM Licht AG. Id. ¶ 49. OSRAM Opto Semiconductors GmbH is a privately held company organized under the laws of Germany and has its principal place of business at Leibnizstr 4, 93055 Regensburg, Germany. Id. ¶ 52. OSRAM Opto Semiconductors GmbH is a subsidiary of OSRAM GmbH. Id. ¶ 53. OSRAM Opto Semiconductors, Inc., is a privately held corporation organized under the laws of the State of Delaware and has its principal place of business at 1150 Kifer Road, Suite 100, Sunnyvale, California 94086. Id. ¶ 54. OSRAM Opto Semiconductors GmbH holds 100% of the shares of OSRAM Opto Semiconductors, Inc. Id. ¶ 55. These four entities are hereinafter collectively referred to as “OSRAM.” 6. The Acuity Respondents Acuity Brands, Inc., is a publicly traded corporation organized under the laws of the State of Delaware with its principal place of business at 1170 Peachtree St. NE, Suite 2300, Atlanta, Georgia, 30309. Acuity Resp. to Compl. ¶ 90 (EDIS Doc. ID 681716) (July 16, 2019). Acuity Brands Lighting, Inc., is a wholly-owned subsidiary of Acuity Brands, Inc., organized under the laws of the State of Delaware. Id. ¶ 92. These two entities are hereinafter collectively referred to as “Acuity.” 7. The GE Respondents General Electric Company is a publicly traded company organized under the laws of New York and has its principal place of business at 41 Farnsworth Street, Boston, Massachusetts 02210. Compl. ¶ 78; GE Resp. to Compl. ¶ 78 (EDIS Doc. ID 682214) (July 18, 2019). PUBLIC VERSION
9 Consumer Lighting (U.S.), LLC, is a privately owned company organized under the laws of the State of Delaware with its principal place of business at 1975 Noble Road, Cleveland, Ohio 44112. Compl. ¶ 80; GE Resp. to Compl. ¶ 78. These two entities are hereinafter collectively referred to as “GE.” 8. Respondent Current Current Lighting Solutions, LLC (“Current”) is a company organized under the laws of Delaware and has its principal place of business at 1975 Noble Road, Nela Park, Cleveland, Ohio 44112. Compl. ¶ 84; Current Resp. to Compl. ¶ 84 (EDIS Doc. No. 681476) (July 15, 2019). 9. Respondent LEDVANCE LEDVANCE LLC (“LEDVANCE”) is a privately held U.S. company organized under Delaware law and has its principal place of business at 200 Ballardvale Street, Wilmington, Massachusetts 01887. LEDVANCE Resp. to Compl. ¶ 74 (EDIS Doc. No. 681442) (July 15, 2019). LEDVANCE LLC is wholly owned by MLS Co., Ltd. Id. 10. The Leedarson Respondents Leedarson Lighting Co., Ltd., is headquartered in the People’s Republic of China at the Leedarson Building, No. 1511, 2nd Fanghu North Road, Xiamen 361010, People’s Republic of China. Leedarson Resp. to Compl. ¶ 96 (EDIS Doc. ID 681473) (July 15, 2019). Leedarson America, Inc., is headquartered in the State of Georgia at 4600 Highlands Pkwy SE, Suite D-E, Smyrna, Georgia 30082. Id. ¶ 98. These two entities are hereinafter collectively referred to as “Leedarson.” 11. The Signify Respondents Signify N.V. was formerly named Philips Lighting N.V. and is a publicly traded company organized under the laws of the Netherlands, with its principal place of business at High Tech PUBLIC VERSION
10 Campus 48, 5656 AE Eindhoven, The Netherlands. Signify Resp. to Compl. ¶ 64 (EDIS Doc. ID 681382) (July 15, 2019). Signify North America Corporation was formerly named Philips Lighting North America Corporation and is a publicly traded company organized under the laws of Delaware, with a place of business at 200 Franklin Square Drive, Somerset, New Jersey 08873. Id. ¶ 67. Signify North America Corporation is a wholly-owned subsidiary of Signify N.V. Id. ¶ 68. These two entities are hereinafter collectively referred to as “Signify.” C. The Asserted Patents LSG asserts claims under two patents in this investigation: the ’053 patent and the ’421 patent. 1. The ’053 Patent U.S. Patent No. 7,095,053 is titled “Light Emitting Diodes Packaged for High Temperature Operation,” issued on August 22, 2006, and names Joseph Mazzochette and Greg Blonder as inventors. JX-0003 (’053 patent) at cover page. The ’053 patent issued from application No. 10/638,579, filed on August 11, 2003, and claims priority to provisional application No. 60/467,857, filed on May 5, 2003. Id. The ’053 patent, on its face, is assigned to Lamina Ceramics, Inc. ’053 patent at cover page. LSG is the owner by assignment of the ’053 patent. See Compl. Exs. 9, 13–14, 16–17, 20–23, 25, 28–29. The remaining ’053 claims at issue in this investigation are claims 1, 2, 3, 5, 6, and 21.6 Claim 1 is an independent claim from which claims 2, 3, 5, and 6 depend. Claim 21 is a dependent 6 See Section I.A above. PUBLIC VERSION
11 claim depending from independent claim 16, which has been terminated from this investigation. These claims read as follows: 1. A packaged LED for high temperature operation comprising: a metal base, the metal base including an underlying thermal connection pad and a pair of underlying electrical connection pads; a layer of ceramic overlying the metal base; and an LED mounted on the ceramic layer, wherein the LED includes a pair of electrodes electrically connected to respective underlying electrical connection pads, and wherein the LED is thermally coupled to the metal base by one or more thermal vias, and thermally coupled through the metal base to the thermal connection pad. 2. The packaged LED of claim 1 wherein the underlying electrical connection pads and the underlying thermal connection pad are coplanar to permit surface mounting on corresponding pads of a PC board. 3. The packaged LED of claim 1 wherein at least one electrode of the LED is connected to one of the underlying electrical connection pads by an electrical path including a bonding wire from the electrode to a bonding pad on the ceramic layer. 5. The packaged LED of claim 1 wherein at least one electrode of the LED is connected to one of the underlying electrical connection pads by an electrical path including the metal base. 6. An array of LEDs comprising a plurality of LEDs according to claim 1 overlying a common metal base. 16. A packaged LED for high temperature operation comprising: a metal base, the metal base including an underlying thermal connection pad and a pair of underlying electrical connection pads; a layer of electrically insulating material overlying the metal base; and an LED mounted on the layer of electrically insulating material, wherein the LED includes a pair of electrodes electrically connected to respective underlying electrical connection pads, and wherein the LED is thermally coupled to the metal base by one or more thermal vias, and thermally coupled through the metal base to the thermal connection pad. PUBLIC VERSION
12 21. An array of LEDs comprising a plurality of LEDs according to claim 16 overlying a common metal base. ’053 patent at 9:5–25, 9:30–35, 10:16–23, 10:41–42. 2. The ’421 Patent U.S. Patent No. 7,528,421 is titled “Surface Mountable Light Emitting Diode Assemblies Packaged for High Temperature Operation,” issued on May 5, 2009, and names Joseph Mazzochette and Greg Blonder as inventors. JX-0004 (’421 patent) at cover page. The ’421 patent issued from Application No. 11/179,863, filed on July 12, 2005, and is a continuation-in-part of the application that resulted in the ’053 patent. Id. Similar to the ’053 patent, the ’421 patent also claims priority to provisional application No. 60/467,857, filed on May 5, 2003. Id. The ’421 patent, on its face, is assigned to Lamina Lighting, Inc. ’421 patent at cover page. LSG is the owner by assignment of the ’421 patent. See Compl. Exs. 11–14, 16–17, 20–23, 25, 28. The remaining ’421 claims at issue in this investigation are claims 1 and 6.7 Claim 1 is an independent claim from which claim 6 depends. These claims read as follows: 1. A LED assembly adapted for surface mounting and high temperature operation, the LED assembly comprising: a thermally conducting base, wherein at least a portion of the thermally conducting base is substantially planar; one or more electrically insulating layers overlying at least a portion of the planar portion of the thermally conducting base and defining a surface cavity, wherein the electrically insulating layers include one or more terminals; one or more LED die disposed at least partially within the surface cavity, wherein the one or more LED die are in thermal contact with the planar portion of the thermally conducting base, and electrically 7 See Section I.A above. PUBLIC VERSION
13 connected to the one or more terminals of the one or more insulating layers, wherein a bottom surface of the LED assembly includes a thermally conductive region in solderable thermal contact with the thermally conducting base, for spreading heat transmitted to the base from the one or more LED die; and further comprising an LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad. 6. The LED assembly of claim 1, wherein the thermally conducting base includes a metal base. ’421 patent at 7:46–67, 8:17–18. II. JURISDICTION & IMPORTATION A. Subject Matter Jurisdiction No party has contested the Commission’s subject matter jurisdiction over this investigation. Section 337 of the Tariff Act prohibits the importation, the sale for importation, or the sale after importation of articles that infringe a valid and enforceable patent if an industry exists in the United States relating to articles protected by the patent. 19 U.S.C. §§ 1337(a)(1)–(2). LSG’s Amended Complaint states a cause of action under section 337. Specifically, LSG has alleged that the Respondents are importing, selling for importation, and selling after importation certain LED products that infringe the asserted patents. See Compl. at 45–118. The Commission, therefore, has subject matter jurisdiction over this investigation. B. Personal Jurisdiction By filing the Amended Complaint and participating in the investigation, LSG has consented to personal jurisdiction at the Commission. See Certain Cutting Tools for Flexible Plastic Conduit & Components Thereof, 337-TA-344, Initial Determination at 4, not reviewed, Comm’n Determination Not to Review an Initial Determination Finding a Violation of Section PUBLIC VERSION
14 337 (Oct. 28, 1993), USITC Pub. No. 2719 (Jan. 1994). The Respondents have appeared and participated in this investigation, and no party has contested the Commission’s jurisdiction over it. I therefore find that the Commission has personal jurisdiction over all parties. See, e.g., Certain Optical Disk Controller Chips & Chipsets & Prods. Containing Same, Including DVD Players & PC Optical Storage Devices, Inv. No. 337-TA-506, Initial Determination at 4–5 (May 16, 2005) (unreviewed in relevant part). C. Importation To prove a violation of section 337 by any particular respondent, the complainant must show that the respondent engaged in “[t]he importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee” of products accused of infringement. 19 U.S.C. §§ 1337(a)(1)(A)–(B). Of the four OSRAM entities named as respondents in this investigation, OSRAM Opto Semiconductors GmbH and OSRAM Opto Semiconductors, Inc., stipulated that they have imported into the United States, sold for importation into the United States, or sold within the United States after importation certain products accused in this investigation. JX-0434C at 6. LSG has not offered evidence to show that the other two OSRAM entities, OSRAM GMbH and OSRAM Licht AG, satisfy the importation requirement. See Tr. (Malkiewicz) 876:1–7. I therefore find that the importation requirement of section 337 has been satisfied as to OSRAM Opto Semiconductors GmbH and OSRAM Opto Semiconductors, Inc., but has not been satisfied as to OSRAM GMbH and OSRAM Licht AG. With respect to the two named Lumileds respondents, LSG relies on Exhibit A to Lumileds’s Response to the Amended Complaint and Lumileds’s discovery responses to argue that both Lumileds entities satisfy the importation requirement in this investigation. See Tr. (Malkiewicz) 828:15–829:10 (referring to CDX-0009C at 73), 883:1–884:7; CX-1686C; see also PUBLIC VERSION
15 CIB at 2. Lumileds did not contest that Lumileds, LLC, imported accused articles. See RRB at 142. I therefore find that the importation requirement of section 337 has been satisfied as to Lumileds, LLC. On the other hand, LSG has not demonstrated that Lumileds Holding B.V. has imported or sold articles in violation of section 337. Contrary to LSG’s representation, LSG’s witness Mr. Malkiewicz testified that Lumileds Holding B.V. does not satisfy the importation requirement. See Tr. (Malkiewicz) 883:1–884:7. In its response to the Amended Complaint, Lumileds provided information relating to the quantity and value of Lumileds products imported into the United States, but never admitted that Lumileds Holding B.V. participated in the importation. See Lumileds Resp. to Compl. Ex. A; see also id. ¶ 377. Similarly, the Lumileds discovery response relied upon by LSG does not expressly state Lumileds Holding B.V. imported or sold the accused products. Cf. CX-1686C. Instead, it lists volumes of imported products without identifying who imported or sold the products. See id. The discovery response also states that third parties were involved in an unidentified number of importations. Id. at 1 n.1. Weighing the record evidence as a whole, I find that LSG has not established by a preponderance of the evidence that the importation requirement of section 337 has been satisfied as to Lumileds Holding B.V. The Acuity respondents stipulated as to the importation, sale for importation, and/or sale after importation of certain Acuity luminaires. JX-0433C ¶ 5. Acuity argues that this list of stipulated products does not match the list of Acuity products LSG accuses of infringement in this investigation. RIB at 143; compare JX-0433C at 2–5 with CX-0001C at 746–766. Acuity further argues that, “to the extent any violation may be found, its basis should be limited to the accused Acuity luminaires identified in JX-0433C.” RIB at 143. Based on the stipulation marked as exhibit JX-0433C, I find Acuity has imported accused articles. The Commission has found that a single PUBLIC VERSION
16 importation of an accused article is sufficient to satisfy the importation requirement. Certain Trolley Wheel Assemblies, Inv. No. 337-TA-161, Comm’n Op. at 7–8, USITC Pub. No. 1605 (Nov. 1984) (deeming the importation requirement satisfied by the importation of a single product of no commercial value). I find the importation requirement of section 337 has been satisfied with respect to Acuity. LEDVANCE, Current, Leedarson, GE, and Nichia have also each stipulated to the importation, sale for importation, and/or sale after importation of certain accused products. See JX-0008C (GE); JX-0009C (Current); JX-0010C (Leedarson); JX-0011C (LEDVANCE); JX-0432C (Nichia); JX-0435C (LEDVANCE); JX-0436C (Current). Cree and Signify provided information regarding importation of their accused products in response to the Amended Complaint and through discovery responses. See Tr. (Malkiewicz) 828:10–22; CX-0982C (Cree list of products); CX-1694C (Exhibit A to Signify’s Response to Amended Complaint); CX-1108C (Signify’s Interrogatory Responses). Accordingly, I find that the importation requirement of section 337 has been satisfied with respect to LEDVANCE, Current, Leedarson, GE, Nichia, Cree, and Signify. D. In Rem Jurisdiction As discussed above, LSG adduced evidence demonstrating the importation, sale for importation, and sale after importation into the United States of products accused in this investigation. I therefore find the Commission has in rem jurisdiction over the accused products. See Sealed Air Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985–86 (C.C.P.A. 1981) (noting the Commission has jurisdiction over imported goods). E. Standing Respondents do not dispute LSG’s ownership of the asserted patents. The record demonstrates that LSG has standing in this investigation due to its ownership by assignment of the PUBLIC VERSION
17 asserted patents. See Compl. Exs. 9, 13–14, 16–17, 20–23, 25, 28–29 (’053 patent); Compl. Exs. 11–14, 16–17, 20–23, 25, 28 (’421 patent). III. LEGAL PRINCIPLES A. Infringement In a section 337 investigation, the complainant bears the burden of proving infringement of the asserted patent claims by a preponderance of the evidence. See Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1349 (Fed. Cir. 2010). This standard “requires proving that infringement was more likely than not to have occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir. 2005). Literal infringement is a question of fact. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). “Literal infringement requires the patentee to prove that the accused device contains each limitation of the asserted claim(s). If any claim limitation is absent, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). B. Claim Construction “An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (internal citations omitted), aff’d, 517 U.S. 370 (1996). Claim construction resolves legal disputes between the parties regarding claim scope. See Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016). Evidence intrinsic to the application, prosecution, and issuance of a patent is the most significant source of the legally operative meaning of disputed claim language. See Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The PUBLIC VERSION
18 intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips v. AWH Corp, 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman, 52 F.3d at 979. As the Federal Circuit explained in Phillips, courts must analyze each of these components to determine the “ordinary and customary meaning of a claim term” as understood by a person of ordinary skill in the art at the time of the invention. 415 F.3d at 1313. “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). “Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Id. at 1314; see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to ‘particularly point[ ] out and distinctly claim[ ] the subject matter which the patentee regards as his invention.”’). The context in which a term is used in an asserted claim can be “highly instructive.” Phillips, 415 F.3d at 1314. Additionally, other claims in the same patent, asserted or unasserted, may also provide guidance as to the meaning of a claim term. Id. The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” Id. at 1316. “In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope PUBLIC VERSION
19 by the inventor.” Id. As a general rule, however, the particular examples or embodiments discussed in the specification are not to be read into the claims as limitations. Id. at 1323. In the end, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct construction.” Id. at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). When the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence (i.e., all evidence external to the patent and the prosecution history, including dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered. Id. at 1317. Extrinsic evidence is generally viewed as less reliable than the patent itself and its prosecution history in determining how to define claim terms. Id. “The court may receive extrinsic evidence to educate itself about the invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999). C. Validity A patent is presumed valid. See 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011). A respondent who has raised patent invalidity as an affirmative defense has the burden of overcoming this presumption by clear and convincing evidence. See Microsoft, 131 S. Ct. at 2242. 1. Anticipation Under 35 U.S.C. § 102, a claim is anticipated, and therefore invalid, when “the four comers of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 PUBLIC VERSION
20 (Fed. Cir. 2000). To be considered anticipatory, the prior art reference must be enabling and describe the applicant’s claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000). 2. Obviousness Under 35 U.S.C. § 103, a patent may be found invalid as obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). Because obviousness is determined at the time of invention, rather than the date of litigation, “[t]he great challenge of the obviousness judgment is proceeding without any hint of hindsight.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011). When a patent is challenged as obvious, the critical inquiry in determining the differences between the claimed invention and the prior art is whether there is an apparent reason to combine the known elements in the fashion claimed by the patent at issue. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417–418 (2007). Thus, based on a combination of several prior art references, “the burden falls on the patent challenger to show by clear and convincing evidence that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, and would have had a reasonable expectation of success in doing so.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007) (citations omitted). Obviousness is a determination of law based on underlying determinations of fact. Star Scientific, 655 F.3d at 1374. The factual determinations behind a finding of obviousness include: (1) the scope and content of the prior art, (2) the level and content of the prior art, (3) the differences PUBLIC VERSION
21 between the claimed invention and the prior art, and (4) secondary considerations of non- obviousness. KSR, 550 U.S. at 399 (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)). These factual determinations are referred to collectively as the “Graham factors.” Secondary considerations of non-obviousness include commercial success, long felt but unresolved need, and the failure of others. Id. When present, secondary considerations “give light to the circumstances surrounding the origin of the subject matter sought to be patented,” but they are not dispositive on the issue of obviousness. Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l., 618 F.3d 1294, 1304–06 (Fed. Cir. 2010). For evidence of secondary considerations to be given substantial weight in the obviousness determination, its proponent must establish a nexus between the evidence and the merits of the claimed invention. See W. Union Co. v. MoneyGram Payment Sys. Inc., 626 F.3d 1361, 1372–73 (Fed. Cir. 2010) (citing In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)). 3. Written Description The issue of whether a patent is invalid for failure to meet the written description requirement of 35 U.S.C. § 112, ¶ 1 is a question of fact. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d 1171, 1188 (Fed. Cir. 2012). The hallmark of the written description requirement is the disclosure of the invention. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The test for determining the sufficiency of the written description in a patent requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. PUBLIC VERSION
22 4. Indefiniteness Pursuant to 35 U.S.C. § 112, ¶ 2, a patent specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. Section 112, ¶ 2 requires “that a patent’s claims, viewed in light of the specification and prosecution history inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). A patent claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A). D. Domestic Industry For a patent-based complaint, a violation of section 337 can be found “only if an industry in the United States, relating to the articles protected by the patent . . . concerned, exists or is in the process of being established.” 19 U.S.C. § 1337(a)(2). The complainant bears the burden of establishing that the domestic industry requirement is satisfied. John Mezzalingua Assocs., Inc. v. Int’l Trade Comm’n, 660 F.3d 1322, 1331 (Fed. Cir. 2011). The domestic industry requirement of section 337 is often described as having an economic prong and a technical prong. InterDigital Commc’ns, LLC v. Int'l Trade Comm’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013); Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, Comm’n Op. at 12–14, USITC Pub. No. 4120 (Dec. 2009). 1. Economic Prong Section 337(a)(3) sets forth the following economic criteria for determining the existence of a domestic industry in such investigations: (3) For purposes of paragraph (2), an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned – (A) significant investment in plant and equipment; PUBLIC VERSION
23 (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing. 19 U.S.C. § 1337(a)(3). Given that the statutory criteria are listed in the disjunctive, satisfaction of any one of them will be sufficient to meet the economic prong of the domestic industry requirement. See Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, Comm’n Op. at 15, USITC Pub. No. 3003 (Nov. 1996). 2. Technical Prong The technical prong of the domestic industry requirement is satisfied when the complainant in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain Microsphere Adhesives, Process for Making Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op. at 8, 1996 WL 1056095 (Jan. 16, 1996). “The test for satisfying the ‘technical prong’ of the industry requirement is essentially [the] same as that for infringement, i.e., a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of the evidence that the domestic product practices one or more valid claims of the patent. See id.; Spansion, 629 F.3d at 1349; Certain Vision-Based Driver Assistance System Cameras and Components Thereof, Inv. No. 337-TA-907, Comm’n Op. at 36, USITC Pub. No. 4866 (Feb. 2019). It is sufficient to show that the products practice any claim of that patent, not necessarily an asserted claim of that patent. See Certain Male Prophylactic Devices, Inv. No. 337-TA-546, Comm’n Op. at 38 (Aug. 1, 2007). PUBLIC VERSION
24 IV. THE ’053 PATENT A. Infringement 1. The ’053 Accused Products a) Nichia At the evidentiary hearing and in its post-hearing brief, LSG argued that the importation and sale of Nichia’s 219B series of products of infringe claims 1, 2, and 5 of the ’053 patent.8 See CIB at 4–39. LSG’s expert Dr. Kuball focused his hearing testimony on an infringement analysis of the Nichia NCSE219B-V1 product. The figure below shows top, side, and bottom views of the Nichia NCSE219B-V1 product: CX-0589 at LSGITC_1439293-300. LSG contends the Nichia NCSE219B-V1 product is “representative” of all Nichia 219B series products. See CIB at 36. In particular, LSG identifies the following Nichia products as “[not] contain[ing] any differences that are material to infringement with respect to meeting any specific claim limitation”: • NVSL219BT-V1 8 As discussed above in Section I.A, claims 1, 2, 3, 5, 6, and 21 of the ’053 patent remain in this investigation. LSG did not argue infringement of claims 3, 6, or 21 at the hearing or in its post- hearing brief. See CIB at 4–39. PUBLIC VERSION
25 • NVSW219BT-V1 • NCSA219B-V1 • NCSC219B-V1 • NCSE219B-V1 • NCSG219B-V1 • NCSR219B-V1 • NVSA219B-V1 • NVSL219BT • NVSL219B-V1 • NVSW219B • NVSW219BT • NCSB219B-V1 CIB at 36–39. Respondents do not dispute LSG’s assertion that these products are materially identical for the purpose of the infringement analysis here. See RRB at 1–40. Based on the record evidence, I find that the Nichia NCSE219B-V1 product is representative of the Nichia 219B series products listed above for purposes of the infringement analysis of claims 1, 2, and 5 of the ’053 patent. b) Acuity LSG also accuses Acuity of infringing claims 1, 2, and 5 of the ’053 patent, alleging “Acuity purchases and imports Nichia’s infringing 219B series of packages from various suppliers, including Nichia and Universal Lighting Technologies.” See CIB at 39 (citing Tr. (Kuball) 232:24–234:8); CX-4191C (Quinlan Dep.) at 41:5–13, 44:5–12, 45:2–7. LSG’s expert Dr. Kuball testified that he used Acuity’s interrogatory responses (CX-1075C) at pages 173–240 to determine PUBLIC VERSION
26 which Acuity luminaires use the Nichia 219B series of products and summarized information relating to Acuity’s purchase and use of the Nichia 219B series products in CX-0001C. Tr. (Kuball) 230:9–232:23, 232:24–238:24. Acuity disputes that its luminaires incorporate the Nichia 219B series LEDs, arguing that “Acuity does not currently use the Accused 219Bs . . . Acuity historically used them, but they have been replaced in those luminaires with non-accused Nichia 219C/319 packages.” RRB at 40–41 (emphasis original) (citing CX-1075C at 32–49; CX-4191C (Quinlan Dep.) at 89:9–92:13). LSG and Acuity both rely on Exhibit CX-1075C in support of their arguments here. The exhibit is titled “Acuity Respondents’ Eighth Supplemental and Corrected Objections and Responses To Complainants’ First Set Of Interrogatories.” CX-1075C at 1. That discovery response contains a chart titled “Updated Exhibit 1” with the following columns: • SUPPLIER_NUMBER • SUPPLIER_NAME • ITEM • DESCRIPTION • QTY • SPEND Id. at 173–240. Each page of Updated Exhibit 1 shows many products with “219B” descriptors, with quantities numbering in the millions. See, e.g., CX-1075C.0173–.0240. This evidence suggests that certain Acuity luminaries did incorporate Nichia 219B series LEDs at one time. In contrast, the narrative interrogatory responses cited by Acuity do not contain any reference to the Nichia 219B series. Cf. CX-1075C.0033–.0040. The luminaries listed in the passages cited by Acuity PUBLIC VERSION
27 appear instead to incorporate Nichia 219C series LEDs, which are not accused of infringement. See, e.g., CX-1075C.0040 (listing “NVSW219CT”). The deposition testimony of Acuity’s corporate witness Mr. Quinlan is unclear as to whether the narrative interrogatory responses are meant to supplant the listing in Updated Exhibit 1. See CX-4191C (Quinlan Dep.) 89:9–92:13. The evidence thus shows that, at least during the period covered by Acuity’s discovery responses, both the Nichia 219B series and the Nichia 219C series of LEDs were incorporated into Acuity’s luminaires. Whether some Acuity products now incorporate the Nichia 219C series LEDs does not change the infringement analysis of those Acuity products in evidence that contain the Nichia 219B series. Acuity’s practices going forward may have ramifications on an appropriate remedy in the event a violation of section 337 is found, and I address that issue in more detail below. 2. Claim 1 The following subsections analyze the accused Nichia 291B series products, with a focus on the representative NCSE219B-V1 product. As set forth below, the evidence demonstrates that the Nichia 219B series products do not infringe claim 1 of the ’421 patent. a) “A packaged LED for high temperature operation comprising: ” The parties disagree as to whether the phrase “for high temperature operation” recited in the preamble to claim 1 is limiting. LSG argues that the preamble is not limiting; Respondents argue that it limits the invention to LED packages capable of handling operational and die temperatures of up to 200° C and 250° C, respectively. CIB at 5–10; RRB at 3–7. As discussed below, I find that the preamble phrase “for high temperature operation” does not limit the scope of claim 1 of the ’053 patent. Generally speaking, the preamble does not limit the scope of the invention defined in the claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). A preamble PUBLIC VERSION
28 can be limiting where “it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). By contrast, a preamble is not limiting when a patent “defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Artic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019). This follows from the long-established principle that patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, 289 F.3d at 809 (citing In re Gardiner, 171 F.2d 313, 315–16 (C.C.P.A. 1948) (“It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof.”). Here, the body of claim 1 of the ’053 patent describes a structurally complete LED package. See ’053 patent at 9:5–16. The phrase “for high temperature operation” adds no further structural meaning to the claim; the structure described in claim 1 would remain intact if the words “for high temperature operation” were deleted from the preamble. See Catalina Mktg. Int’l, 289 F.3d at 809 (“[A] preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.”). When I asked Respondents’ expert Dr. Schubert at the evidentiary hearing if he had given an opinion that the phrase “for high temperature operation” is “necessary to understand the structure of the invention recited in the remainder of the claim,” he admitted he offered no such opinion. Tr. (Schubert) 1068:19–25. The phrase “for high temperature operation” also does not provide an antecedent basis for limitations in the body of the claim, which weighs in favor of a conclusion that this preamble phrase is not limiting. See Arctic Cat Inc., 919 F.3d at 1329 (holding that the preamble in question PUBLIC VERSION
29 was not limiting because, inter alia, the preamble did not supply an antecedent basis for any terms in the body of the claim); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010) (same). A “review of the entirety of the patent” does not compel a different conclusion. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). The specification of the ’053 patent discloses embodiments of the invention a person of skill in the art would understand to be operable across a range of temperatures. For example, the specification teaches that “prevalent” plastic LED packages have an operational temperature limit of about 80° C and “[s]ome LED die . . . will operate at 120° C.” ’053 patent at 1:32–34. The specification never disclaims use of the invention with such LED packages. The specification also states the LED used in the invention “can be made by the low temperature co-fired ceramic on metal technique (LTCC-M),” a prior art technique. Id. at 1:54–56, 7:29–39. Reinforcing the flexible application of the invention with such devices, the specification states: “The system can be tailored to be compatible with devices including silicon-based devices, indium phosphide-based devices and gallium arsenide based-devices, for example, by proper choice of the metal for the support board and of the glasses in the green tapes.” Id. at 7:19–24. The patent goes on to explain why the “proper choice” of metal and glasses must be made: “The ceramic layers of the LTCC-M structure must be matched to the thermal coefficient of expansion of the metal support board.” Id. at 7:25–27. In other words, as the invention passes through a range of temperatures, the ceramic layers and metal support board must expand and contract at the same rate to avoid damage to the package. Thus, the teachings of the specification do not support a conclusion that the claimed invention must be operable above 200° C; it “can be tailored to be compatible with devices” operating at a range of temperatures. PUBLIC VERSION
30 The specific temperatures Respondents propose in their construction are described in only three places in the ’053 patent. First, the Background of the Invention describes an “industry preference” for an LED package with operational temperature “of about 200° C.” ’053 patent at 1:33–35. But an industry preference for an improvement over the prior art is not a declaration by the inventors about the scope of the invention. See Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x 23, 29 (Fed. Cir. 2012) (not selected for publication) (a claim preamble reciting an “improved replacement helicopter landing gear assembly” was not limited to replacement gear even though the background section of the patent said it would be “beneficial to have a replacement landing gear assembly that would have a substantially longer service life than the prior art landing gear assemblies”). Next, the Summary of the Invention states the diode described in the patent “can operate at temperatures as high as 250° C.” ’053 patent at 1:56–57. At best, this statement reflects the capability of a preferred embodiment. It is not a statement excluding all LED structures that cannot operate at 250° C from the invention. See SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1304 (Fed. Cir. 2003) (where a specification stated that “each handgrip shift actuator contains a generally cylindrical cam member,” the claim term “shift actuator” did not require a cam member because the specification statement was merely a preferred embodiment). Finally, the Abstract contains a similar statement that the LED package “can operate at temperatures as high as 250 C.” ’053 patent at cover page. Like the statement in the Summary of the Invention, this statement merely reflects the capability of a preferred embodiment; it does not limit the invention. See MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142, 151 (Fed. Cir. 2011) (not selected for publication) (declining to limit claims based on language in the abstract PUBLIC VERSION
31 and summary sections because it did not represent “the full scope of the embodiments in the specification”). After reviewing the entire ’053 patent, including the language of the claim, I conclude that the preamble phrase “for high temperature operation” is “simply a ‘laudatory term’ that only sets forth the purpose of the claimed invention” and is not limiting. See Allen Eng’g, 299 F.3d at 1346–47. With this understanding, the evidence demonstrates that the accused Nichia NCSE219B-V1 product is a packaged LED, as are the rest of the 219B series of products. See, e.g., CX-4180C (Amo Dep.) at 91:7–14. b) “a metal base, ” I construed the disputed term “base” as part of the claim construction order issued as Order No. 31. See CC Order at 22–24. In that order, I stated: “I will interpret the term ‘base’ according to its ordinary meaning in the art, which encompasses terms like ‘support board’ and ‘substrate.’” Id. at 24. I hereby incorporate the discussion of the term “base” on pages 22–24 of Order No. 31 as part of this initial determination. LSG argues that each of the accused Nichia produces has the claimed “base” in the form of a “three-piece copper metal base” on the bottom of the LED package. See CIB at 10. In particular, LSG’s expert Dr. Kuball “noted that the heat spreading effect of the metal base in the Nichia 219B series, as well as its effect in lending strength to the ceramic layer by reducing cracking during soldering, are both closely matched with the ’053 Patent’s teachings regarding the ‘metal base.’” Id. at 12. Dr. Kuball used the following demonstrative exhibit—an x-ray side view of the NCSE219B-V1 product—to highlight the alleged “base” in brown: PUBLIC VERSION
32 CDX-0005C.25. These brown-highlighted structures comprise a layer of copper approximately 30 microns thick, less than the thickness of a human hair. See Tr. (Kuball) 186:11–17; Tr. (Jokerst) 1181:12–14; CX-4179C (Tanaka Dep.) at 111:12–112:14; RX-0388C.0004 (delivery specification for accused product, per stipulation (JX-0432C); RX-0386C.0004 (same); RX-0389C.0004 (same); RX-0391C.0034 (same). Based on the record evidence, I find that the three structures identified by LSG in the accused product are not a “base” as that term is used in the context of the ’053 patent. A comparison of CDX-0005C.25 and Figure 5 of the ’053 patent demonstrates that these structures correspond to the anode/cathode and thermal connection pads taught in the ’053 patent: ’053 patent at Figure 5 (annotated). PUBLIC VERSION
33 In my claim construction order, I stated that a person of ordinary skill in the art would not understand the Figure 5 elements 15A, 15B, and 16 (highlighted in red above) to constitute the claimed “base.” See CC Order at 24. That conclusion was informed by the teachings of the drawings and written description, which teach element 51 is a “metal base” and elements 15A, 15B, and 16 are connection pads distinct from the “base.” ’053 patent at 4:1–19, Fig. 5. Figure 5 of the ’053 patent does not provide a direct analogy to the accused Nichia NCSE219B-V1 product, however. The accused product differs from the LED configuration shown in Figure 5 in that there is no structure corresponding to metal base 51 in the accused product. The closest analog to metal base 51 in the accused product is a ceramic substrate or support board. See Tr. (Kuball) 478:19–479:4; Tr. (Schubert) 935:21–936:4, 940:3–941:9; RX-0386C.0003 (delivery specification for accused product, per stipulation at JX-0432C); RX-0388C.0004 (same); RX-0389C.0004 (same); RX-0391C.0034 (same); CX-4178C (Miki Dep.) at 96:1–10; CX-4181C (Amo Dep.) at 122:15–123:14. Neither is made of metal. LSG is therefore left with the argument that the metal pads located below the ceramic substrate comprise the claimed “metal base.” The metal pads identified by LSG are not the claimed “metal base” because the evidence shows that these copper structures are too thin and malleable to provide a supportive substrate to the LED package; it is the aforementioned ceramic structure that provides a supportive substrate to the LED package. See Tr. (Kuball) 477:15–479:4; Tr. (Schubert) 935:21–936:4, 939:11–21, 940:3–941:9; RX-386C.0003; RX-0388C.0004; RX-0389C.0004; RX-0391C.0034; CX-4181C (Amo Dep.) at 122:15–123:14; RX-0132C (Blonder Dep.) at 119:12–120:9. Nichia’s expert Dr. Schubert testified that, if a force were applied to a Nichia package and, “if that force is so PUBLIC VERSION
34 strong that it would crack the . . . ceramic base, then the metal could not prevent that . . . . Metal is a soft, malleable material.” Tr. (Schubert) 939:11–21. LSG’s argument that the “heat spreading effect” of copper demonstrates the metal pads are the claimed “base” is irrelevant because the claim language does recite any heat-spreading requirement for the “base.” See CIB at 12. Additionally, LSG’s argument that the copper pads protect the ceramic from cracking is premised on a misreading of deposition testimony given by Nichia witness Mr. Amo. See id. At his deposition, Mr. Amo testified that the copper in the metal pads protects against “soldering crack,” and not necessarily cracking of the ceramic package component. See CX-4181C (Amo Dep.) at 131:6–20 (testifying that copper “has an effect to suppress that soldering crack”); Tr. (Schubert) 938:10–939:21. I therefore find that LSG has not shown that the accused Nichia NCSE219B-V1 product has a “metal base” as required by claim 1 of the ’053 patent. c) “the metal base including an underlying thermal connection pad and a pair of underlying electrical connection pads;” On the underside of the copper pads on the accused Nichia product (from the perspective of the x-ray image), “there is a layer of nickel plating, and around that area of nickel plating there’s the external surface which is plated with gold.” CX-4180C (Amo Dep.) at 18:2–9. LSG argues that the “nickel and gold plating below the copper constitutes the underlying thermal and electrical connection pads” recited in claim 1. CIB at 19. Dr. Kuball used the demonstrative below to illustrate this argument: PUBLIC VERSION
35 CDX-0005C.37. Respondents do not dispute the three metal structures have “an underlying thermal connection pad and a pair of underlying electrical connection pads” as recited in claim 1. See RRB at 13–20. Although I decline to find that these metal structures are the “base” recited in claim 1, I nevertheless conclude that the accused Nichia devices have “an underlying thermal connection pad and a pair of underlying electrical connection pads.” d) “a layer of ceramic overlying the metal base; and” The evidence shows that the accused Nichia product has a layer of alumina ceramic overlying the three copper structures that LSG argues is the claimed “base.” See Tr. (Kuball) 202:18–20. The following demonstrative exhibit provided by LSG’s expert Dr. Kuball identifies the ceramic layer in pink: PUBLIC VERSION
36 CDX-0005C.42. Although I do not find that the accused Nichia product has a “base” as that term is used in claim 1, I do find the evidence shows “a layer of ceramic overlying . . .” the structure LSG calls the base. e) “an LED mounted on the ceramic layer, ” The undisputed evidence shows that the accused Nichia product comprises an LED mounted on the ceramic layer. See Tr. (Kuball) 203:4–17. The following demonstrative exhibit provided by LSG’s expert Dr. Kuball identifies the LED in purple: CDX-0005C.47. f) “wherein the LED includes a pair of electrodes electrically connected to respective underlying electrical connection pads, ” The record evidence shows that the LED in the accused Nichia product includes “a pair of electrodes electrically connected to respective underlying electrical connection pads.” Tr. (Kuball) 203:18–204:11. This connection is illustrated in green in Dr. Kuball’s demonstrative exhibit reproduced below: PUBLIC VERSION
37 CDX-0005C.49. g) “and wherein the LED is thermally coupled to the metal base by one or more thermal vias, ” The parties disagree as to whether the LED in the accused Nichia product is thermally coupled9 to the metal pads at the bottom of the package10 by one or more thermal vias.11 See CIB at 21–33; RRB at 24–32. As discussed more fully below, I find that the accused Nichia product does not satisfy this claim limitation because the accused vias are not “thermal vias” and because the accused vias do not thermally couple the LED to the metal pads. LSG’s expert Dr. Kuball provided an opinion stating that the accused Nichia 219B series products have two architectures for the accused thermal vias. Tr. (Kuball) 207:15–208:2. According to Dr. Kuball, the majority of accused 219B series models have two thermal vias, a top thermal via and a bottom thermal via. Tr. (Kuball) 208:10–210:8. Dr. Kuball illustrated his testimony with demonstrative exhibits of a cross-section x-ray view, an overhead x-ray view, and 9 The parties agree that “thermally coupled” means “coupled by way of heat transfer.” See Tr. (Kuball) 204:19–24. 10 LSG’s argument regarding this phrase assumes that the microscopically thin copper pads on the bottom of the accused Nichia packages correspond to the claimed metal “base.” I have rejected that position above. In this section I consider whether a thermal via couples the LED to the copper pads in the accused devices. 11 The parties agree that the term “thermal vias” means “vias that enhance heat flow.” See CC Order at 25. The parties further agree that the word “via” is an acronym for “vertical interconnect access.” See id. at 25 n.8. PUBLIC VERSION
39 CDX-0005C.57. Dr. Kuball also testified that a minority of accused 219B series models have only one thermal via in the bottom ceramic layer. Tr. (Kuball) 207:15–21, 208:22–23. He illustrated his testimony with the following demonstrative exhibit: CDX-0005C.54. PUBLIC VERSION
40 LSG argues that, in both types of architectures, “the LED in the 219B series is thermally coupled through the bottom metallization and out of the pads at the very bottom of the package.” See CIB at 24 (citing Tr. (Kuball) 206:19–207:2). Note that Dr. Kuball’s annotations do not highlight a red path from the LED on top of the package to the metal pads on the bottom in any image. Instead, LSG argues that a thermal via can be achieved between the LED and the metal pads with “no direct physical connection between them.” See id. at 21. According to LSG, objects A and C can be thermally coupled without a physical connection if heat transfer occurs from object A to object C through intervening object B by way of the movement of photons. See id. (citing Tr. (Kuball) 204:25–205:12). LSG’s theory was echoed in Dr. Kuball’s testimony that “all vias in general will act as . . . thermal vias to some degree.” See Tr. (Kuball) 540:8–10. Although this statement of the transitive property of heat may be correct in a theoretical context, it is not how a person of ordinary skill in the art would understand the claimed invention in the context of the ’053 patent teachings. The patent claim requires thermal coupling between the LED and the metal pads “by one or more thermal [vertical interconnect accesses],” not by just any intervening element. If LSG’s argument were accepted, anything that transferred any heat at all (and all elements do) would satisfy the limitation. Such an interpretation would read the required “thermal vias” out the claim and therefore must be rejected. See Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred is preferred over one that does not do so.”). Other elements identified by LSG as the alleged “thermal vias” are shown in the images below: PUBLIC VERSION
41 RDX-0005C.0021. Again, the record does not establish that these vias (highlighted in red) provide heat transfer between the LED and the metal pads; instead the record shows these vias are provided for plating during the manufacturing process and for testing connection points. See Tr. (Kuball) 207:3–210:8; Tr. (Schubert) 949:3–951:8 (referring to RDX-0005C.0021); RX-0482 (inverted); RX-0483; RX-0629 (inverted); RX-0630; RX-0529 (inverted); RX-0531; see also JX-0432C. For instance, Nichia research scientist Mr. Tanaka testified at deposition that the accused vias are not for heat dissipation, but rather are used for plating. CX-4179C (Tanaka Dep.) at 13:7–14, 127:10–130:21. Even LSG’s expert Dr. Kuball testified that Nichia “likely [] would have used [the alleged via] for testing in some form.” Tr. (Kuball) 536:10–14. LSG argues that the intended purpose of the accused vias is legally and factually irrelevant. CIB at 31 (citing Marrin v. Griffin, 599 F.3d 1290, 1294 (Fed. Cir. 2010) (“For apparatus claims, . . . generally patentability ‘depends on the claimed structure, not on the use or purpose of that structure.’”) (citation omitted)). But the question here is whether a person of ordinary skill would understand the claimed “thermal via” to encompass any arbitrarily designated elements that theoretically could transfer even minuscule amounts of heat. The patent’s teachings answer that question. The ’053 patent teaches thermal vias actively “enhance[]” heat flow. ’053 patent at PUBLIC VERSION
42 Abstract, 1:51–53. The patent also teaches that thermal vias are “numbered and dimensioned to conduct heat.” Id. at 4:26–28. In this case, it is “entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language.” See Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). Other teachings in the ’053 patent confirm that any arbitrary element that conducts heat is not a “thermal via.” The ’053 patent distinguishes between “electrically conductive vias” and “thermal vias.” Compare ’053 patent at 2:54–57 and 6:35–37 with id. at 4:26–28. Even if thermal vias can fulfill an electrical role, they still must be positioned and dimensioned in sufficient numbers to fulfill their thermal role. See Tr. (Schubert) 951:23–955:3; see ’053 patent at Fig. 6 and 4:20-28. The record evidence demonstrates that the vias identified by LSG would not provide thermal enhancement to the LED package. Tr. (Schubert) 949:3–951:22; CX-4180C (Amo Dep.) at 25:14–27:17, 78:7–79:8. Specifically, Nichia’s expert Dr. Schubert testified that a person of ordinary skill would understand these vias do not provide significant thermal improvement because of their narrow dimension and location near the package edge (as opposed to under the LED die). See Tr. (Schubert) 949:3–951:22. And Nichia’s witness Mr. Amo testified: “[T]here’s no via right . . . below the chip. Therefore, there’s no heat dissipation effect provided by [the] via.” CX-4180C (Amo Dep.) at 10:1–5, 78:7–79:8. Other evidence demonstrates the vias do not measurably increase heat flow. For example, Dr. Schubert testified that he used a mathematical model to calculate the theoretical die temperature improvement due to the single alleged via in the NVSW219BT identified by Dr. Kuball. Dr. Schubert’s calculation took into consideration the dimension, location, orientation, and material properties of the LED, alleged vias, heat spreader, and ceramic substrate. PUBLIC VERSION
43 Tr. (Schubert) 959:2–962:12; see RX-0378C; RX-0391C; RX-0388C; RX-0389C. Dr. Schubert concluded that the alleged “thermal” via would have resulted in a change of LED chip temperature of only 0.02° C. Tr. (Schubert) 958:13–18. Dr. Schubert performed a similar calculation for the accused products with two offset vias, such as those Dr. Kuball identified in the Nichia NCSE219B-V1. Dr. Schubert concluded that the temperature change would be only 0.04° C. Tr. (Schubert) at 959:19–959:11. The minuscule temperature changes calculated by Dr. Schubert using a theoretical model are practically immeasurable in the real world, even using “gold standard” measurement techniques. See Tr. (Schubert) 959:12–20. Instrument calibration is limited to 1° C and results due to manufacturing variations among samples would not be distinguishable from a thermal variance as small as the ones Dr. Schubert calculated. See Tr. (Schubert) 958:13–961:8. According to Dr. Schubert, “for practical purposes, this change in temperature is zero.” See Tr. (Schubert) 961:9–23. Furthermore, the evidence shows that the elements identified by LSG are not positioned in such a way as to “thermally couple[]” the LED to the metal base along a vertical path. The term “via” as used in the art is an acronym for “vertical interconnect access,” as all parties have agreed. See CC Order at 25 n.8 (emphasis added). Therefore, in order to be the claimed “thermal via,” the accused structure must vertically connect the LED to the metal base. One of LSG’s demonstrative exhibits shows two views of three different LED packages. The alleged thermal vias are marked in red in both views: PUBLIC VERSION
44 RDX-0005C.0021 (images from RX-0482 (inverted); RX-483; RX-0629 (inverted); RX-0630; RX-0529 (inverted); RX-0531); see also JX-0432C. The top image for each package is a side view, showing a hemispherical enclosure and a flat LED beneath the center of the dome. The bottom image is a top view, in which the LED is in the center of the circle. As can be seen, none of the alleged thermal vias are positioned proximate to the LED; they are at best on the periphery of the circular LED enclosure. See Tr. (Schubert) 949:3–951:11, 967:4–969:22. Thus, the alleged vias are not positioned to provide a vertical thermal coupling from the LED to the metal pads. The weight of the record evidence shows that the elements LSG calls thermal vias do not provide a measurable change in die temperature. See Tr. (Schubert) 948:1–22, 951:23–955:3, 959:12–961:23. They are not positioned to provide a vertical thermal coupling between the LED and the metal pads. For all of the reasons discussed above, I find that the accused structure is not the claimed “thermal via.” h) “and thermally coupled through the metal base to the thermal connection pad.” The evidence indicates that the LED in the accused Nichia product is “thermally coupled” through the underlying copper pads to the thermal connection pad. See Tr. (Kuball) 216:10–217:1. PUBLIC VERSION
45 3. Claim 2 Dependent claim 2 of the ’053 patent reads: 2. The packaged LED of claim 1 wherein the underlying electrical connection pads and the underlying thermal connection pad are coplanar to permit surface mounting on corresponding pads of a PC board. As illustrated below, LSG has adduced evidence showing that the underlying connection pads and the underlying thermal connection pad in the accused Nichia product are coplanar. See Tr. (Kuball) 226:2–228:4. CDX-0005C.37. Respondents do not dispute that this claim limitation is satisfied. See RRB at 1–43. I therefore find LSG has demonstrated that the additional limitation recited in claim 2 has been satisfied. Nevertheless, because there is no infringement of claim 1 from which claim 2 depends, there is no infringement of claim 2. 4. Claim 3 As discussed above in Section I.A, LSG asserted claim 3 of the ’053 patent in its Amended Complaint, and that claim remains at issue in this investigation. LSG did not argue infringement PUBLIC VERSION
46 of claim 3 in its post-hearing brief. See CIB at 4–39. Any allegation of infringement of claim 3 of the ’053 patent is therefore deemed abandoned or withdrawn pursuant to my Ground Rule 14.1. Order No. 2 at 26 (June 25, 2019) (“Any contentions for which a party has the burden of proof that are not set forth in detail in the post-hearing initial brief shall be deemed abandoned or withdrawn.”). 5. Claim 5 Dependent claim 5 of the ’053 patent reads: 5. The packaged LED of claim 1 wherein at least one electrode of the LED is connected to one of the underlying electrical connection pads by an electrical path including the metal base. As illustrated below, LSG has shown that at least one electrode of the LED is connected to one of the underlying electrical connection pads by an electrical path that includes the copper structure LSG contends is the “base” recited in claim 1. See Tr. (Kuball) 228:5–18. CDX-0005C.85. Respondents do not dispute that this limitation is satisfied. See RRB at 1–43. I therefore find LSG has demonstrated that the additional limitation recited in claim 5 has been satisfied. Nevertheless, because there is no infringement of claim 1 from which claim 5 depends, there is no infringement of claim 5. PUBLIC VERSION
47 6. Claims 6 and 21 As discussed above in Section I.A, LSG asserted claims 6 and 21 of the ’053 patent in its Amended Complaint, and those claims remain at issue in this investigation. LSG did not argue infringement of claims 6 and 21 in its post-hearing brief. See CIB at 4–39. Any allegations of infringement of claims 6 and 21 of the ’053 patent are therefore deemed abandoned or withdrawn pursuant to my Ground Rule 14.1. Order No. 2 at 26 (June 25, 2019) (“Any contentions for which a party has the burden of proof that are not set forth in detail in the post-hearing initial brief shall be deemed abandoned or withdrawn.”). B. Technical Prong of the Domestic Industry Requirement 1. The ’053 Domestic Industry Product LSG argues that the Series A+ PAR30 LED Gimbal Lamp, which includes a custom Luminus SST-20-W40H-J4401-LS (“SST-20”) LED package, practices claims 1, 2, and 5 of the ’053 patent. CIB at 42 (citing Tr. (Maxik) 659:15–660:17); see also CIB at 42–59. For the reasons discussed below, I find that LSG has not shown that the SST-20 practices the invention of any claim of the ’053 patent. A diagram of the Series A+ domestic industry product is shown below, with nine custom Luminus SST-20 packages: PUBLIC VERSION
49 structures in the SST-20 are at least as thick as the copper structures identified as the “base” in the accused Nichia 219B series of products. Tr. (Kuball) 243:5–21. An annotated side-view x-ray image of the SST-20 is shown below, with the alleged “base” colored in brown: CDX-0005C.110. For reasons similar to those discussed in the infringement section above, I find that the SST-20’s pads are not a “metal base.” The substrate of the SST-20 is made of ceramic; the thin, separate copper pads identified by LSG are plated onto the ceramic substrate and do not provide a supportive structure for the LED package. See Tr. (Schubert) 972:4–974:23, 240:12–21, 247:9–12; JX-0043C at 5 (claim chart for “Series A+™ PAR30 LED Gimbal Lamp” containing “custom Luminus LED package”); CX-0964; JX-0119 at LSGITC_0749041 (“Luminus SST-20-W Product Datasheet”). c) “the metal base including an underlying thermal connection pad and a pair of underlying electrical connection pads; ” Similar to the infringement arguments put forth for the accused Nichia products, LSG argues that the copper pads of the SST-20 have an underlying thermal connection pad and a pair of underlying electrical connection pads. See CIB at 46. The bottom surfaces of the copper pads are silver-plated, and LSG’s expert Dr. Kuball testified that the bottom surfaces constitute the claimed underlying thermal and electrical connection pads. JX-0119 at 14; Tr. (Kuball) 242:15–243:2. PUBLIC VERSION
50 Dr. Kuball used the demonstrative below to illustrate this argument: CDX-0005C.109 (annotating CX-0964 with the alleged electrical connection pads in green and alleged thermal connection pad in yellow). Respondents do not dispute the three copper structures have “an underlying thermal connection pad and a pair of underlying electrical connection pads” as recited in claim 1. See RRB at 13–20. I conclude that the SST-20 devices include “an underlying thermal connection pad and a pair of underlying electrical connection pads.” The entire limitation is not satisfied, however, because the underlying connection pads are not part of a metal base, as claim 1 requires. d) “a layer of ceramic overlying the metal base; and ” The evidence shows that the SST-20 has a layer of ceramic overlying the three copper structures identified by LSG as the claimed “base.” See Tr. (Kuball) 227:5–12. The following demonstrative exhibit provided by LSG’s expert Dr. Kuball identifies the ceramic layer in pink: PUBLIC VERSION
51 CDX-0005C.113. I conclude that that the SST-20 devices include “a layer of ceramic overlying” three copper connection pads. The entire limitation is not satisfied, however, because the ceramic layer does not overlie a metal base, as claim 1 requires. As noted above, the SST-20 devices have no metal base. e) “an LED mounted on the ceramic layer, ” The undisputed evidence shows that the SST-20 comprises an LED mounted on the ceramic layer. Tr. (Kuball) 247:13–19. The following demonstrative exhibit provided by LSG’s expert Dr. Kuball identifies the LED in purple: CDX-0005C.115. f) “wherein the LED includes a pair of electrodes electrically connected to respective underlying electrical connection pads, ” The record evidence shows that the LED in the SST-20 includes “a pair of electrodes electrically connected to respective underlying electrical connection pads.” Tr. (Kuball) PUBLIC VERSION
52 247:24–248:5. This connection is illustrated in green in Dr. Kuball’s demonstrative exhibit reproduced below: CDX-0005C.117. g) “and wherein the LED is thermally coupled to the metal base by one or more thermal vias, ” LSG argues that its SST-20 satisfies this claim limitation. CIB at 48–58. LSG’s corporate witness Fredric Maxik testified that LSG specifically ordered the manufacture of a custom version of the SST-20 package that includes a “thermal via.” Tr. (Maxik) 657:12–660:17. LSG argues that the “thermal via” in the custom SST-20 package extends from directly below the LED die into the top portion of the ceramic layer. CIB at 48. An annotated cross-section image of the custom SST-20 package is shown below, with the alleged thermal via circled in red: CX-0964 (Luminus SST-20 Images). For reasons similar to those discussed in the infringement section, I find that the SST-20 does not have a “thermal via.” As an initial matter, LSG’s alleged “thermal via” is not a via as that term is understood in the art. The parties have agreed that “via” is an acronym for “vertical interconnect access.” See PUBLIC VERSION
53 CC Order at 25 n.8. The alleged thermal via can be seen in the following figure from LSG’s claim charts: JX-0043C at LSGITC_1431495. It is interesting to note that, of the many sample SST-20s reviewed by expert witnesses Drs. Kuball and Schubert, only one sample contains the alleged thermal via structure. See Tr. (Schubert) 976:4–977:8, 977:23–978:18; JX-0043C (LSG’s claim chart incorporating images from CX-0964); RX-0086C (Respondents’ images of SST-20); RX-0080C (Declaration accompanying Respondents’ images). Respondents speculate that the alleged via is in actually a “singular manufacturing defect” because of its shape, the presence of a void therein, and its presence in only one of the sample SST-20s. See RRB at 36–38. Indeed, many of LSG’s own x-ray images of the SST-20 fail to show the alleged via. See CX-0964 at LSGITC_1434588 (showing Complainants’ images of DI product), LSGITC_1434590, LSGITC_1434589. The weight of the evidence thus PUBLIC VERSION
54 indicates the alleged thermal via that LSG relied upon at the hearing is a singular manufacturing defect, and I so find. Defect or not, the alleged thermal via12 is not a via at all because it does not interconnect elements through an intervening layer; it only extends one third of the way down into the ceramic substrate and does not connect the LED die to anything else. See Tr. (Kuball) 500:24–503:1. Named inventor Dr. Blonder also testified that a structure like the one present in the SST-20 would not be a “via” to a person of skill in the art: Q. Would you agree that for something to be considered a via, it has to interconnect two faces of a layer? * * * A. A via connects -- I don’t know, faces of a layer might be restrictive. A via connects two things together, usually through an intermediate -- an intermediate area, connects two things through an intermediate area. They might be faces, they might not be faces. * * * A. Typically in a semiconductor context, a via would be connecting two layers together and where it emerges into the upper and lower layer, it would be, in general, planar. Q. So if you had a layer of ceramic with a divot or indentation in the top surface of the layer ceramic and the divot or indentation didn’t reach the bottom surface of that layer of ceramic, would you consider that divot or indentation to be a via? * * * A. It would be helpful if you could show me a drawing because I’m not sure I understand what you’re describing. So if you could sketch that or show me an example of what you’re discussing, I could help. Q. Sure. MR. LUCAS: You can mark this as Exhibit 9. 12 Respondents refer to the alleged via as a “divot.” See, e.g., RRB at 33. PUBLIC VERSION
55 (Exhibit 9, Hand-drawn diagram, marked for identification.) MR. LUCAS: My poor drawing. Q. So if A is a layer of ceramic, and B would be that divot or indentation that I was trying to describe in my hypothetical – A. Right. Q. -- is that a via, is B a via? A. Is B a via? B would not be considered a via. RX-0132C (Blonder Dep.) at 29:19–31:15 (objections omitted); RX-1256 (Blonder Dep. Ex. 9). And not only is the accused structure not a via, it would not be a “thermal” via because the structure does not enhance thermal conductivity. Specifically, a person of ordinary skill would understand there would not be a thermal enhancement from the alleged via owing to the structure’s location, diameter, and singular number. See Tr. (Kuball) 496:12–15; Tr. (Schubert) 974:24– 976:3, 978:25–979:6, 980:6–11; JX-0043C; RX-0080C; RX-0086C. Furthermore, the evidence shows that the LED is not “thermally coupled to the metal base by” the alleged thermal via. Although the accused structure is located below the LED, it does not PUBLIC VERSION
56 abut the thermal connection pad. See Tr. (Schubert) 979:22–980:5. If this were a thermal coupling, everything in the LED package is a thermal coupling, rendering the term meaningless. For all of the reasons discussed above, I find that LSG has not demonstrated that the SST-20 domestic industry products have the claimed “thermal via.” h) “and thermally coupled through the metal base to the thermal connection pad.” The evidence indicates that the LED in the SST-20 is “thermally coupled” through the underlying copper pads to the thermal connection pad. See Tr. (Kuball) 256:15–25. 3. Claim 2 As illustrated below, LSG has adduced evidence showing that the underlying connection pads and the underlying thermal connection pad in the SST-20 are coplanar. See Tr. (Kuball) 257:1–11. CDX-0005C.109 Respondents do not dispute that this claim limitation is satisfied. See RRB at 1–43. PUBLIC VERSION
57 I therefore find LSG has demonstrated that the additional limitation recited in claim 2 has been satisfied. Nevertheless, because the SST-20 does not practice claim 1, from which claim 2 depends, it also does not practice claim 2. 4. Claim 5 As illustrated below, LSG has shown that at least one electrode of the LED is connected to one of the underlying electrical connection pads by an electrical path that includes the copper structure LSG contends is the “base” recited in claim 1. See Tr. (Kuball) 257:24–258:9. CDX-0005C.138. Respondents do not dispute that this limitation is satisfied. See RRB at 1–43. I therefore find LSG has demonstrated that the additional limitation recited in claim 5 has been satisfied. Nevertheless, because the SST-20 does not practice claim 1, from which claim 5 depends, it also does not practice claim 5. C. Validity 1. Obviousness: Harrah in view of Griffin Respondents argue that claims 1, 2, and 5 of the ’053 patent are rendered invalid as obvious in view of the prior art references Harrah and Griffin.13 RIB at 1–23. As discussed below, I find 13 U.S. Patent No. 6,498,355 to Harrah et al. (“Harrah”) (RX-0010) was filed October 9, 2001, and issued December 24, 2002, and is prior art under 35 U.S.C. §§ 102(a), (e). International Patent Application No. PCT/US00/12720 filed by Robert T. Griffin (“Griffin”) (RX-0016) was published November 16, 2000, and is prior art under § 102(b). PUBLIC VERSION
58 that Respondents have not met their burden to show, by clear and convincing evidence, that the ’053 patent claims are obvious in view of the prior art. The preamble of claim 1 recites: “A packaged LED for high temperature operation comprising . . . .” As discussed above, I have determined that the preamble limitation “for high temperature operation” is not limiting. I therefore turn to whether the structure recited in claim 1 is disclosed in Harrah. With respect to the “metal base” limitation of claim 1, Respondents argue: [The metal pads accused by LSG] do not constitute a “metal base” because, inter alia, they are too thin, are not a substrate or support board, are plated onto the actual substrate (a ceramic substrate), and are explicitly excluded by the ALJ’s claim construction. If such pads were found to constitute a metal base, however, then Harrah, disclosing the same structures, discloses the limitation, “a metal base, the metal base including an underlying thermal connection pad and a pair of underlying electrical connection pads.” With regard to this limitation, Dr. Lebby testified that, if the ALJ adopts Dr. Kuball’s opinion and infringement theory as to the “metal base” limitation, the limitation is met by Harrah’s contact pads 42, 44 and 46. The structures to which Dr. Lebby referred, Bottom N-Contact 42, Bottom P-Contact 44, and Thermal Contact 46, are shown in Harrah’s Figure 4 (above). Dr. Lebby further explained that Bottom N-Contact 42, Bottom P-Contact 44, and Thermal Contact 46 are shown in a bottom side view of LED assembly 58 in Harrah’s Figure 5 (below), and labeled N-Contact 60, P-Contact 62, and Thermal Contact 64, respectively. RIB at 4 (emphasis original). As discussed previously in my infringement analysis, I rejected a factual finding that a microscopically thin layer of metal electroplated onto a copper core constitutes a metal base. I similarly find that the microscopically thin pads identified by Respondents in Harrah are not a “metal base.” Respondents present no argument or evidence that Griffin discloses a “packaged LED for high temperature operation” or a “metal base.” See RIB at 2–3. PUBLIC VERSION
59 Because Respondents have not shown every element of the claimed invention in the prior art, I find that Respondents have failed to show, clearly and convincingly, that claim 1 of the ’053 patent is invalid as obvious based on Harrah in view of Griffin. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006) (stating that motivation to combine and reasonable expectation of success is considered in an obviousness analysis only “if all the elements of an invention are found in a combination of prior art references”); see also Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (“A party seeking to invalidate a patent based on obviousness must demonstrate “by clear and convincing evidence that a skilled artisan would have been motivated to combine the teaching of the prior art references to achieve the claimed invention . . . .”). Claims 2 and 5 also require a “packaged LED for high temperature operation” or a “metal base” by virtue of their dependency from claim 1. For the same reasons noted with respect to claim 1, I find that Respondents have failed to show, clearly and convincingly, that claims 2 and 5 of the ’053 patent are invalid as obvious based on Harrah in view of Griffin. See Medichem, 437 F.3d at 1164; Proctor & Gamble, 566 F.3d at 994. V. THE ’421 PATENT A. Infringement 1. The Accused Products As detailed below, LSG accuses two categories of products of infringing the ’421 patent: (1) LED packages made by manufacturers Nichia, OSRAM, Cree, and Lumileds,14 and 14 LSG collectively refers to Nichia, OSRAM, Cree, and Lumileds as the “LED Manufacturers.” See, e.g., CIB at 61. PUBLIC VERSION
60 (2) luminaires which incorporate those LED packages or LED packages from manufacturers who have not been named as respondents in this investigation. a) The LED Manufacturers LSG contends that the sale and importation of products from Nichia, OSRAM, Cree, and Lumileds infringe claims 1 and 6 of the ’421 patent. CIB at 61–62, 120–54. LSG and its expert Dr. Kuball focus their infringement analysis on the following products, which they assert are representative of other products from the LED Manufacturers: • Nichia NE2G757GT • OSRAM OSLON Black Flat • Cree JK2835AWT • Lumileds LUXEON 3535L See CIB at 61–62. LSG refers to these products collectively as the “LED Manufacturer Representative ’421 Products.” See id. at 61-62. Optical images of the top, side, and bottom of each of these products are reproduced below: CDX-0005C.143. PUBLIC VERSION
61 X-ray cross-section views of each product are reproduced below: CDX-0005C.144. Additional accused products from Nichia, OSRAM, Cree, and Lumileds are discussed in more detail in the sections below. (1) Nichia LSG focuses its infringement analysis on the Nichia NE2G757GT product, which it argues is representative of the other accused Nichia products. See CIB at 61–62. The illustration below is an excerpt from a demonstrative exhibit showing an exploded view of NE2G757GT, including a detail of the metal layers in the lead on which the LED die is mounted. PUBLIC VERSION
62 RDX-0005C.0036 (excerpt from animation, also shown on RDX-0005C.0043, 0050, 0063) (showing, on left, exploded view of NE2G757GT, and on lower right, a magnified view of the metallization layers of a portion of the lead marked with a red box in the exploded view on the left); see also Tr. (Schubert) 979:6–980:5. The illustration below shows the assembled NE2G757GT product from the top (left image) and from a bottom perspective (right image): PUBLIC VERSION
70 RDX-0015; RDX-0018. b) The Luminaire Respondents LSG accuses the Luminaire Respondents15 of infringing claims 1 and 6 of the ’421 patent based on their use of the foregoing Nichia, OSRAM, Cree, and Lumileds products. LSG additionally contends that the Luminaire Respondents infringe the same claims by importing and selling luminaires incorporating LED packages supplied by third parties Samsung, Seoul Semiconductor, BridgeLux, Everlight, APT, TD, and Lextar. See CIB at 154–67. LSG did not present evidence at the evidentiary hearing showing that the third party LED packages met each limitation of the asserted claims. Nevertheless, LSG included a generalization in its post-hearing brief that “each Luminaire Respondent incorporates into its products certain specific LED packages” that infringe the ’421 patent. See CIB at 154; see also CDX-0005C. With respect to the accused third party LED packages, LSG argues that “those third-party packages are equivalent to, and represented by, certain of the LED Manufacturer Representative ’421 Products for purposes 15 The “Luminaire Respondents” refers collectively to Acuity, Current, GE, LEDVANCE, Leedarson, and Signify. See CIB at xix. PUBLIC VERSION
71 of infringement.” See CIB at 163 (citing Tr. (Kuball) 416:23–420:12, CDX-0005C.291–296; CX-4235 (indicating which packages are representative of other packages for purposes of infringement)); see also Tr. (Kuball) 403:8–404:1; CDX-0005C.276 (discussing representativeness and infringement for Acuity); Tr. (Kuball) 404:2–13; CDX-0005C.278 (discussing representativeness and infringement for Signify); Tr. (Kuball) 404:14–405:9; CDX-0005C.280 (discussing representativeness and infringement for LEDVANCE); Tr. (Kuball) 407:20–24, 408:9–21; CDX-0005C.283 (discussing representativeness and infringement for GE); Tr. (Kuball) 414:4–11; CDX-0005C.288 (discussing representativeness and infringement for Current); Tr. (Kuball) 416:23–417:7; CDX-0005C.290 (discussing representativeness and infringement for Leedarson). 2. Claim 1 As set forth below, the evidence shows that none of the LED Manufacturer Representative ’421 Products infringe claim 1 of the ’421 patent. a) “A LED assembly adapted for surface mounting and high temperature operation, the LED assembly comprising: ” With respect to the preamble of claim 1, the parties disagree as to whether the phrase “for . . . high temperature operation” recited in the preamble to claim 1 is limiting. LSG argues that the preamble is not limiting; Respondents argue that it limits the invention to LED packages capable of handling operational and die temperatures of up to 200° C and 250° C, respectively. See CIB at 63–67; RRB at 48–51. As discussed below, I find that the preamble phrase “for . . . high temperature operation” does not limit the scope of claim 1 of the ’421 patent. The preamble phrase “for…high temperature operation” in claim 1 of the ’421 patent is nearly identical to the preamble phrase “for high temperature operation” analyzed above in connection with claim 1 of the ’053 patent. The ’421 patent incorporates the specification of the PUBLIC VERSION
72 ’053 patent and is directed to an LED packaged for “high temperature operation.” See, e.g., ’421 patent at 1:8–15. Thus, the same passages in the specification that support a non-limiting construction of the preamble phrase in the ’053 patent equally support a conclusion that the same phrase in claim 1 of the ’421 patent is not limiting. Beyond the disclosure common to the ’053 patent, the ’421 patent contains additional teachings that weigh against a conclusion that the preamble is limiting. Respondents admit that the ’421 specification “provides several alternative embodiments” and at least one of those embodiments does “not require such ‘high temperature operation.’” RRB at 50. Specifically, the ’421 patent specification describes an embodiment with silicone encapsulant, and Respondents do not dispute that such an embodiment would degrade at temperatures below 200° C. See id. at 50–51. The limitation that Respondents advance does not represent “the full scope of the embodiments in the specification,” which weighs against interpreting the preamble phrase in question as limiting. See MEMS Tech. Berhad, 447 F. App’x at 151. As with claim 1 of the ’053 patent, the body of claim 1 of the ’421 patent describes a structurally complete LED package. See ’421 patent at 7:46–67. The phrase “for high temperature operation” adds no further structural meaning to the claim; the structure described in claim 1 would remain intact if the words “for high temperature operation” were deleted from the preamble. See Catalina Mktg. Int’l, 289 F.3d at 809. The phrase “for high temperature operation” also does not provide an antecedent basis for limitations in the body of the claim, which weighs in favor of a conclusion that this preamble phrase is not limiting. See Arctic Cat Inc., 919 F.3d at 1329; Am. Med. Sys., 618 F.3d at 1359. After reviewing the entire ’421 patent, including the language of the claim, I conclude that the preamble phrase “for high temperature operation” is “simply a ‘laudatory term’ that only sets PUBLIC VERSION
73 forth the purpose of the claimed invention” and is not limiting. See Allen Eng’g, 299 F.3d at 1346–47. With this understanding, the undisputed evidence shows the LED Manufacturer Representative ’421 Products are LED assemblies adapted for surface mounting. See Tr. (Kuball) 261:16–262:10. b) “a thermally conducting base, ” LSG argues that each of the accused ’421 products contains the claimed “thermally conducting base” in the form of “the copper core of the lead frame on which the LED die sits.” See CIB at 68 (citing Tr. (Kuball) 270:3–7). The structures identified by LSG as the “thermally conducting base” are highlighted in brown in the demonstrative exhibits below: CDX-0005C.157. The evidence shows that these structures are “thermally conducting.” Dr. Kuball testified that the accused “thermally conducting base” in the accused products is made of copper, which is a good thermal conductor, and “provides good heat dissipation” for the LED package. Tr. (Kuball) PUBLIC VERSION
74 263:10–21. Whether or not these structures are a “base” as that term has been construed in the context of the asserted patents is an issue contested by the parties. The parties agreed that the term “base” should be construed the same for both asserted patents. See CC Order at 22. As discussed above in connection with the ’053 patent, I interpret the term “base” according to its ordinary meaning in the art, which encompasses terms like “support board” and “substrate.” Id. at 24. (1) Nichia Nichia’s expert Dr. Schubert testified that the accused Nichia products are molded lead frame products without a base, especially because the products do not have a support board or substrate. Tr. (Schubert) 981:9–982:11, 988:17–989:13, 990:23–993:2; CX-0609; JX-0087; CX-0614; CX-0622; JX-0088; CX-0625; CX-0631; JX-0085; JX-0086; CX-0661; CX-0603; CX-0868; JX-0432C. He further testified, for the sake of argument, that if some portion of the products were a “base,” it would be the white resin, which interlocks with and serves as a container for the other portions of the package, including the metal pads LSG identifies as a base. Tr. (Schubert) 989:14–25, 990:8–16, 990:23–993:2; CX-0609; JX-087; CX-0614; CX-0622; JX-0088; CX-0625; CX-0631; JX-0085; JX-0086; CX-0661; CX-0603; CX-0868; JX-0432C. Dr. Schubert testified that, without the white resin, all of the components, including the alleged base, would simply fall out of the package. See Tr. (Schubert) 990:17–993:3; CX-0609; JX-0087; CX-0614; CX-0622; JX-0088; CX-0625; CX-0631; JX-0085; JX-0086; CX-0661; CX-603; CX-868; JX-0432C. LSG argues Dr. Schubert’s testimony regarding Nichia’s accused products was “impeached” by a Lumileds document that refers to the accused structure in the Lumileds products as a metal “base.” See CIB at 72–73 (referring to RDX–0012C at 5, 10). Yet, Dr. Schubert and Lumileds witness Dr. Haque both testified that the “base metal” description in the Lumileds PUBLIC VERSION
75 document refers to the “core material for the metal pads,” and not to a supportive “base” as that term is used in the ’421 patent. Tr. (Schubert) 1040:17–1041:16, 1213:17–24. The interpretation of the Lumileds document given by Dr. Schubert and Dr. Haque was reasonable and consistent with the document as a whole. Dr. Schubert’s testimony that the Nichia products lack the claimed “base” is credible. As I have determined to construe “base” in accordance with its ordinary meaning in the art, I find that the copper structure identified by LSG in the Nichia products is not a “thermally conducting base.” The copper structure does not provide a supportive substrate to the LED package; instead it is the white resin in the LED package that provides structure to the package. (2) OSRAM Like the Nichia products, the evidence shows the OSRAM Black Flat is a molded lead frame product with two leads and without a base. Tr. (Bright) 1088:6–1089:2. OSRAM’s expert Dr. Bright testified that the Black Flat does not have a substrate or a support board. Id. As illustrated in the demonstrative exhibit below, the molded body of the package holds the leads of the lead frame together: PUBLIC VERSION
76 RDX-0006C.0006 (showing 3D CAD drawing of the Black Flat, excerpted from RX-0740C). For the same reasons set forth above with respect to the Nichia accused products, I find that the structures accused by LSG in the OSRAM products are not a “thermally conducting base.” (3) Cree and Lumileds Neither Cree nor Lumileds offered an expert witness to testify as to whether its products have the claimed “thermally conducting base.” See CIB at 69; RRB at 56–60. But LSG’s infringement proofs rested on an argument that “each of the Nichia, OSRAM, Lumileds, and Cree Representative ’421 Products . . . contain practically identical lead frame structures.” CIB at 71. Therefore, for the same reasons set forth above with respect to the Nichia accused products, I find that the structures accused by LSG in the Cree and Lumileds products are not a “thermally conducting base. c) “wherein at least a portion of the thermally conducting base is substantially planar; ” Claim 1 requires that “at least a portion of the thermally conducting base is substantially planar.” The claim also requires that the same “substantially planar portion” be overlaid by “one or more electrically insulating layers,” which together “defin[e] a surface cavity.” A subsequent limitation further requires that the LED die “[be] in thermal contact with the [substantially] planar portion of the thermally conducting base.” ’421 patent at 7:46–67. The evidence shows that a portion of the structures identified by LSG as the “base” is substantially planar. See, e.g., CX-0303 (OSLON Black Flat Images) at LSGITC_1434802, LSGITC_1434805; CX-0415 (Cree JK2835AWT Images) at LSGITC_1436699– LSGITC_1436700; CX-0544 (Lumileds LUXEON 3535L Images) at LSGITC_1438632– LSGITC_1438633. For example, the dashed blue line in the illustration below shows that a portion of the lead frame in the Nichia product is substantially planar: PUBLIC VERSION
77 CDX-0005C.169 (annotating CX-0832). d) “one or more electrically insulating layers overlying at least a portion of the planar portion of the thermally conducting base and defining a surface cavity, ” LSG argues that each aspect of this limitation, and the limitation as a whole, is met because the resin molding in the LED Manufacturer Representative ’421 Products is the claimed “insulating layer.” See CIB at 79–96. The accused electrically insulating layers are identified with yellow arrows in the below top views of the LED Manufacturer Representative ’421 Products: CDX-0005C.169 (annotating CX-0832). The accused layers are annotated in yellow in the below x-ray views from the side of the LED Manufacturer Representative ’421 Products: PUBLIC VERSION
78 CDX-0005C.177. As an initial matter, the evidence proves that the resin molding of the LED Manufacturer Representative ’421 Products is “electrically insulating.” See, e.g., Tr. (Jokerst) Tr. 1134:3–11 (“[T]he molding component is typically some type of resin . . . [which] provides an insulating layer between the anode and the cathode of the lead frame, which is very important.”). The parties dispute whether the resin molding can be a “layer” as that term is used in the ’421 patent. See CIB at 80–86; RRB at 60–64. Respondents argue that “layer” in the context of the patent means “a material having a substantially uniform thickness and a generally wide aspect ratio” and that a person of ordinary skill “would not have understood a layer to cover a complex, three-dimensional, molded structure.” RRB at 60–61. I find Respondents’ argument unpersuasive and contradicted by the intrinsic evidence. Specifically, Figure 1A of the ’053 patent depicts electrically insulating layer 12, which is annotated in red below: PUBLIC VERSION
79 RDX-0013C at 7. Layer 12 has a substantially uniform thickness and a generally wide aspect ratio, which comports with the core of Respondents’ proposed construction. But layer 12 is also illustrated and described in the ’421 patent as a complex, three-dimensional shape that wraps around metal base 11. ’421 patent at 2:65–3:1. Accordingly, I reject Respondents’ attempt to unduly narrow the construction of “layer” to exclude materials that reside only in a single plane. I hereby construe “layer” according to its ordinary meaning in the art, which encompasses structures such as those depicted as element 12 in Figure 1 of the ’421 patent. The resin molding in the LED Manufacturer Representative ’421 Products satisfies the “electrically insulating layer” limitation recited in claim 1. See also Tr. (Kuball) 272:20–277:16, 454:7–455:14. The insulating material in the LED Manufacturer Representative ’421 Products has a generally wide aspect ratio, as can be seen from the top views in CDX-0005C.169. The insulating material also has a substantially uniform thickness, as can be seen in the symmetry of the left and right sides of the layer illustrated in the cross-sectional views in CDX-0005C.177. I next consider whether or not the “electrically insulating layer” of resin is “overlying at least a portion of the planar portion of the thermally conducting base.” I previously construed the term “overlying” in my claim construction order: “Having considered the arguments of the parties, I adopt the plain and ordinary meaning of ‘overlying,’ which is not limited to ‘positioned only above.’” CC Order at 20; see also id. at 17–20. I further stated in a footnote: “My construction PUBLIC VERSION
80 of ‘overlying’ does not include instances of embedding or enveloping as described by the Respondents at the claim construction hearing.” Id. at 20 n.5. Having reviewed the full record of the investigation, including the evidentiary hearing, I now have a greater appreciation of the context for the claim construction dispute presented by the parties. See Jang v. Boston Sci. Corp., 532 F.3d 1330, 1337 (Fed. Cir. 2008) (“We have previously emphasized the importance of the context provided by an analysis of the accused device when ruling on claim construction and the problems presented by construing claims in the absence of such context.”). It is evident that the parties’ dispute requires construing the term “layer[] overlying,” and not merely the term “overlying” in a vacuum. As illustrated at least in Figure 1A of the ’421 patent, a layer overlying a structure is not limited to being positioned only above that structure. Accordingly, I will construe “layer[] overlying” to mean a layer that is not limited to being “positioned only above” another object.16, 17 Consistent with this construction, the evidence shows that the resin molding in the LED Manufacturer Representative ’421 Products is “overlying at least a portion of the planar portion of” the structures LSG identifies as the thermally conducting base.” The below illustrations show 16 I hereby incorporate the analysis presented in pages 17–20 of the claim construction order into this initial determination. I decline, however, to adopt the statement in footnote 5 on page 20 that the “construction of ‘overlying’ does not include instances of embedding or enveloping.” Such a construction is in tension with other words in the claim and the teachings of the specification. See Jang, 532 F.3d at 1337. 17 At the evidentiary hearing, I brought the Jang opinion to the parties’ attention in connection with the “overlying” claim limitation and informed them they were free to press for a more favorable claim construction in their post-hearing briefs. See Tr. 1439:8–1440:22. I also informed the parties it was “possible that I will adjust or change my constructions from the [claim construction] order.” Tr. 1440:14–15. All parties briefed the possible revision of the construction of “overlying,” and no party argued an adjusted construction would result in undue prejudice. See CIB at 86-91; RRB at 64–69. PUBLIC VERSION
81 the resin molding layer in yellow and the (substantially) planar portion of the accused base in blue dashes. CDX-0005C.181; see also Tr. (Kuball) 324:24–331:5. The evidence also shows that the resin molding layer in the LED Manufacturer Representative ’421 Products defines a surface cavity. The surface cavity is shown in pink in the demonstrative exhibits below: CDX-0005C.182; see also Tr. (Kuball) 331:6–22. e) “wherein the electrically insulating layers include one or more terminals; ” Evidence adduced at the hearing establishes that the molded resin layer in the LED Manufacturer Representative ’421 Products include one or more terminals because the layer PUBLIC VERSION
82 touches at least one terminal of the LED package and thus includes the terminal. See Tr. (Kuball) 336:2–338:1, 340:11–342:25. f) “one or more LED die disposed at least partially within the surface cavity, ” The evidence shows that each LED Manufacturer Representative ’421 Product includes at least one or more LED die disposed at least partially within the surface cavity. See Tr. (Kuball) 344:20–345:9. The illustrations below show the LEDs colored in dark purple: CDX-0005C.210. g) “wherein the one or more LED die are in thermal contact with the planar portion of the thermally conducting base, ” The evidence also shows that each LED Manufacturer Representative ’421 Product has at least one LED die “in thermal contact with the planar portion of the [accused] thermally conducting base.” See Tr. (Kuball) 345:10–349:6. Images of LED Manufacturer Representative ’421 Products show the LED(s) annotated in purple and the planar portion of accused base annotated in blue: PUBLIC VERSION
83 CX-0832 (Nichia NE2G757GT); CDX-0005C at 214. CDX-0005C.216. CDX-0005C.212. Id. Nichia takes the position that its 757 Series products do not have an “LED die [ ] in thermal contact with the planar portion of the thermally conducting base” because the “top surface [of the accused lead] is divided by a substantial groove into two separate planar portions.” See RRB at 100–04. Using the figures below to illustrate its argument with respect to the NE2G757GT PUBLIC VERSION
84 product, Nichia argues that “the LED die is mounted onto one planar portion (shown in blue), which is not the planar portion (shown in green) that—according to Complainants—is overlaid by (a portion of) the electrically insulating layer (i.e., the white resin).” See RRB at 101–2 . RX-0501.0001, 0003 (images at CX-0601); see also JX-0432C. Nichia’s argument is based on a reading of the claim requiring that the planar portion of the base overlaid by the electrically insulating layer be the same planar portion of the base that is in thermal contact with the LED. See RRB at 100–04. Yet, the claim language requires no such identity. Claim 1 is reproduced below with the relevant language identified in italicized bold typeface: 1. A LED assembly adapted for surface mounting and high temperature operation, the LED assembly comprising: a thermally conducting base, wherein at least a portion of the thermally conducting base is substantially planar; PUBLIC VERSION
85 one or more electrically insulating layers overlying at least a portion of the planar portion of the thermally conducting base and defining a surface cavity, wherein the electrically insulating layers include one or more terminals; one or more LED die disposed at least partially within the surface cavity, wherein the one or more LED die are in thermal contact with the planar portion of the thermally conducting base, and electrically connected to the one or more terminals of the one or more insulating layers, wherein a bottom surface of the LED assembly includes a thermally conductive region in solderable thermal contact with the thermally conducting base, for spreading heat transmitted to the base from the one or more LED die; and further comprising an LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad. ’053 patent at 7:46–67 (emphasis added). The claim merely requires that a “planar portion” of the base be in contact with the LED die and “a portion of the planar portion” underlie the electrically insulating layer. The portion in contact with the LED die and the portion underlying the insulating layer need not be identical. The Nichia 757 Series products have both claimed portions. I therefore find the Nichia 757 Series products satisfy the limitation “one or more LED die [ ] in thermal contact with the planar portion of the thermally conducting base.” h) “and electrically connected to the one or more terminals of the one or more insulating layers, ” The evidence shows that the LED Manufacturer Representative ’421 Products satisfy this claim limitation. As depicted below, a first LED electrode on the LED die is connected to the larger lead frame portion either by a wire bond (in the case of the Nichia NE2G757GT, Cree JK2835AWT, and Lumileds LUXEON 3535L) or by a direct connection on the bottom of the die (in the case of the OSRAM OSLON Black Flat). CX-0601 (Nichia NE2G757GT); CX-0303 PUBLIC VERSION
86 (OSRAM OSLON Black Flat); CX-0544 (Lumileds LUXEON 3535L); CX-0415 (Cree JK2835AWT). A second LED electrode on the LED die is connected to the smaller portion of the lead frame by a wire bond. See Tr. (Kuball) 260:5–15. Because the lead frame is made of copper, and is therefore electrically conductive, the top surfaces of the lead frame electrically connect to the terminals plated onto the bottom surfaces. See Tr. (Kuball) 349:18–350:4. CDX-0005C.220. i) “wherein a bottom surface of the LED assembly includes a thermally conductive region in solderable thermal contact with the thermally conducting base, ” As discussed in more detail below, the evidence shows that, in the LED Manufacturer Representative ’421 Products, the bottom surface of the LED assembly includes a “thermally conductive region.” The question remains whether or not this “thermally conductive region” is in “solderable” thermal contact with the copper of the alleged “base,” a position with which Respondents disagree. See CIB at 106–16; RRB at 86–100.18 At the evidentiary hearing, LSG asserted solderability is merely a “materials consideration,” i.e., a question of whether or not the material constituting the “region” could (in the abstract) be soldered to the material constituting 18 In my claim construction order, I determined that Respondents did not carry their burden on indefiniteness with respect to the term “solderable.” CC Order at 29–30. PUBLIC VERSION
87 the “base.” See Tr. (Kuball) 362:19–24, 365:11–16, 367:18–23, 464:12–20, 556:22–557:4. Respondents instead focused on the structure of the claimed invention, taking the position that a person of ordinary skill would understand that one must consider not only the type of material, but also the amount of material, the configuration of the structure, and whether there is sufficient access to “wet” the respective “region” and “base” surfaces with solder in order to determine whether they are “solderable.” See Tr. (Schubert) 1005:4–1009:9; Tr. (Jokerst) 1193:13–1194:8; Tr. (Katona) 1263:23–1264:24. In other words, Respondents argue that two structures—the “region” and the “base” in the context of the ’421 patent—are in “solderable . . . contact” only if those two structures could actually be soldered to each other. The parties’ arguments are a mix of legal and factual positions. I begin with the legal interpretation of the phrase “in solderable thermal contact.” In post-grant proceedings, LSG distinguished certain asserted prior art by arguing to the Patent Office that a unitary structure shown in the asserted art could not be soldered to itself. See Notice of New Evidence (EDIS Doc. ID 66505) at 2–3 and Ex. A at 16, 19, 22–23. The Patent Office accepted LSG’s argument, noting that the prior art reference discloses a “unitary” structure, and the alleged region and base in that structure “cannot be ‘solderable’ to one another, i.e., at no point in time could they be soldered to each other because they are simply one singular piece.” Id. The Patent Office further noted that solderability is a property of the wettability of a “surface,” and not only a property of a “material”: That assertion is consistent with a technical dictionary’s definition of “solderability” as “[t]hat property of a metal surface to be readily wetted by molten solder.” See Ex. 3001 (definition by The Authoritative Dictionary of IEEE Standards Terms). Id. at 16 (original emphasis omitted). Accordingly, I conclude that a region “in solderable thermal contact” with the base means something more than the region is made of a kind of material that PUBLIC VERSION
89 1091:19–1092:10. The copper is plated with nickel with a thickness of , as well as palladium of in thickness and gold of in thickness. Id.; RX-0739C. RDX.0006C-00011 (showing a bottom schematic view (RX-0737C) and a demonstrative of the plating layers of the Black Flat). In the accused Cree products, including the representative JK2835AWT, the only material underneath the copper is electroplated silver of thick. Tr. (Katona) 1260:20–24, 1263:25–1264:5. LSG argues that the silver layer is the claimed “region.” CIB at 107. In the accused Lumileds products, including the LUXEON 3535L, LSG identifies a layer of electroplated silver or nickel ranging from in thickness as the claimed “region” allegedly solderable to the copper-lead-portions. See Tr. (Jiao) 1239:9–1242:22, 1244:9–1246:13; RDX-0013C.0014-0015; RX-2009C; RX-2004C; RX-1969C; RX-1971C; RX-1982C; RX-1986C; RX-1993C; RX-2012C. As discussed in more detail below, I find that these microscopically thin plating layers have no region in solderable thermal contact with a base. The evidence shows that, as manufactured, imported, and sold, no accused product has a region soldered or solderable to a base. Instead, each alleged “region” in the accused products is PUBLIC VERSION
90 part of microscopically thin, electroplated layer added to the copper lead for reflectivity and to prevent corrosion; it cannot (or could not) have been soldered to the copper. See, e.g., Tr. (Jokerst) 1133:3–22, 1179:6–19. Expert witness testimony establishes that all of the products have “full surface plating” such that there are no exposed surfaces available to be wetted with solder and no way to access the interface of the copper and a plating layer. Tr. (Schubert) 1005:4–1009:9, 1010:22–1013:9; Tr. (Jokerst) 1133:3–22, 1179:6–19; RX-0768.0006; RX-0399C.0008; RX-0398C.0008; RX-0401C.0009; RX-0400C.0008; RX-0396C.0003. As Respondents’ experts explained, because the plating region and copper base are atomically bonded to one another at the time the plating region comes into existence, it is impossible to solder them to one another. Tr. (Bright) 1097:7–12; Tr. (Jokerst), 1188:22–1189:15; Tr. (Jiao) 1241:1–6; Tr. (Katona) 1264:12–15. In addition, the evidence shows that the alleged “region” would not be solderable to the alleged “base” even during the manufacturing process because the alleged “region” never exists as a separate, solid region. Rather, the metal layers are applied to the “base” through electroplating, and the metal only exists in an aqueous solution before being permanently affixed to the “base.” Tr. (Schubert) 1011:23–1013:9, 1075:3–14; Tr. (Bright) 1096:17–1097:2; Tr. (Jokerst) 1178:19–1179:5, 1144:5–18, 1188:12–1189:15; Tr. (Jiao) 1241:23–1242:16. Once affixed to the alleged “base,” the plated layers of the alleged “region” cannot be removed such that they would survive to be “soldered” onto the copper lead. Tr. (Schubert) 1005:4–1009:9, 1010:5–21, 1012:2–1013:9; Tr. (Bright) 1096:4–1097:22; Tr. (Jokerst) 1189:16–1190:7; Tr. (Jiao) 1241:1–8; RX-0399C.0008; RX-0398C.0008; RX-0401C.0009; RX-0400C.0008; RX-0396C.0003. OSRAM’s expert Dr. Bright testified that nickel plating is added as a diffusion barrier to prevent diffusion of copper ions into the nickel/palladium layers PUBLIC VERSION
92 1264:16–24; RX-0399C.0008; RX-0398C.0008; RX-0401C.0009; RX-0400C.0008; RX-0396C.0003; RX-2004C; RX-1969C; RX-1971C; RX-1982C; RX-1986C; RX-1993C; RX-2009C; RX-2012C; RX-0739C. For these reasons, I find the LED Manufacturer Representative ’421 Products do not have a “thermally conductive region” that is in “solderable” thermal contact with the copper of the alleged “base.” j) “for spreading heat transmitted to the base from the one or more LED die; and ” The evidence shows that the accused “thermally conductive region” in the LED Manufacturer Representative ’421 Products is “for spreading heat transmitted to the base from the one or more LED die.” See CX-4179C (Tanaka Dep.) at 44:15–21; Tr. (Kuball) 351:2–25; 352:6–354:22. k) “further comprising an LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad.” As illustrated below, the evidence shows that the LED Manufacturer Representative ’421 Products practice this limitation19 because they include solderable bonding pads on their lower surface for mounting the packages to an external system: 19 The parties have agreed that this term should be construed as “further comprising an LED assembly mount that is either an electrically insulated fastener or a solderable bonding pad.” See CIB at 117 (citing RPB at 441). PUBLIC VERSION
93 CDX-0005C.241; see also Tr. (Kuball) 378:6–23. 3. Claim 6 Dependent claim 6 of the ’421 patent reads: 6. The LED assembly of claim 1, wherein the thermally conducting base includes a metal base. The evidence shows that the LED Manufacturer Representative ’421 Products satisfy this additional limitation. The alleged base in each product is made of copper, a metal. See, e.g., Tr. (Kuball) 379:22–380:17. Nevertheless, because there is no infringement of claim 1 from which claim 6 depends, there is no infringement of claim 6. PUBLIC VERSION
94 4. Infringement Conclusion a) The LED Manufacturers As discussed above, the LED Manufacturer Representative ’421 Products lack “a thermally conducting base” and “a thermally conductive region in solderable thermal contact with the thermally conducting base” as recited in claims 1 and 6. Accordingly, I find that LSG has failed to prove infringement of claims 1 and 6 of the ’421 patent. b) The Luminaire Respondents As discussed above, LSG’s infringement argument as to the Luminaire Respondents accused products relies on a general assertion in its post-hearing brief that “each Luminaire Respondent incorporates into its products certain specific LED packages” alleged to infringe the ’421 patent. See CIB at 154. LSG argues that all Luminaire Respondent accused products, those that incorporate LED packages from the LED Manufacturers and those that incorporate LED packaged from third party suppliers, “are equivalent to, and represented by, certain of the LED Manufacturer Representative ’421 Products for purposes of infringement.” See id. at 163. The LED Manufacturer Representative ’421 Products lack “a thermally conducting base” and “a thermally conductive region in solderable thermal contact with the thermally conducting base” as recited in claims 1 and 6. Accordingly, I find that LSG has failed to prove infringement of claims 1 and 6 of the ’421 patent as to the accused products of the Luminaire Respondents. B. Technical Prong of the Domestic Industry Requirement To prove satisfaction of the technical prong of the domestic industry requirement for the ’421 patent, LSG argues that claims 1 and 6 are practiced by two groups of products. See CIB at 167–89. The first group incorporates the custom Luminus MP-2835-21C1 LED package (“Luminus MP-2835”). See Tr. (Maxik) 638:24–639:12; Tr. (Kuball) 428:14–429:3. This group of products includes LSG’s Journi™ Mobile LED Task Light, Good Day&Night® LED PUBLIC VERSION
95 Downlight, Good Day&Night® LED Troffer, GoodDay® A19 LED Bulb, GoodDay® LBAR™ LED Tube, GoodDay® T8 LED Tube, SunTrac™ A19 LED Bulb, AZUL™ Troffer, AZUL™ Linear Luminaire, and the 480® Series Products. See Tr. (Maxik) 638:24–639:12; Tr. (Kuball) 428:14–429:3. The second group incorporates the Edison 2835 1W 6V CR195 HL LED package (“Edison 2835”). See Tr. (Maxik) 638:24–639:12; Tr. (Kuball) 428:14–429:3. This group includes LSG’s GoodNight® A19 LED Bulb and Sleepy Baby® P15 LED Bulb. See Tr. (Maxik) 638:24–639:12; Tr. (Kuball) 428:14–429:3. LSG’s expert Dr. Kuball testified that, with respect to claims 1 and 6, there are no material differences between the Luminus MP-2835, the Edison 2835, and the LED Manufacturer Representative ’421 Products analyzed above. Tr. (Kuball) 429:13–17 (“[T]hey are actually very similar in terms of infringement purposes, in terms of claim purposes compared to the other products we discussed.”), 433:17–22 (“[T]hey look very similar.”). As shown in the images below, both the Luminus MP-2835 and the Edison 2835 are lead frame packages with nearly indistinguishable designs compared to the Nichia and Lumileds Representative ’421 Products: CDX-0005C.299; CX-0807. PUBLIC VERSION
96 CDX-0005C.299; CX-0528. CDX-0005C.300; CX-0807. CDX-0005C.300; CX-0528. Therefore, for the same reasons set forth above with respect to the LED Manufacturer Representative ’421 Products, I find that the Luminus MP-2835 and Edison 2835 products do not practice claims 1 and 6 of the ’421 patent. Those products lack the claimed “thermally conducting PUBLIC VERSION
97 base” and “thermally conductive region in solderable thermal contact with the thermally conducting base” as recited in claims 1 and 6. C. Validity 1. Priority Date Respondents contend that LSG’s own BL-3000 light engine product embodies every element of the asserted claims and was on sale more than one year before the application for the ’421 patent was filed. See RX-0047 at 27–28 (responses to Request for Admission Nos. 76 and 77). Respondents have therefore established a prima facie case of invalidity under the pre-America Invents Act version of 35 U.S.C. § 102(b). The burden of production now shifts to LSG to show that the application to which the ’421 patent claims priority provides “adequate support” for claims 1 and 6, thereby entitling those claims to the earlier priority date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1324 (Fed. Cir. 2008). The phrase “burden of production” means “both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record.” Id. at 1327. The sufficiency of the disclosure in a patent application is evaluated on a claim-by-claim basis. Specifically, a “patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims” of the patent. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015). It is the patentee’s burden to prove that each and every element of the challenged claim is located in the priority document. See id. For a patent to be entitled “to the filing date of an earlier application in the chain of applications of which it is a part, there must also have been a continuing disclosure through the chain of applications, without hiatus.” Eiselstein v. Frank, 52 F.3d 1035, 1038 n.4 (Fed. Cir. 1995). In other words, a patent will only be entitled to the priority date of a grandparent application PUBLIC VERSION
99 • “an LED assembly mount selected from a group consisting of an electrically insulated fastener and a solderable bonding pad” RIB at 24. These three limitations are discussed in further detail below. a) “one or more electrically insulating layers overlying at least a portion of the planar portion of the thermally conducting base and defining a surface cavity, wherein the electrically insulating layers include one or more terminals” The evidence shows that the ’857 provisional and the ’579 application provide sufficient disclosure to support this claim element.20 Figure 1 of the ’857 provisional shows a nickel oxide insulating layer 12 and LTCC layer 17 overlying the thermally conductive copper/molybdenum/copper (“CMC”) base 11, which corresponds to the claimed “one or more electrically insulating layers overlying at least a portion of the planar portion of the thermally conducting base.” See ’857 provisional at 3:14–19, 3:23–27. An annotated version of Figure 1 below shows in orange how portions of nickel oxide layer 12 and LTCC 17 stretching from the left via 14 to the right via 14 overlies a planar portion of the thermally conducting base. 20 In their post-hearing brief, Respondents argue that the ’857 provisional does not support this claim limitation, but they failed to raise this argument in their pre-hearing brief. Compare RIB 34–37 with RPB at 619–40. I therefore deem this argument abandoned according to my Ground Rule 11.2. See Order No. 2 at 18 (June 25, 2019) (“Any contentions not set forth in detail in the pre-hearing brief shall be deemed abandoned or withdrawn.”). PUBLIC VERSION
100 CDX-0011C.34 (annotating ’857 provisional at Fig. 1). Figure 1 of the ’857 provisional also illustrates that “[t]he ceramic layers on the base 11 form a cavity 18 around the LED 10,” which corresponds to the claimed “one or more electrically insulating layers . . . defining a surface cavity.” ’857 provisional at 3:15; see also ’053 patent at 4:14–17 (“The formed metal base 51 can be provided with underlying ceramic supports 58A, 58B so that underlying bonding pads 15A, 15B are coplanar with thermal base connector 16.”), 3:2–3 (“The ceramic layers on the base 11 form a cavity 18 around the LED 10.”). This cavity is illustrated in red in the demonstrative below: PUBLIC VERSION
101 CDX-0011C.35 (annotating ’857 provisional at Fig. 1). I therefore find that the limitation “one or more electrically insulating layers overlying at least a portion of the planar portion of the thermally conducting base and defining a surface cavity, wherein the electrically insulating layers include one or more terminals” recited in claim 1 (and incorporated into dependent claim 6) of the ’421 patent is entitled to the priority date of the ’857 provisional application. b) “a thermally conductive region in solderable thermal contact with the thermally conducting base” Claims 1 and 6 require “a bottom surface of the LED assembly [that] includes a thermally conductive region in solderable thermal contact with the thermally conducting base.” LSG argues that Figure 1 of the ’857 provisional provides support for this limitation. CIB at 195–96. Using the annotated demonstrative exhibit below, LSG’s expert Dr. Kuball testified that Figure 1 teaches a platinum/silver “solderable base for heat sinking” (depicted below in purple), which corresponds to the “thermally conductive region” of claim 1, and also teaches a copper/molybdenum/copper base 11 (depicted below in green), which corresponds to the “thermally conducting base.” Tr. (Kuball) 1381:14–18. PUBLIC VERSION
102 CDX-0011C (annotating ’857 provisional at Fig. 1). LSG relies on Dr. Kuball’s testimony to support its position, but Dr. Kuball failed to demonstrate that Figure 1 teaches that element 16 is solderable to element 11. Rather, he testified that the kind of material from which element 16 is constructed (i.e., platinum) is solderable to the kind of material from which element 11 is constructed (i.e., copper). See Tr. (Kuball) 1381:2–13, 1382:1–8. As discussed above with respect to the infringement analysis of the ’421 patent, the relevant question is not whether platinum is solderable to copper in the abstract, but rather whether the “base” is in solderable contact with the “region.” The ’857 provisional fails to demonstrate that the “base” to which Dr. Kuball points in Figure 1 is solderable to the “region.” Although Figure 1 of ’857 provisional uses the word “solderable” to describe element 16, Respondents’ expert Dr. Lebby provided persuasive testimony showing that a person of skill in the art would have understood that word to mean that element 16 is solderable to an external component, like a heat sink, and not that element 16 is solderable to element 11. Tr. (Lebby) 1277:18–1280:18. Dr. Lebby’s testimony is consistent with corresponding language in the ’857 provisional describing Figure 1, which states: “Solderable electrical connection pads 15A and 15C [also labeled as 16 in Figure 1] may be deposited on the underside of metal base 11 to permit surface mounting of the base 11 on a printed circuit board (not shown).” ’857 provisional at 3:7–8. The evidence also supports Respondents’ argument that the concept of a “solderable thermal contact” is new matter added during the prosecution of the ’421 patent to overcome the Sugimoto prior art reference. See RIB at 32 (citing JX-0007 (’421 patent file history) at LSGITC_0000577–578, 587; ’421 patent at Fig. 10). In particular, Dr. Kuball testified that, outside of the language of claim 1, the ’421 patent does not teach that thermal connection 106 is PUBLIC VERSION
103 solderable to metal base 101. Tr. (Kuball) 460:12–461:2 (“Q. So outside of the claim, it doesn’t say 106 is solderable to 101; right? A. No.”); see also ’421 patent at Fig. 10. I therefore find that the limitation “a thermally conductive region in solderable thermal contact with the thermally conducting base” recited in claim 1 (and incorporated into dependent claim 6) of the ’421 patent is not entitled to the priority date of either the ’857 provisional or the ’059 application that matured into the ’053 patent. c) “an LED assembly mount selected from a group consisting of an electrically insulated fastener and a solderable bonding pad” The final disputed limitation of claim 1 recites an “LED assembly mount” selected from a Markush group consisting of “an electrically insulated fastener” and “a solderable bonding pad.” All members of a Markush family must be disclosed in a preceding disclosure in order to claim priority to that disclosure. See, e.g., In re Gosteli, 872 F.2d 1008, 1009–10, 1012 (Fed. Cir. 1989) (affirming that a later-filed application containing a Markush claim to a genus cannot claim priority to an earlier-filed application disclosing only a subgenus). The parties dispute whether or not the ’857 provisional discloses an “LED assembly mount” consisting of an “electrically insulated fastener.” See, e.g., RIB at 25–32; CIB at 201–13.21 As shown in the demonstrative exhibit below, Figure 9 of the ’857 provisional teaches screws 95, which hold down or “mount” an LED assembly comprising multiple LEDs. 21 That the ’857 provisional discloses an “LED assembly mount” consisting of “a solderable bonding pad” is not in dispute. See CIB at 199–200. PUBLIC VERSION
104 CDX-0011C.50 (annotating ’857 provisional at Fig. 9). LSG’s expert Dr. Kuball testified that the screws used to mount the structure in Figure 9 are an “LED assembly mount” as recited by the claim. See Tr. (Kuball) 1383:1–16, 1384:2–5. Dr. Kuball further testified that the ’857 provisional teaches that the screws 95 “press [the assembly] down to the heat sink” to promote “thermal contact.” Tr. (Kuball) 1384:8–19; see also ’857 provisional at 5:29–6:3. Accordingly, I find that disclosure of the screws 95 in Figure 9 of the ’857 provisional provide sufficient disclosure of at least a generic “LED assembly mount.” But the disputed claim language requires more than just a generic LED assembly mount; it requires “an LED assembly mount . . . consisting of an electrically insulated fastener.” LSG argues: [T]he law does not require that the Provisional ever state (1) that screws 95 are an “electrically insulated fastener,” (2) that screws 95 are made of electrically insulating material, or (3) that screws 95 can be made of electrically insulating material. Rather, when a genus covers a limited and well-known set of species, disclosure of the genus is adequate disclosure of specific members of the species. CIB at 204–05 (citing ICN Photonics, Ltd. v. Cynosure, Inc., 73 F. App’x 425, 431 (Fed. Cir. 2003)) (emphasis original). PUBLIC VERSION
105 Dr. Kuball testified that the that screws 95 disclose a genus—LED mounting screws—that contain only two options: “[S]crews have to be made of something, and they are either insulator or metal. . . . These are two options, no thoughts needed.” Tr. (Kuball) 1396:10–18; see also Tr. (Kuball) 1383:7–19. LSG argues that Dr. Kuball’s testimony proves the ’857 provisional discloses both species of the genus comprising electrically insulated screws and metal screws. CIB at 207 (citing ICN Photonics, 73 F. App’x at 431; Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352-53 (Fed. Cir. 2011); VirnetX Inc. v. Apple Inc., 665 F. App’x 880, 888 (Fed. Cir. 2016); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001); In re Petering, 301 F.2d 676, 682 (C.C.P.A. 1962); In re Schaumann, 572 F.2d 312, 314–17 (C.C.P.A. 1978)). Respondents argue that the ’857 provisional does not disclose an electrically insulated fastener because it does not explicitly state that the hold-down screws are made of insulating material. Quoting Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998), Respondents contend that if the written description in a priority application does not explicitly disclose a limitation, “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.’” RIB at 30–31 (emphasis original). First, LSG forfeited any genus-species argument by failing to include it in its pre-hearing brief. See CPB at 1042–50; Order No. 2 at Ground Rule 11.2. Even if I were to consider that argument, it lacks merit because it is built on a false premise. The genus of LED mounting screws is not limited to two species; the world of screws includes many kinds of screws beyond metal screws and insulating screws. For example, a screw could be made of a semiconductor material that is both conducting and insulating depending on the voltage applied. A metal screw could also PUBLIC VERSION
106 have an insulating coating on different portions of its head or shank so that the screw is insulating as it passes through one layer but is conductive to connections in another layer. More to the point, there is absolutely no evidence in the ’857 provisional that the inventors considered the conductive or insulating properties of the screw at all. To benefit from the priority date of the ’857 provisional, that application must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis in original). Nothing in the ’857 provisional teaches a person of skill in the art that the screws are electrically insulating. I therefore find that the limitation “an LED assembly mount . . . consisting of an electrically insulated fastener” recited in claim 1 (and incorporated into dependent claim 6) of the ’421 patent is not entitled to the priority date of the ’857 provisional. 2. Anticipation: BL-3000 On-Sale Bar In response to Requests for Admission, LSG admitted that if claims 1 and 6 of the ’421 patent are entitled only to the ’421 patent’s filing date of July 12, 2005, the claims would be invalid due to an anticipating sale of an LSG product. RX-0047 at 27–28 (responses to Request for Admission Nos. 76 and 77). Specifically, LSG admitted its BL-3000 light engine product was offered for sale and sold more than one year before the ’421 application was filed, and the BL-3000 light engine practices every limitation of claims 1 and 6 of the ’421 patent. See id. As discussed above, I have found that the ’857 provisional does not provide written description support for “a thermally conductive region in solderable thermal contact with the thermally conducting base” and “an LED assembly mount . . . consisting of an electrically insulated fastener,” limitations required by claims 1 and 6 of the ’421 patent. These claims are therefore only entitled to the patent’s filing date of July 12, 2005. Accordingly, claims 1 and 6 of PUBLIC VERSION
107 the ’421 patent are invalid under 35 U.S.C. § 102(b) based on the offer and sale of the BL-3000 light engine product more than one year before July 12, 2005. 3. Obviousness: Hammond Respondents argue that claims 1 and 6 of the ’421 patent are rendered invalid as obvious in view of the Hammond prior art reference.22 RIB at 40–58. The evidence shows that Hammond teaches all limitations of claims 1 and 6 except for the preamble phrase “[an] LED assembly adapted for surface mounting and high temperature operation.” See Hammond at Fig. 4, Abstract, ¶¶ 1, 7, 9, 29, 36; Tr. (Lebby) 1281:1–1292:10. Hammond teaches a gallium arsenide die adapted for surface mounting and high temperature operation, but Hammond does not expressly disclose that the gallium arsenide die is an LED. Hammond at Fig. 4, ¶ 1. LSG does not dispute that Hammond discloses every other limitation of claims 1 and 6 except an LED assembly. See CRB at 11–12.23 As described below, evidence adduced at the hearing establishes that it would have been obvious for a person of ordinary skill in the art to select an LED as the particular gallium arsenide die to be used with the Hammond package. Hammond discloses a “package for an electronic component [that] includes a metal support substrate having a pattern of openings therethrough and a body of an insulating material, such as glass or ceramic, on and bonded to the surface of the support substrate.” Hammond at Abstract. Hammond further discloses that its “invention relates to multilayer ceramic circuit boards mounted 22 U.S. Patent Application Publication No. US 2002/0166684 A1 to Hammond et al. (“Hammond”) (RX-0018) was filed May 10, 2001, published on November 14, 2002, and is prior art under 35 U.S.C. § 102(b) (if claims 1 and 6 claim priority to the ’421 patent’s filing date) or 35 U.S.C. §§ 102(a) and 102(e) (if claims 1 and 6 claim priority to the ’857 provisional). 23 LSG also failed to establish the existence of secondary indicia of non-obviousness as to claims 1 and 6 of the ’421 patent. See RIB at 41. PUBLIC VERSION
108 on a patterned conductive substrate support . . . [and] relates to mounting modules of high power amplifiers and oscillators onto the patterned substrate support to remove excess thermal energy from these devices.” Id. ¶ 1. Hammond also discloses that its semiconductor die 52 is a “gallium arsenide die.” Id. at Fig. 4. Hammond’s package utilizes low temperature co-fired ceramic circuit boards with metal support substrates, or LTCC-M technology, which is referenced in the preferred embodiments of the asserted ’053 and ’421 patents. See Tr. (Lebby) 1282:5–15; Hammond ¶ 7; ’053 patent at 2:33–38, 7:29–38; ’421 patent at 2:54–60, 5:50–53, 6:32–41. Hammond teaches that the advantages of such packages includes heat dissipation. See Hammond ¶¶ 1, 7, 36; Tr. (Lebby) 1282:1–4. Figure 4 from Hammond is reproduced with color annotations below. The handwriting is original to the disclosure: RDX-0008.0013. PUBLIC VERSION
109 Figure 4 depicts a semiconductor package containing a power amplifier formed on a “Gallium Arsenide Die” 52 (shown above in yellow) mounted on a “Heat Sink/Ground Plane 40,” which is also referred to as the “metal support substrate 40” (shown above in orange). Hammond ¶ 29 and Fig. 4. Hammond discloses that its electronic component package assembly is “adapted for surface mounting” (e.g., it has a solder connection to the surface of a motherboard) and is adapted for “high temperature operation. ” See Hammond ¶ 9; Tr. (Lebby) 1286:11–1287:2. Dr. Lebby testified that a person of ordinary skill would have understood Hammond to teach that a power amplifier formed on a gallium arsenide die is a semiconductor chip that consumes current and generates heat that would be dissipated by Hammond’s heat sinking metal support substrate. See Tr. (Lebby) 1283:2–6. The evidence, including persuasive testimony from Dr. Lebby, establishes that it would have been obvious, in view of the knowledge of a person of ordinary skill in the art, to mount an LED die in the LTCC-M assembly disclosed by Hammond in place of Hammond’s power- amplifier gallium arsenide die. See Tr. (Lebby) 1283:18–1285:16. As the disclosure of ’421 patent admits, LEDs made from semiconductor material and with LTCC-M technology were known prior to the alleged invention. ’421 patent at 6:29-42. Dr. Lebby confirmed that a person of ordinary skill would have understood that the semiconductor material of an LED can be gallium arsenide based. Tr. (Lebby) 1283:7–13, 1284:7–16. The need to dissipate heat from such LEDs was also known the art at the time of the alleged invention. Id. One design for dissipating heat from LTCC-M gallium arsenide semiconductor devices known at the time of the invention was the device in Hammond. Hammond ¶ 0005 (“The metal substrate support of the above-described LTCC-M technology can serve also as a heat spreader, or heat sink . . . .”). PUBLIC VERSION
110 When considering how to dissipate heat from an LED die, a person of ordinary skill in the art would have been motivated to use the configuration in Hammond, which provides for improved heat dissipation. See Tr. (Lebby) 1283:7–13, 1284:6–16; Hammond ¶ 0005 (“The metal substrate support of the above-described LTCC-M technology can serve also as a heat spreader, or heat sink . . . .”). Hammond is also for use with “high power components,” further suggesting that it would be suitable for use with LEDs that draw a high current and generate heat. See Tr. (Lebby) 1283:2–13; Hammond ¶ 0005. Moreover, Hammond teaches that the configuration of its LTCC-M technology would “improve reliability and reduce manufacturing costs,” which are additional considerations that would motivate a person of skill in the art to combine Hammond with an LED device. See Hammond ¶ 0006. The evidence also shows that a person of ordinary skill in the art would not have had any difficulty using an LED die in the Hammond package. Figure 4 of Hammond depicts a semiconductor package with an open top suitable for use with a light-emitting semiconductor device such as an LED. See Tr. (Lebby) 1284:6–1285:6. Dr. Lebby testified that Hammond teaches “a very simple package” and that “it’s a very simple way to implement [a] gallium arsenide semiconductor chip into a heat extraction package.” Tr. (Lebby) 1285:25–1286:6. Based on the record evidence, I find Respondents have shown, clearly and convincingly, that claims 1 and 6 of the ’421 patent are rendered invalid as obvious in view of the Hammond reference. PUBLIC VERSION
111 4. Anticipation: Yoganandan Respondents argue that claims 1 and 6 of the ’421 patent are invalid as anticipated by the Yoganandan prior art reference.24 RIB at 58–70. As discussed below, I find that Respondents have not met their burden to show, by clear and convincing evidence, that Yoganandan teaches all elements of the ’421 patent claims. In general, Respondents present anticipation by Yoganandan as a fallback position in the event that the’421 patent claims are interpreted as broadly as LSG asserts or in the event that the theories underlying LSG’s proposed factual findings on infringement are adopted. I have rejected several of LGS’s constructions and factual theories in my infringement analysis above, and when consistent reasoning is applied to an evaluation of the Yoganandan reference, Respondents’ showing does not demonstrate anticipation. One claim limitation is sufficient to illustrate this point. The claims require a “thermally conductive region in solderable thermal contact with the thermally conducting base.” Respondents argue that, if LSG’s construction and factual theories are adopted, Yoganandan teaches this limitation. See RIB at 67–68. Respondents elaborate: “[T]he core of pad/platform 270 is copper 410B, and its lower plating layers are an additional layer of copper 800, a layer of nickel 810, and a layer of gold 820. If, consistent with Complainants’ infringement allegations, the copper core and additional copper plating on its bottom surface are together considered the ‘thermally conducting base,’ and the nickel and gold plating layers thereunder are considered the ‘thermally conductive region,’ then this limitation is met, because copper—in the abstract and without 24 U.S. Patent Application Publication No. US 2002/0163006 A1 to Yoganandan et al. (“Yoganandan”) (RX-0017) was filed April 23, 2002, published on November 7, 2002, and is prior art under 35 U.S.C. §§ 102(a), (b) and/or (e) (depending on the priority date of the ’421 patent). PUBLIC VERSION
112 consideration of the actual physical construction of the package being analyzed—can be soldered to nickel. Id. at 68 (citing Yoganandan ¶¶ 0023, 0031–32, 0048–51). As discussed previously in my infringement analysis, I rejected a factual finding that a microscopically thin layer of metal electroplated onto a copper core constitutes a thermally conductive region in solderable thermal contact with a thermally conducting base. I further rejected a factual finding that two structures were in solderable thermal contact simply by virtue of the fact that each structure was made of a material that could be soldered in the abstract. With respect to anticipation, I similarly decline to make such factual findings about the disclosures in Yoganandan. The microscopically thin layer of nickel plating identified by Respondents in Yoganandan is not in solderable thermal contact with the copper base identified by Respondents. Respondents do not offer any arguments explaining how Yoganandan would anticipate absent such a finding. It was Respondents’ burden to show every element of the claimed invention of the claimed invention within the four corners of Yoganandan, which they have failed to do. See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). For at least this reason, I find that Respondents have failed to show, clearly and convincingly, that the asserted claims of the ’421 patent are anticipated by Yoganandan. 5. Anticipation: Seko Respondents argue that claims 1 and 6 of the ’421 patent are invalid due to anticipation by the Seko prior art reference.25 RIB at 70–83. As with the Yoganandan reference, Respondents argue anticipation by the Seko reference as a fallback position in the event that other arguments advanced by LSG are adopted. Id. at 79–82. And as with the Yoganandan reference, the dispute 25 Japanese Patent Application No. 2001-217650 to Seko (“Seko”) (RX-0011) was published on January 31, 2003, and is prior art under 35 U.S.C. §§ 102(a), (b) and/or (e) (depending on the priority date of the ’421 patent). PUBLIC VERSION
113 over Seko can be resolved by examining whether Respondents have shown “a thermally conductive region in solderable thermal contact with the thermally conducting base” within Seko. Seko discloses a LED for use in outdoor display panels. Seko teaches application of “nickel plating” on sides of the device “where the copper is exposed” prior to deposition of resist film 16. Seko ¶ 0029; see also id. ¶ 0022. Respondents argue the nickel plating on the bottom of the copper layer in Seko is in solderable thermal contact with the thermally conducting base “under Complainants’ infringement theory, because copper—in the abstract and without consideration of the actual physical construction of the package being analyzed—can be soldered to nickel.” RIB at 80–81. As discussed previously in my infringement analysis, I rejected a factual finding that a microscopically thin layer of metal electroplated onto a copper core constitutes a thermally conductive region in solderable thermal contact with a thermally conducting base. I further rejected a factual finding that two structures were in solderable thermal contact simply by virtue of the fact that each structure was made of a material that could be soldered in the abstract. With respect to anticipation, I similarly decline to make such factual findings about the disclosures in Seko. Respondents do not offer any arguments explaining how Seko would anticipate absent such a finding. It was Respondents’ burden to show every element of the claimed invention of the claimed invention within the four corners of Seko, which they have failed to do. See Advanced Display Sys., 212 F.3d at 1282. For at least this reason, I find that Respondents have failed to show, clearly and convincingly, that the asserted claims of the ’421 patent are anticipated by Seko. 6. Written Description Respondents argue that under LSG’s interpretation, claims 1 and 6 of the ’421 patent are invalid for lack of written description of an invention with “a bottom surface . . . [that] includes a PUBLIC VERSION
114 thermally conductive region in solderable thermal contact with [a] thermally conducting base.” RIB at 83–86 (emphasis original). Specifically, Respondents argue: The requirement that the “thermal contact” be “solderable thermal contact” was not part of the originally filed claims or specification. Rather, as originally filed, application claim 1 required only, “a bottom surface of the LED assembly includ[ing] a thermally conductive region in thermal contact with the thermally conducting base, for spreading heat transmitted to the base from the one or more LED die.” [’421 patent file history at LSGITC_0000462.] The “solderable” requirement is new matter added by amendment to the claims during prosecution. The specification, too, discloses only “thermal contact,” not “solderable thermal contact.” Regarding Figure 4, the specification states: The bottom surface of the LED assembly 40, shown in FIG. 4, includes a thermally conductive central region 42 adapted to be placed in thermal contact with a thermally conducting base (not shown in FIG. 4), or that is part of the base. Preferably, the thermally conductive central region 42 is composed of the same material as the base. [’421 patent at 4:31-44, Fig. 4]. Absent from this disclosure is any discussion of “soldering” the “region” to the “base,” or that the “region” and the “base” are in “solderable” thermal contact. RIB at 84–5 (emphasis original). Respondents state that the only reference to a region being “solderable” is in Figure 10, an annotated version of which is reproduced below: See RIB at 85. PUBLIC VERSION
115 I have already determined that the provisional application to which the ’421 patent claims priority does not disclose “a bottom surface . . . [that] includes a thermally conductive region in solderable thermal contact with [a] thermally conducting base.” The additional text and figures appearing in the application that led to the ’421 patent do not cure that deficiency. See JX-0007 (’421 patent file history). The “solderable” thermal connection 106 shown in Figure 10 allows the LED assembly to be soldered to an external component such as an external “circuit, heat sink, and the like.” ’421 patent at 7:1–8. The written description does not disclose that connection 106 is solderable to the part of the device designated as base 101. See RX-0134C (Mazzochette Dep.) at 139:20–140:8, 141:6–23, 142:3–143:23, 144:5–11, 144:13–18; Tr. (Lebby) 1273:18–1276:18. Indeed, LSG’s own expert Dr. Kuball testified that, outside of the language of claim 1, the ’421 patent does not teach that thermal connection 106 is solderable to metal base 101. Tr. (Kuball) 460:12–461:2 (“Q. So outside of the claim, it doesn’t say 106 is solderable to 101; right? A. No.”). Solderable bonding pads 105 in Figure 10 also do not provide the necessary written description. Pads 105 are not in contact—solderable or otherwise—with base 101. Similarly, the solderable terminals 23 in Figure 2 are not disclosed to be in solderable thermal contact with a base. The application that led to the ’421 patent did not disclose a region on the bottom surface of the LED assembly in solderable thermal contact with the base at the time of filing, as required by independent claim 1 and dependent claim 6. Those claims are invalid for failure to satisfy the written description requirement of 35 U.S.C. § 112. Ariad Pharm., 598 F.3d at 1351 (“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). PUBLIC VERSION
116 7. Indefiniteness Respondents argue that the claim 1 phrase “thermally conductive region in solderable thermal contact with the thermally conducting base” is indefinite in view of the language of dependent claim 2. RIB at 86–87. This argument is a renewal of the argument Respondents raised at the Markman claim construction hearing. See, e.g., Order No. 31 at 29–31. Respondents’ indefiniteness argument is denied at least for the same reasons set forth in my claim construction order. Additionally, the evidence adduced at the hearing shows this claim language would inform, with reasonable certainty, those skilled in the art about the scope of the invention. See Tr. (Kuball) 354:23–355:11, 357:25–361:6. Accordingly, Respondents have not shown the claim to be indefinite. Nautilus, 134 S. Ct. at 2129. VI. ECONOMIC PRONG OF THE DOMESTIC INDUSTRY REQUIREMENT A. The Relevant Industry To prove satisfaction of the economic prong of the domestic industry requirement, LSG relies on the nineteen luminaire products previously discussed in my technical prong analysis for the ’053 and the ’421 patents (collectively, the “DI Products”). CIB at xviii. The DI Products incorporate the Luminus SST-20-W40H-J4401-LS LED package (alleged to practice the ’053 patent) and the Luminus MP-2835-21C1 and Edison 2835 1W 6V CR195 HL LED packages (alleged to practice the ’421 patent). Respondents argue that LSG has identified the incorrect articles of commerce for purposes of the economic prong analysis, and that LSG has therefore failed to show a domestic industry. See RRB at 117–24. Specifically, Respondents argue that the domestic industry should be analyzed in the context of the three LED packages alleged to practice the asserted patents, and not in the context of downstream luminaire products that incorporate the three Luminus- and Edison-brand LED packages. See id. Respondents further argue that, because LSG has not PUBLIC VERSION
117 quantified investments with respect to the three allegedly protected LED packages, it has failed to demonstrate a domestic industry in those packages. Id. at 17. The Commission adheres to a “long-standing principle that domestic industry (including the definition of the article protected by the patent under section 337(a)(3), 19 U.S.C. 1337(a)(3)) is not determined by a rigid formula, but by an examination of the facts in each investigation, the article of commerce, and realities of the marketplace.” Certain Batteries & Electrochemical Devices Containing Composite Separators, Components Thereof, & Prods. Containing Same (“Batteries & Electrochemical Devices”), Inv. No. 337-TA-1087, Comm’n Notice at 2 (Sept. 7, 2018). Commission precedent “illustrate[s] that where the imported product is a component of a complete downstream product, the relevant domestic industry under the economic prong may, under appropriate circumstance depending on the realities of the marketplace, be defined in terms of a downstream product.” Certain Video Game Sys. & Wireless Controllers & Components Thereof (“Video Game Systems”), Inv. No. 337-TA-770, Comm’n Op. at 67 (Oct. 28, 2013). “Factors to consider regarding the realities of the marketplace analysis include whether the patented technology is sold as a separate entity or article of commerce; whether it is an essential component of the downstream product; and whether the domestic industry activities have a direct relationship to exploitation of the patented technology.” Certain Magnetic Tape Cartridges & Components Thereof (“Magnetic Tape”), Inv. No. 337-TA-1058, Comm’n Op. at 48 (Apr. 9, 2019). Here, the Commission determined to institute an investigation into an industry that includes luminaires. The Notice of Investigation for this matter defines the scope of investigation as “(1) LED packages and assemblies; (2) LED luminaires; and (3) connected ‘smart’ LED lighting systems and components thereof.” 84 Fed. Reg. 29877 (June 25, 2019). Arguably, then, the PUBLIC VERSION
118 Commission has already answered the question of the relevant industry in this investigation. See Certain Air Mattress Sys., Components Thereof, and Methods of Using the Same, Inv. No. 337-TA-971, Comm’n Op. at 42 (June 20, 2017) (“The articles sold by Complainant are air mattress systems [as opposed to the patented air control components], which are reflected in the title of this particular investigation.”). To the extent the question remains open, the realities of the marketplace do not constrain the relevant domestic industry to LED packages used in luminaires; the luminaries themselves are also a material part of the industry. For example, while it is undisputed that LED packages are sold as a separate article of commerce by some companies, testimony from the chief technology officer of Lighting Science and Healthe26 demonstrated that such sales are primarily an input into downstream articles such as the DI Products. Tr. (Maxik) 647:5–14, 757:10–759:2. The evidence also shows that the LED packages at issue here are necessary for the DI Products to function as intended. See Tr. (Maxik) 644:25–645:12, 651:20–652:11; Tr. (Prowse) 759:3–761:19; RX-0144C (Maxik Dep.) at 260:4–261:9; RX-0131C (Zhou Dep.) at 137:1–14, 161:6–162:8, 240:3–20. The evidence further shows that the domestic activities of LSG/Healthe have a direct relationship to exploitation of the patented technology. The inventors contemplated that the technology covered by the asserted patent claims would be used in light sources. See, e.g., ’421 patent at 1:27–30. That is an indication that luminaires are part of the relevant industry. See Magnetic Tape, Comm’n Op. at 54 (recognizing investments in tape drives where “the Media Patent specifications make clear that Sony’s claimed inventions are intended to improve the 26 LSG relies only on domestic expenditures by Lighting Science and Healthe to prove satisfaction of the economic prong of the domestic industry requirement. See Tr. (Maxik) 621:8–12. Lighting Science and Healthe are hereinafter collectively referred to as “LSG/Healthe.” PUBLIC VERSION
120 used either an inside-out or an outside-in approach to bring the DI Products to market. See Tr. (Maxik) 641–642; RX-0130C (Lee Dep.) at 173:22–178:2. With the inside-out approach, LSG/Healthe employees conducted R&D to introduce technology into the market before designing and developing products that implemented that technology. See Tr. (Maxik) 641. With the outside-in approach, LSG/Healthe product development employees went into the market and conducted research to bring back to the company; they then worked together with the R&D team to develop products to address needs in the market. See Tr. (Maxik) 641–42; RX-0130C (Lee Dep.) at 173:22–178:2. Mr. Maxik and other LSG/Healthe employees testified that to create, develop, test, and bring the DI Products to market, they performed at least the following R&D activities within the United States: LED package criteria evaluation and selection; LED package selection, evaluation, specification, and customization; LED package testing, such as performance, suitability, and photometric testing (e.g., sphere, life, and goniometric, and material compatibility testing); LED package design optimization; LED package spectrum design; LED die selection and specification (e.g., die characteristics and phosphor/encapsulant customization); LED and printed circuit board layout design and prototyping; LED package efficiency improvements based on current and voltage; system electronics implementation; thermal management research, design, modeling, simulations, and testing; materials research and case studies for spectrum filtering and heat sink material; light spectrum development; LED color mixing and incorporation into product design; optical design, testing, evaluation, validation, and optimization; light guide optical structure design; research and implementation of improvements to photometric and spectrum output; lumen output and bulb efficacy improvements; mechanical design and prototyping; research and implementation of improvements to mechanical and optical design; power supply design, PUBLIC VERSION
121 prototyping, and improvement research and implementation; product specification defining; product structural, industrial, and outward finish design; product prototyping. See Tr. (Maxik) 686:23–687:16, 689–692, 740:7–741:25; CX-1226C; CX-1213C; CX-1149C; RX-0144C (Maxik Dep.) at 544–45; RX-0131C (Zhou Dep.) at 20–21, 42–47, 51–52, 54–58, 60–63, 68–69, 80:18–81:20, 83–84, 86–90, 93:5–94:21, 101–108, 111:10–121:9, 128–130, 149:17–152:4, 240:10–20; RX-0136C (Palé Dep.) at 31–32, 41–42, 93–94; RX-0130C (Lee Dep.) at 75–78, 173:22–180:25, 183:11–193:13, 202:17–204:18; RX-0140C (Widjaja Dep.) at 7–9, 12–13; RX-0139C (Regan Dep.) at 6, 8:16–9:19, 15:15–16:22, 19–30, 31:7–11, 49:4–51:16, 54:7–55:8; RX-0141C (Bartine Dep.) at 6, 8:8–26:4, 31:16–32:3, 37:1–6. LSG/Healthe does not track employee hours or the number of hours employees spend working on individual products in the regular course of business. See Tr. (Maxik) 681:20–22. In order to allocate labor expenses related to employees who contributed some portion of their time to the design, engineering, and R&D of the DI Products, Fred Maxik (LSG/Healthe’s chief technology officer), Ran Zhou (head of R&D), Khim Lee (Healthe’s CEO and LSG’s president), and Jonathan Palé (Healthe’s former vice-president of engineering and operations) compiled hourly time estimates for these employees.27 Tr. (Maxik) 681–82, 684; RX-0131C (Zhou Dep.) at 176, 178–80; RX-0136C (Palé Dep.) at 15–17; CX-1219C. Respondents argue that the hourly estimates in evidence are unreliable because the persons making the estimates failed to “consult any documents that actually reflected time worked, nor did they break the alleged labor down by tasks or projects.” See RRB at 138–39. I am not persuaded by Respondents’ argument. The evidence shows that Messrs. Maxik, Zhou, Lee, and Palé are the 27 LSG refers to LSG/Healthe employees that worked on one or more of the DI Products as the “DI Employees.” CIB at xviii. I will adopt that convention for purposes of the economic prong discussion. PUBLIC VERSION
122 most knowledgeable about LSG/Healthe’s R&D operations and have been heavily involved in the oversight and general management of the R&D efforts for the DI Products. See Tr. (Maxik) 622:21–623:16, 629:4–20, 648:10–21, 665:20–666:23, 681:11–682:23, 684–685, 742:5–11; RX-0130C (Lee Dep.) at 27, 90, 188; RX-0136C (Palé Dep.) at 6, 40–41; RX-0131C (Zhou Dep.) at 10–17. They compiled the labor hour estimates based on their first-hand knowledge of the DI Employees, the R&D work on the DI Products, LSG/Healthe’s R&D process, and the DI Products themselves. See Tr. (Maxik) 622:21–623:16, 629:4–20, 648:10–21, 665:20–666:23, 681:11–682:23, 684–685, 742:5–11; RX-0130C (Lee Dep.) at 27, 90, 188; RX-0136C (Palé Dep.) at 6, 40–41; RX-0131C (Zhou Dep.) at 10–17. Additionally, they corroborated their estimates with documents from employees, expenditure documents, calendar entries, project documentation, and discussions with current employees regarding their work on the DI Products. See Tr. (Maxik) 675:4–676:4, 681–682, 684–685, 742–743; RX-0144C (Maxik Dep.) at 257:9–258:4, 345:12–346:2; RX-0130C (Lee Dep.) at 194, 197–198, 234; RX-0131C (Zhou Dep.) at 178-186; see also JX-0235C; JX-0327C; JX-0284C–JX-0285C; JX-0288C–JX-0289C; JX-0293C; JX-0297C–JX-0298C; JX-0166C; CX-1112C; CX-1131C; CX-1151C–CX-11157C; CX-1160C–CX-1162C; CX-1164C–CX-1170C; CX-1172C–CX-1183C; CX-1204C–CX-1210C; CX-1223C–CX-1226C. I find that the labor hours estimates submitted by LSG based on work performed by Messrs. Maxik, Zhou, Lee, and Palé are reliable for purposes of the economic prong analysis. In more granular arguments, Respondents contend that LSG counted work on the GoodNight A19, SleepBaby P15, Series A+ Gimbal Lamp, and GoodDay A19 luminaire products before LSG determined to utilize one of the allegedly protected packages in those products. RRB at 125 (citing Tr. (Prowse) 775:9–776:8, 801:25–802:8), 128–32. I do not find Respondents’ PUBLIC VERSION
123 arguments persuasive. The disputed expenditures were made during development of final versions of the products in question, and those final versions contain the LED packages at issue. Thus, the disputed investment are part of an industry “relating to [ ] articles protected by the patent.” See 19 U.S.C. 1337(a)(2); see also CIB at 237–39 (citing, inter alia, Tr. (Maxik) 660:18–661:21; Tr. (Prowse) 775, 800:12–20, 801:25–803:9, 806:7, 807:21–808:5; RX-0144C (Maxik Dep.) at 428:5–434:6, 471:3–18, 473:8–15, 476:14–20). Moreover, LSG offered credible testimony from its employees to demonstrate that the DI Products contain the relevant LED packages. See CIB at 238–39 n.754 (citing to testimony from Messrs. Maxik and Zhou). Respondents also argue that LSG’s labor figures should be discounted because they “include an indeterminable amount of sales and marketing expenditures.” RRB at 135–38. “While marketing and sales activity, alone, may not be sufficient to meet the domestic industry test, those activities may be considered as part of the overall evaluation of whether or not a Complainant meets the economic prong.” See Certain Printing & Imaging Devices & Components Thereof (“Printing & Imaging Devices”), Inv. No. 337-TA-690, Order No. 24 at 34 (Apr. 21, 2010), rev’d on other grounds, Comm’n Op. at 30–31; see also Certain Mobile Devices & Related Software, Inv. No. 337-TA-750, Initial Determination at 6 (Sept. 15, 2011) (“The Commission has embraced a flexible, market-oriented approach to domestic industry, favoring case-by-case determination ‘in light of the realities of the marketplace’ that encompass ‘not only the manufacturing operations’ but may also include ‘distribution, [R&D] and sales.’”). To the extent any of LSG/Healthe’s labor expenditures are related to sale and marketing activities, I find that they are appropriate domestic industry expenditures under the facts of this case. LSG/Healthe is not a mere importer relying solely on marketing expenditures for its domestic industry. Cf. Schaper Mfg. Co. v. U.S. Int’l Trade Comm’n, 717 F.2d 1368, 1373 (Fed. Cir. 1983) (“large expenditures for advertising and PUBLIC VERSION
124 promotion” alone do not transform the activities of a “normal importer” into a domestic industry). LSG designed and developed the DI Products in the United States, and its marketing expenses are reasonably included in an industry related to the allegedly protected articles. See Certain Loom Kits, Inv. No. 337-TA-923, Comm’n Op. at 5–8 (June 26, 2015) (crediting several forms of marketing as contributing to the domestic industry where other domestic activities, including domestic design activities, distinguished the complainant from a mere importer). LSG adduced evidence showing that LSG/Healthe designed, researched, developed, planned, evaluated, and commercialized each of the DI Products in the United States, expending approximately R&D labor hours on the ’053 DI Product and over R&D labor hours on the ’421 DI Products. See Tr. (Maxik) 643, 664. The evidence shows that LSG/Healthe has employed over U.S. employees, and all of LSG/Healthe’s employees have been located in the United States since 2015. See Tr. (Maxik) 664:14–21; CX-1131C. From 2015 through May 2019, at least LSG/Healthe employees performed R&D activities for the ’053 DI Product and, from 2014 through May 2019, at least LSG/Healthe employees performed R&D activities for the ’421 DI Products. See CX-1219C; JX-0144C. LSG/Healthe also employed external consultants and vendors within the United States to assist with certain R&D efforts related to the DI Products. See Tr. (Maxik) 643:16–20, 667:23–668:25, 691:12–692:2; Tr. (Prowse) 781:9–782:3. LSG/Healthe’s domestic labor expenditures for the relevant period include salaries, benefits, employee insurance, and other expenses for the DI Employees, as well as payments made to external consultants and vendors. See Tr. (Prowse) 769:15-781:4; CX-1147C; CX-1156C–CX-1157C; CX-1166C; CX-1168C; CX-1170C; CX-1186C; CX-1188C; CX-1207C–CX-1209C; CX-1219C; CX-1228C; JX-0144C; JX-0150C; JX-0151C. PUBLIC VERSION
125 Based on the record evidence, I find LSG/Healthe spent from 2015 through May 2019 on labor for an industry relating to the ’053 DI Product, and spent from 2014 through May 2019 on labor for an industry relating to the ’421 DI Products. See Tr. (Prowse) 776:13–781:8 (referring to CDX-0007C.23, .26; CDX-0008C.0070, .0092). 2. Capital Expenditures The evidence shows that LSG/Healthe has made investments in its domestic facilities in Cocoa Beach, Melbourne, Cape Canaveral, and West Warwick, where its employees performed R&D on the DI Products. See Tr. (Maxik) 637:17–638:23, 669:1–772:3; CX-1115C–CX-1116C, CX-1118C; CX-1123C; CX-1125C; CX-1133C; CX-1219C; JX-0131C–JX-0138C; JX-0145C; JX-0156C. These expenditures include rent, utilities, building maintenance, and property insurance. See Tr. (Prowse) 782:8–21; CX-1134C–CX-1140C; CX-1147C; CX-1192C– CX-1195C; JX-0146C; JX-0152C. Based on information gathered by LSG, Dr. Prowse calculated that, from 2015 through May 2019, LSG/Healthe spent for facilities where R&D for the ’053 DI Product took place and for the facilities where R&D for the ’421 DI Products took place. See Tr. (Maxik) 669:1–672:3; Tr. (Prowse) 782:8–784:9; CX-1135C–CX-1139C; CX-1192C–CX-1196C. The evidence also shows that LSG/Healthe has purchased, maintained, and leased equipment to perform R&D activities for the DI Products. See Tr. 672:5–674:13 (Maxik); JX-0158C; CX-1202C. Based on information provided by LSG, Dr. Prowse calculated that LSG/Healthe spent on equipment used on the ’053 DI Product from 2015 through May 2019, and spent on equipment used on the ’421 DI Products from 2014 through May 2019. See Tr. (Prowse) 784:10–785:3; JX-0158C; CX-1202C. Based on the record evidence, I find LSG/Healthe made capital investments of from 2015 through May 2019 in an industry relating to the ’053 DI Product, and made capital PUBLIC VERSION
126 investments of from 2014 through May 2019 in an industry relating to the ’421 DI Products. See Tr. (Prowse) 781:5–785:22 (referring to CDX-0007C.23, .26, .30–.35; CDX-0008C.0066–.0159); CX-1219C.28 C. Significance LSG’s expert Dr. Prowse testified that the domestic investments by LSG/Healthe are qualitatively significant at least because the R&D efforts gave rise to the DI Products and those products have enabled LSG to pioneer new markets. Tr. (Prowse) 789–791. The evidence demonstrates that LSG/Healthe is an American company whose domestic R&D investments form the foundation of every product it sells. See Tr. (Maxik) 654:24–655:6; Tr. (Prowse) 755:10–20. Moreover, LSG/Healthe employees within the United States conceptualized, developed, prototyped, tested, sourced, and designed for manufacturing every DI Product at its domestic facilities, and the DI Products would not exist without the domestic investments summarized above. See Tr. (Maxik) 641–642, 643:6–644:12, 686:24–687:20; Tr. (Prowse) 755, 789–790. Respondents argue that the domestic expenditures by LSG/Healthe are not qualitatively significant because LSG/Healthe is not successful as a company. See RRB at 139–40. I am not persuaded by this argument. Although commercial success may be relevant to the domestic industry analysis in some contexts, it is not a threshold requirement for a domestic industry. 28 LSG/Healthe also alleges it incurred domestic expenditures for “product inputs” for developing prototypes, product design, and R&D activities for the DI Products. See Tr. (Maxik) 666:24– 667:22; CX-1112C; CX-1151C–CX-1157C; CX-1160C–CX-1162C; CX-1164C–CX-1170C; CX-1172C–CX-1183C; CX-1204C–CX-1210C. Based on a subset of invoices produced by LSG in this investigation, Dr. Prowse calculated that LSG/Healthe spent at least on R&D product inputs for the ’421 DI Products from 2015 through May 2019. See Tr. (Prowse) 785:4–14; CX-1112C.0096, .2368, .2452, .2718; CX-1151C; CX-1153C. In its post-hearing brief, LSG did not describe what these “product inputs” are or how they are related to an industry in allegedly protected articles. I therefore decline to consider these expenditures further in my domestic industry analysis. PUBLIC VERSION
127 Compare Motiva, LLC v. Int’l Trade Comm’n, 716 F.3d 596, 601 (Fed. Cir. 2013) (affirming no domestic industry where the market had no interest in exploiting the patented technology) with Certain Television Sets, Television Receivers, Television Tuners, & Components Thereof, Inv. No. 337-TA-910, Comm’n Op. at 69 (Oct. 30, 2015) (“Commission precedent indicates that where production, development or sales of protected articles have declined or even ceased entirely, a domestic industry may nevertheless be established based on past significant or substantial investments relating to the protected articles provided that complainant continues to maintain ongoing qualifying activities under section 337(a)(3) at the time the complaint is filed.”) and Certain Non-Volatile Memory Devices, Inv. No. 337-TA-1046, Comm’n Op. at 40–45 (Oct. 26, 2018) (the text of the statute, the legislative history, and past Commission practice demonstrate that the term “article” in section 337(a)(2) “is sufficiently capacious to embrace pre-commercial or non-commercial items”). Here, there is ample evidence that LSG/Health is a going concern and that it continues to pay U.S. employees and make other domestic investments to exploit the patented technology. LSG/Healthe continues to incorporate the LED packages at issue into new products. See Tr. (Maxik) 696:7–697:7; RX-0130C (Lee Dep.) at 33–36, 39–40, 243–250, 252:24–254:6; RX-0131C (Zhou Dep.) at 47:15–22, 49:8–51:17. LSG/Healthe continues to seek out new business opportunities related to the DI Products, and additional customers have requested customizations to the DI Products. See RX-0130C (Lee Dep.) at 33–36, 39–40. LSG also presented evidence showing that none of the DI Products have been discontinued and all remain available for purchase. See Tr. (Maxik) 629:21–630:1; RX-0130C (Zhou Dep.) at 94:21–25; RX-0144C (Maxik Dep.) at 59:16–60:22, 352:16–353:12, 426:5–8; see also Tr. (Maxik) PUBLIC VERSION
128 629:21–630:1 (testifying that Good Day&Night Downlight and Troffer have been renamed to SunTrac™ Downlight and Troffer). As for whether LSG/Healthe’s domestic expenditures are quantitatively significant, LSG argues that the total labor and capital investments related to LSG/Healthe’s R&D activities “are significant when compared to LSG/Healthe’s comparable activities domestically and abroad.” CIB at 248. Specifically, LSG argues: LSG/Healthe has no employees performing R&D on the DI Products overseas, meaning that all of LSG/Healthe’s employment of labor for R&D of the DI Products is domestic. CIB at 248 (citing Tr. (Maxik) 664–665; Tr. (Prowse) 792; CDX-0007C.0039). The vast majority of all R&D investments made by LSG/Healthe in the DI Products were incurred entirely within the United States. CIB at 248 (emphasis original) (citing Tr. (Maxik) 643–644; Tr. (Prowse) 792–793). From 2015 through 2018, LSG/Healthe’s domestic investments in R&D labor and capital associated with the ’053 DI Product represented approximately of LSG/Healthe’s total R&D expenses, and from 2014 through 2018, domestic investments in the ’421 DI Products represented approximately of LSG/Healthe’s total R&D expenses. CIB at 248–49 (citing Tr. (Prowse) 786; CDX-0007C.0040; CDX-0008C.0067-.0068; JX-0155C; JX-0143). The number of LSG/Healthe employees who worked on the DI Products is significant compared to the company’s total employees. From 2015 to 2019, approximately to of LSG/Healthe employees with an average of worked on the ’053 DI Products. From 2014 to 2019, approximately to of LSG/Healthe employees with an average worked on the ’421 DI Products. CIB at 249 (citing Tr. (Prowse) 787–88; CDX-0008C.0121). From 2015 through May 17, 2019, the R&D hours worked by the DI Employees represented for the ’053 DI Product and for the PUBLIC VERSION
129 ’421 DI Products of total labor hours for all of LSG/Healthe’s R&D employees. CIB at 249 (citing Tr. (Prowse) 787; CDX-0008C.0138). LSG/Healthe’s labor and capital expenditures related to the technology in both patents total . This includes labor expenditures of from 2015 through May 2019 for the ’053 DI Product, labor expenditures of from 2014 through May 2019 for the ’421 DI Products, capital investments of from 2015 through May 2019 for the ’053 DI Product, and capital investments of from 2014 through May 2019 for the ’421 DI Products. See Tr. (Prowse) 776:13–785:22 (referring to CDX-0007C.23, .26, .30–.35; CDX-0008C.0066– .0159). I find that total to be significant in view of the facts of this investigation, the articles of commerce at issue, and the realities of the marketplace. The size of the R&D investment over the relevant period is particularly substantial for a small company like LSG/Healthe. For all of the reasons explained above, I find that LSG has shown satisfaction of the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3)(B). VII. CONCLUSIONS OF LAW 1. The importation requirement has not been satisfied with respect to respondents OSRAM GMbH, OSRAM Licht AG, and Lumileds Holding B.V. 2. The importation requirement has been satisfied with respect to the other named respondents in this investigation. 3 The Commission has subject matter, personal, and in rem jurisdiction in this investigation. 4. Claims 1, 2, and 5 of the ’053 patent have not been infringed. 5. Claims 1 and 6 of the ’421 patent have not been infringed. PUBLIC VERSION
130 6. The technical prong of the domestic industry requirement has not been satisfied with respect to either the ’053 patent or the ’421 patent. 7. The economic prong of the domestic industry requirement has been satisfied. 8. Claims 1, 2, and 5 of the ’053 patent have not been shown invalid by clear and convincing evidence. 9. Claims 1 and 6 of the ’421 patent have been shown invalid as anticipated and obvious in view of the prior art. 10. Claims 1 and 6 of the ’421 patent have been shown invalid as failing to satisfy the written description requirement of 35 U.S.C. § 112. VIII. RECOMMENDED DETERMINATION ON REMEDY & BOND The Commission’s Rules provide that the administrative law judge shall issue a recommended determination concerning the appropriate remedy in the event that the Commission finds a violation of section 337, and the amount of bond to be posted by respondents during Presidential review of the Commission action under section 337(j). See 19 C.F.R. § 210.42(a)(l)(ii). A. Findings of Fact Relevant to Remedy and Bond The Commission did not ask me to take public interest evidence or to provide findings and recommendations concerning the public interest. 84 Fed. Reg. 29877 (June 25, 2019). Thus, in accordance with the usual Commission practice and the applicable Commission Rule, the Commission will determine the role that public interest factors may play in this investigation. See 19 C.F.R. § 210.50(b)(1). B. Limited Exclusion Order The Commission has broad discretion in selecting the form, scope, and extent of the remedy in a section 337 proceeding. Viscofan, S.A. v. U.S. Int’l Trade Comm’n, 787 F.2d 544, PUBLIC VERSION
131 548 (Fed. Cir. 1986). A limited exclusion order directed to a respondent’s infringing products is among the remedies that the Commission may impose. See 19 U.S.C. § 1337(d). LSG argues that, in the event a violation of section 337 is found, “the Commission should issue LEOs directed to each Respondent, as well as its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, prohibiting entry of products and components thereof that infringe the Asserted Patents that were manufactured or imported by or on behalf of Respondents, or any of their affiliated companies, parents, subsidiaries, successors, assigns, or other related business entities, for the remaining term of the Asserted Patents, except under license of the patents’ owner or as provided by law.” See CIB at 256. Respondents argue that, in the event a limited exclusion order issues, “it should not cover products of non-named parties, including their downstream products.” RIB at 144 (citing Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356 (Fed. Cir. 2008)). Respondents also argue that “ any limited exclusion order should, as is customary, include a provision whereby Respondents can certify that their imported products are not subject to exclusion.” Id. Because I do not find a violation of section 337, I do not recommend that a limited exclusion order should issue. However, if the Commission determines that a violation of section 337 has occurred and if consideration of the statutory public interest factors does not require that remedies be set aside or modified, I recommend that the Commission issue a limited exclusion order barring entry of products that infringe the asserted patents. Consistent with Kyocera Wireless Corp., the entities named in the limited exclusion order should be the named Respondents found in violation of section 337. 545 F.3d at 1356. Any limited exclusion order should include a PUBLIC VERSION
132 provision whereby Respondents can certify that their imported products are not subject to exclusion.29 C. Cease and Desist Order Section 337 provides that in addition to, or in lieu of, the issuance of an exclusion order, the Commission may issue a cease and desist order as a remedy for a violation of section 337. 19 U.S.C. § 1337(f)(1). The Commission may issue a cease and desist order when it has personal jurisdiction over the party against whom the order is directed. Gamut Trading Co. v. U.S. Int’l Trade Comm’n, 200 F.3d 775, 784 (Fed. Cir. 1999). Because I do not find a violation of section 337, I do not recommend that cease and desist orders should issue against the Respondents. For the benefit of the Commission, however, I evaluate the hypothetical scenario in which the Commission determines that a violation of section 337 has occurred and consideration of the statutory public interest factors does not require that remedies be set aside or modified. Under Commission precedent, “[c]ease and desist orders are generally issued when, with respect to the imported infringing products, respondents maintain commercially significant inventories in the United States or have significant domestic operations that could undercut the remedy provided by an exclusion order.” Certain Air Mattress Systems, Components Thereof, and Methods of Using the Same, Inv. No. 337-TA-971, Comm’n Op. at 49 (May 17, 2017) (citations and footnote omitted). “A complainant seeking a [cease and desist order] must demonstrate, based 29 This certification provision would allow Acuity, for instance, to certify that none of its products incorporate the Nichia 219B series of LED packages alleged to infringe the ’053 patent. See supra Section IV.A.1.b. PUBLIC VERSION
133 on the record, that this remedy is necessary to address the violation found in the investigation so as to not undercut the relief provided by the exclusion order.” Id. at 50. LSG argues that the Commission should issue cease and desist orders against all Respondents except Cree.30 CIB at 257. Specifically, LSG argues: [Cease and desist orders] directed at these Respondents are necessary in view of the commercially significant inventories of Accused Products they either stipulated to holding in the U.S. or were determined to hold in the U.S. based on their responses to the Complaint and discovery responses, which demonstrate their respective abilities to promptly fill customer orders. [The] non-Cree Respondents still hold commercially significant inventories of the Accused Products in the U.S. [Cease and desist orders] will ensure that these inventoried Accused Products are not disseminated in the United States. These [cease and desist orders] should prohibit Respondents from importing, selling for importation, marketing, distributing, offering for sale, selling, transferring, advertising, soliciting U.S. agents or distributors, or aiding and abetting others in the importation, sale for importation, sale after importation, transfer, or distribution of products that infringe the Asserted Patents. Id. Respondents contend that LSG’s argument for cease and desist orders “suffers from several critical flaws.” RRB at 145. In particular, Respondents argue that LSG has failed to show that any inventory of accused products held by Respondents in the United States is commercially significant. See id. at 145–49 (including specific arguments for OSRAM, Nichia, Lumileds, Acuity, LEDVANCE). Respondents also point out that LSG’s request for cease and desist orders improperly extends to all non-Cree Respondents, even those that do not hold inventories in the United States. Id. at 145–46. The Commission has found inventories to be “commercially significant” based on a comparison between the quantity and the volume of product at issue sold or imported over time. 30 LSG concedes that Cree does not hold relevant inventories of accused products in the United States. See Tr. (Malkiewicz) 821:8–14. PUBLIC VERSION
134 Certain Optoelectronic Devices for Fiber Optic Commc’ns, Components Thereof & Prods. Containing Same, Inv. No. 337-TA-860, Comm’n Op. at 36–37 (May 9, 2014); Certain Abrasive Prods. Made Using a Process for Powder Preforms, & Prods. Containing Same, Inv. No. 337-TA-449, Comm’n Op., USITC Pub. No. 3530 (Aug. 2002). To assess the commercial significance of OSRAM’s domestic inventory, LSG compared the number of units in OSRAM’s inventory with the number of units sold by LSG in a month See CDX-0009C.0093. LSG argues that OSRAM’s inventory is commercially significant because comprises more than of LSG’s monthly sales. See id. Yet, the fact that LSG does not sell many units in a month does not necessarily mean that OSRAM’s inventory is commercially significant. When compared with OSRAM’s monthly sales average of OSRAM’s inventory of units is less than a worth of sales (assuming a See id. I find that OSRAM’s domestic inventory is de minimis and is not commercially significant. See Optoelectronic Devices, Comm’n Op. at 36–37 (evaluating significance by comparing the respondent’s imports with its inventory, not with the complainant’s market share). Nichia argues that a cease and desist order should not issue as to Nichia Corporation because all domestic inventories are held by Nichia America Corporation (“NAC”). See RRB at 147. The domestic inventories held by NAC total . See CDX-0009C.0086. When compared with Nichia’s monthly sales average of , the inventory equals approximately worth of sales. See id. I find that this amount of inventory is commercially significant. Lumileds holds in its domestic inventory and sells on average units per month. See CDX-0009C.0074. Its domestic inventory thus equals approximately PUBLIC VERSION
135 worth of sales. I find that Lumileds’s domestic inventory is de minimis and is not commercially significant. Acuity’s domestic inventories are valued at See CDX-0009C.0042. When compared with Acuity’s monthly sales, this inventory comprises See RRB at 148 n.566, 149 n.567 (citing CDX-0010C Exs. 2.0 and 2.1). I find that this amount of inventory is commercially significant. LEDVANCE’s policy is to maintain a domestic inventory of 1 to 1.5 months’ worth of sales. See Tr. (Fetten) 1124:3–11. I find that this amount of inventory is commercially significant. Current’s domestic inventories are valued at See CDX-0009C.0054. I find that Current’s domestic inventory is commercially significant. GE holds units in its domestic inventory and sells on average units per month. See CDX-0009C.0060. Its domestic inventory thus equals approximately worth of sales. I find that GE’s domestic inventory is commercially significant. Leedarson has stipulated that its domestic inventory of products is commercially significant for purposes of this investigation. JX-0010C ¶ 4. Signify holds units in its domestic inventory and sells on average units per month. See CDX-0009C.0099. Its domestic inventory thus equals more than 4 years’ worth of sales. I find that Signify’s domestic inventory is commercially significant. I next consider whether LSG’s showing of commercially significant domestic inventories held by Nichia, Acuity, LEDVANCE, Current, GE, Leedarson, and Signify automatically entitles LSG to cease and desist orders against those entities. As noted above, the Commission has stated that a complainant has an affirmative burden to show that a cease and desist order “is necessary to PUBLIC VERSION
136 address the violation found in the investigation so as to not undercut the relief provided by the exclusion order.” See, e.g., Certain Air Mattress Systems, Comm’n Op. at 49–50 (emphasis added). Here, LSG has offered no argument or evidence as to why a limited exclusion order against any violating respondent would not afford it complete relief, making cease and desist orders necessary. See CIB at 257. On this record, it is not clear LSG has met the burden the Commission has articulated in many past determinations. Nevertheless, the Commission has “broad discretion” in determining whether to issue a cease and desist order in a contested case. Viscofan, S.A. v. U.S. Int’l Trade Comm’n, 787 F.2d 544, 548 (Fed. Cir. 1986). The exercise of that discretion is highly fact-specific. For example, in one opinion the Commission speculated that in some circumstances even two weeks’ worth of inventory could have an “adverse effect upon the complainant” and justify cease and desist orders: [A]s a practical matter, a complainant will not be afforded complete relief so long as a respondent is allowed to sell without bond any commercially significant level of product in its inventory. If a respondent is permitted to sell without bond a “customary” inventory equal to, for example, two weeks’ worth of sales, then the complainant still will be confronted with that amount of unfair import competition after issuance of an exclusion order. The adverse effect upon the complainant may be less than if the respondent had inventory equal to four weeks’ worth of sales, but it is not insignificant or non-existent. Certain Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, Comm’n Op. at 38, USITC Pub. No. 2391 (June 1991) (emphasis added). In disposing of that same investigation, the Commission noted it had required the complainant to identify “specific information . . . necessary to justify the issuance of permanent cease and desist orders.” Id. Thus, even if two weeks of domestic inventory could justify cease and desist orders in some cases, LSG is not relieved of its the burden to show here that a cease and desist order “is necessary to address the violation found in the investigation so as to not undercut the relief provided by the exclusion order.” See, e.g., Certain Air Mattress Systems, Comm’n Op. at 49-50 PUBLIC VERSION
137 (emphasis added). LSG has failed to meet that burden. Although some of the Respondents do hold commercially significant domestic inventories of accused products, LSG’s scant briefing failed to show that cease and desist orders are necessary to prevent those respondents from undercutting the remedy provided by a limited exclusion order. On the facts of this record, it is my recommendation that no cease and desist orders issue if a violation is found. D. Bond During Presidential Review Pursuant to section 337(j)(3), the administrative law judge and the Commission must determine the amount of bond to be required of a respondent, during the 60-day Presidential review period following the issuance of permanent relief, in the event that the Commission determines to issue a remedy. The purpose of the bond is to protect the complainant from any injury. 19 U.S.C. § 1337(j)(3); 19 C.F.R. §§ 210.42(a)(1)(ii), 210.50(a)(3). When reliable price information is available, the Commission has often set the bond by eliminating the differential in sales prices between the domestic product and the imported, infringing product. Certain Microsphere Adhesives, Process for Making Same, and Products Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op. at 24, USITC Pub. No. 2949 (1995). In other cases, the Commission has turned to alternative approaches, especially when the level of a reasonable royalty rate could be ascertained. See Certain Integrated Circuit Telecommunication Chips and Products Containing Same, Including Dialing Apparatus, Inv. No. 337-TA-337, Comm’n Op. at 41-43, USITC Pub. No. 2670 (1995). A 100-percent bond has been required when no effective alternative existed. Certain Flash Memory Circuits and Products Containing Same, Inv. No. 337-TA-382, USITC Pub. No. 3046, Comm’n Op. at 26-27 (July 1997) (a 100-bond imposed when price comparison was not practical because the parties sold products at different levels of commerce, and the proposed royalty rate appeared to be de minimis and without adequate support in the record). PUBLIC VERSION
138 With respect to bond, LSG argues that bond should be set “based on the royalty rate that LSG has previously entered into with other manufacturers of LED products.” CIB at 259. LSG’s expert Mr. Malkiewicz testified that the royalties found in LSG’s license agreements provide information to determine a specified royalty rate ranging from percent, or to derive an implied or effective royalty rate ranging from approximately percent. See Tr. (Malkiewicz) 851, 867; JX-0171C–JX-0191C; CX-1728C. Based on this information, LSG argues that the bond should be set at 5 percent. CIB at 259 (citing Tr. (Malkiewicz) 820, 853, 867, 870). Respondents take the position that “LSG failed to meet its burden of establishing that a bond is warranted during the Presidential review period.” RRB at 151; see also Certain Cases for Portable Elec. Devices, Inv. No. 337-TA-867, Comm’n Op. at 21 (July 10, 2014) (“Complainant bears the burden of establishing the need for a bond amount in the first place.”). Specifically, Respondents argue that LSG “failed to analyze what injury LSG would suffer during the Presidential review period if a bond is not issued” and therefore the bond rate should be set at zero percent. Id. (citing Certain X-Ray Breast Imaging Devices & Components Thereof, Inv. No. 337-TA-1063, Initial Determination at 280 (Sept. 26, 2018) (setting the bond at zero percent even though complainants offered a price differential calculation because complainants failed to “conduct an injury analysis and could only speculate as to whether [respondents’] sales would injure [complainant]”)). Having considered the arguments of the parties and the evidence of record, I find that LSG has failed to demonstrate that a bond is warranted under the circumstances of this investigation. Specifically, LSG has not argued that a bond is needed to protect it from injury during the 60-day Presidential review period in the event the Commission finds a violation of section 337. See CIB at 258–59. Therefore, it is my recommendation that the Commission, in the event it finds a PUBLIC VERSION
139 violation of section 337 has occurred, set a zero percent bond for any importations of infringing products during the Presidential review period. IX. INITIAL DETERMINATION ON VIOLATION For the reasons set forth above, it is my initial determination that a violation of section 337 of the Tariff Act, as amended, has not occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain light-emitting diode products, systems, and components thereof based on allegations of infringement of U.S. Patent No. 7,095,053 and U.S. Patent No. 7,528,421. I hereby certify to the Commission this Initial Determination and the Recommended Determination. The Secretary shall serve the confidential version of this Initial Determination upon counsel who are signatories to the Protective Order (Order No. 1) issued in this investigation. A public version will be served at a later date upon all parties of record. Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R. § 210.43(a) or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review of the Initial Determination or certain issues therein. X. ORDER Within seven days of the date of this document, the parties shall jointly submit a single proposed public version with any proposed redactions indicated in red. If the parties submit excessive redactions, they may be required to provide declarations from individuals with personal knowledge, justifying each proposed redaction and specifically explaining why the information sought to be redacted meets the definition for confidential business information set forth in 19 C.F.R. § 201.6(a). To the extent possible, the proposed redactions should be made PUBLIC VERSION
140 electronically, in a single PDF file using the “Redact Tool” within Adobe Acrobat. The proposed redactions should be submitted as “marked” but not yet “applied.” The proposed redactions should be submitted via email to Cheney337@usitc.gov and not filed on EDIS. SO ORDERED. PUBLIC VERSION
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has been served to the following parties as indicated, on July 24, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Lighting Science Group Corporation, Healthe, Inc.: Kayvan B. Noroozi, Esq. NOROOZI PC 11601 Wilshire Blvd., Suite 2170 Los Angeles, CA 90025 Email: kayvan@noroozipc.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Complainant Global Value Lighting, LLC: Kenneth G. Parker HAYNES AND BOONE, LLP 600 Anton Boulevard, Suite 700 Costa Mesa, CA 92626 Email: kenneth.parker@haynesboone.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent General Electric Company and Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC): Eric S. Namrow. Esq. MORGAN, LEWIS & BOCKIUS LLP 1111 Pennsylvania Ave, N.W. Washington, D.C. 20004 Email: eric.namrow@morganlewis.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 Certificate of Service – Page 2 On Behalf of Respondents OSRAM GmbH, OSRAM Licht AG, OSRAM Opto Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.: Paul M. Bartkowski, Esq. ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1133 Connecticut Avenue, NW, 12th Floor Washington, DC 20036 Email: bartkowski@adduci.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Signify N.V. (f/k/a Philips Lighting N.V.) and Signify North America Corporation (f/k/a Philips Lighting North America Corporation): Adam D. Swain, Esq. ALSTON & BIRD LLP 950 F Street NW Washington, DC 20004 Email: adam.swain@alston.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Nichia Corporation and Nichia America Corporation: Thomas R. Makin, Esq. SHEARMAN & STERLING LLP 599 Lexington Avenue New York, NY 10022 Email: thomas.makin@shearman.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Cree Inc., Cree Hong Kong, Limited, and Cree Huizhou Solid State Lighting Co. Ltd.: S. Alex Lasher, Esq. QUINN EMANUEL URQUHART & SULLIVAN, LLP 1300 I Street, NW, Suite 900 Washington, DC 20005 Email: alexlasher@quinnemanuel.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 Certificate of Service – Page 3 On Behalf of Respondents Lumileds Holding B.V. and Lumileds, LLC: Bryan A. Kohm, Esq. FENWICK & WEST LLP 555 California Street, 12th Floor San Francisco, CA 94104 Email: bkohm@fenwick.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc.: John M. Caracappa, Esq. STEPTOE & JOHNSON, LLP 1330 Connecticut Avenue, N.W. Washington, D.C. 20036 Email: jcaracappa@steptoe.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Acuity Brands, Inc. and Acuity Brands Lighting, Inc.: Matthew S. Yungwirth, Esq. DUANE MORRIS LLP 1075 Peachtree Street NE, Suite 2000 Atlanta, Georgia 30309 Email: MSYungwirth@duanemorris.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Current Lighting Solutions, LLC: Steven E. Adkins, Esq. MCGUIREWOODS LLP 2001 K Street N.W., Suite 400 Washington, D.C. 20006 Email: seadkins@mcguirewoods.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LEDVANCE LLC: Edwin Wheeler, Esq. INTELINK LAW GROUP, PC One Market Street Spear Tower, 36th Floor San Francisco, CA 94105 Email: ewheeler@intelinklaw.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Investigation No. 337-TA-1168 NOTICE OF COMMISSION DECISION NOT TO REVIEW AN INITIAL DETERMINATION GRANTING IN PART RESPONDENTS’ MOTION FOR SUMMARY DETERMINATION OF NON-INFRINGEMENT AND THAT THE TECHNICAL PRONG OF THE DOMESTIC INDUSTRY REQUIREMENT IS NOT SATISFIED AS TO CERTAIN ASSERTED CLAIMS AGENCY: U.S. International Trade Commission. ACTION: Notice. SUMMARY: Notice is hereby given that the U.S. International Trade Commission has determined not to review an initial determination (“ID”) (Order No. 32) granting in part respondents’ motion for summary determination of non-infringement and that the technical prong of the domestic industry requirement is not satisfied as to certain asserted claims. FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, D.C. 20436, telephone (202) 708-2310. Copies of non-confidential documents filed in connection with this investigation may be viewed on the Commission’s electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General information concerning the Commission may also be obtained by accessing its Internet server at https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission’s TDD terminal, telephone 202-205-1810. SUPPLEMENTARY INFORMATION: On June 25, 2019, the Commission instituted Certain Light-Emitting Diode Products, Systems, and Components Thereof (I), Inv. No. 337-TA- 1163 (“Certain LED Products (I)”), based on a complaint filed by Lighting Science Group Corporation and Health Inc., both of Cocoa Beach, Florida; and Global Value Lighting, LLC of West Warwick, Rhode Island (collectively, “LSG”). 84 FR 29877-79 (June 25, 2019). The complaint, as amended and supplemented, alleges violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain light-emitting diode products, systems, and components thereof by reason of infringement of certain claims of
2 U.S. Patent Nos. 7,528,421 (“the ’421 patent”); 7,095,053 (“the ’053 patent”); 7,098,483 (“the ’483 patent”); 8,506,118 (“the ’118 patent); 8,674,608 (“the ’608 patent”); 8,201,968 (“the ’968 patent”); and 8,967,844 (“the ’844 patent”). The complaint further alleges the existence of a domestic industry. The Commission’s notice of investigation named 23 respondents: Nichia Corp. of Tokushima, Japan; Nichia America Corp. of Wixom, Michigan; Cree, Inc. of Durham, North Carolina; Cree Hong Kong, Ltd. of Shatin, Hong Kong; Cree Huizhou Solid State Lighting Co. Ltd. of Guangdong, China; OSRAM GmbH and OSRAM Licht AG, both of Munich, Germany; OSRAM Opto Semiconductors GmbH of Regensburg, Germany; OSRAM Opto Semiconductors, Inc. of Sunnyvale, California; Lumileds Holding B.V. of Schipol, Netherlands; Lumileds LLC of San Jose, California; Signify N.V. (f/k/a Phillips Lighting N.V.) of Eindhoven, Netherlands; and Signify North America Corporation of Somerset, New Jersey; MLS Co., Ltd. of Zhongshan City, China; LEDVANCE GmbH of Garching, Germany; LEDVANCE LLC of Wilmington, Massachusetts; General Electric Company of Boston, Massachusetts; Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC) and Current Lighting Solutions, LLC, both of Cleveland, Ohio; Acuity Brands, Inc. of Atlanta, Georgia; Acuity Brands Lighting, Inc. of Conyers, Georgia; Leedarson Lighting Co., Ltd. of Xiamen, China; Leedarson America, Inc. of Smyrna, Georgia (all collectively, “Respondents”). The Office of Unfair Import Investigations is not participating in the investigation. On July 10, 2019, the ALJ, pursuant to Commission Rule 210.14(h), 19 CFR 210.14(h), severed Certain LED Products (I) into two investigations. See Certain LED Products (I), Order No. 5 (July 10, 2019). The ALJ specified that all issues relating to whether there is a violation of section 337 based on the allegations of infringement of the ’118 and ’608 patents would be addressed in Certain LED Products (I) (the 1163 investigation). Id. The ALJ also specified that all issues relating to whether there is a violation of section 337 based on the allegations of infringement of the ’421, ’053, and ’483 patents would be addressed in Certain Light-Emitting Diode Products, Systems, and Components Thereof (III), Inv. No. 337-TA-1168 (“Certain LED Products (III)”). Id.; see also Certain LED Products (III), Order No. 5 (July 10, 2019). On November 26, 2019, Respondents moved for summary determination of non- infringement and that the technical prong of the domestic industry requirement is not satisfied with respect to all asserted claims. On February 14, 2020, three days after the ALJ issued a Markman Order (Order No. 31) construing certain claims in dispute, LSG filed a notice stipulating that neither infringement nor satisfaction of the technical prong could be shown with respect to claims 11 and 14-16 of the ’483 patent and claims 7 and 11-15 of the ’053 patent. On the same date, the ALJ issued the subject ID (Order No. 32) granting in part Respondents’ motion for summary determination of non-infringement and that the technical prong of the domestic industry requirement is not satisfied with respect to asserted claims 11 and 14-16 of the ’483 patent and claims 7 and 11-15 of the ՚053 patent.
3 On March 3, 2020, LSG petitioned for review of the subject ID. On March 17, 2020, Respondents filed a joint response in opposition to the petition for review. Having reviewed the record including the parties’ briefing, the Commission has determined not to review the subject ID (including the underlying Markman Order with respect to the claim terms that are the subject of LSG’s petition). The authority for the Commission’s determination is contained in section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in part 210 of the Commission’s Rules of Practice and Procedure, 19 CFR part 210. By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: April 7, 2020
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached NOTICE has been served to the following parties as indicated, on April 7, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Lighting Science Group Corporation, Healthe, Inc.: Kayvan B. Noroozi, Esq. NOROOZI PC 11601 Wilshire Blvd., Suite 2170 Los Angeles, CA 90025 Email: kayvan@noroozipc.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Complainant Global Value Lighting, LLC: Kenneth G. Parker HAYNES AND BOONE, LLP 600 Anton Boulevard, Suite 700 Costa Mesa, CA 92626 Email: kenneth.parker@haynesboone.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent General Electric Company and Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC): Eric S. Namrow. Esq. MORGAN, LEWIS & BOCKIUS LLP 1111 Pennsylvania Ave, N.W. Washington, D.C. 20004 Email: eric.namrow@morganlewis.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents OSRAM GmbH, OSRAM Licht AG, OSRAM Opto Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.:
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 Certificate of Service – Page 2 Paul M. Bartkowski, Esq. ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1133 Connecticut Avenue, NW, 12th Floor Washington, DC 20036 Email: bartkowski@adduci.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Signify N.V. (f/k/a Philips Lighting N.V.) and Signify North America Corporation (f/k/a Philips Lighting North America Corporation): Adam D. Swain, Esq. ALSTON & BIRD LLP 950 F Street NW Washington, DC 20004 Email: adam.swain@alston.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Nichia Corporation and Nichia America Corporation: Thomas R. Makin, Esq. SHEARMAN & STERLING LLP 599 Lexington Avenue New York, NY 10022 Email: thomas.makin@shearman.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Cree Inc., Cree Hong Kong, Limited, and Cree Huizhou Solid State Lighting Co. Ltd.: S. Alex Lasher, Esq. QUINN EMANUEL URQUHART & SULLIVAN, LLP 1300 I Street, NW, Suite 900 Washington, DC 20005 Email: alexlasher@quinnemanuel.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Lumileds Holding B.V. and Lumileds, LLC: Bryan A. Kohm, Esq. FENWICK & WEST LLP 555 California Street, 12th Floor San Francisco, CA 94104 Email: bkohm@fenwick.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) Inv. No. 337-TA-1168 Certificate of Service – Page 3 On Behalf of Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc.: John M. Caracappa, Esq. STEPTOE & JOHNSON, LLP 1330 Connecticut Avenue, N.W. Washington, D.C. 20036 Email: jcaracap@steptoe.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents Acuity Brands, Inc. and Acuity Brands Lighting, Inc.: Matthew S. Yungwirth, Esq. DUANE MORRIS LLP 1075 Peachtree Street NE, Suite 2000 Atlanta, Georgia 30309 Email: MSYungwirth@duanemorris.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Current Lighting Solutions, LLC: Steven E. Adkins, Esq. MCGUIREWOODS LLP 2001 K Street N.W., Suite 400 Washington, D.C. 20006 Email: seadkins@mcguirewoods.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LEDVANCE LLC: Edwin Wheeler, Esq. INTELINK LAW GROUP, PC One Market Street Spear Tower, 36th Floor San Francisco, CA 94105 Email: ewheeler@intelinklaw.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION - Washington, D.C. In _theMatter of 1 . CERTAIN LIGHT-EMITTING DIODE IllV-N0- 337-TA-1168 PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) ' ORDER NO. 32: INITIAL DETERMINATION GRANTING IN PART RESPONDENTS’ MOTION FOR SUMMARY DETERMINATION OF NONINFRINGEMENT AND THAT THE TECHNICAL PRONG OF THE DOMESTIC INDUSTRY REQUIREMENT IS NOT SATISFIED (Februaxy 14, 2020)
TABLE OF CONTENTS Introduction .................................................................................................................. .. Legal Standards .........,.................................................................................................. .. A. Summary Determination .................................................................................. .. B. Infringement ..................................................................................................... .. C. Technical Prong of the Domestic Industry Requirement ................................. .. Undisputed Facts .......................................................................................................... .. Initial Determination ................................................................. .. Page .... ..1 .... ..2 .... ..2 .... ..3 .... ..3 .... ..4 .... ..5
R I. INTRODUCTION . . On November 26, 2019, Respondents] filed a motion and supporting memorandum seeking summary determination that complainant LSG2 does not satisfy the technical prong of the domestic industry requirement for any claim of the patents asserted in this investigati0n.3 Motion Docket No. 1168-004. LSG filed an opposition to the motion on December 11, 2019.4 On February 11, 2020, I issued Order No. 31, which construed certain claim terms identified by the parties as needing construction. Two of the claim tenns I construed are pertinent to this initial determination. They are “decoder/driver electronics” and “an electrical path including an insulating conducting via through the metal base.” See Order No. 31, at 7-16. On February 13, 2020, I convened a telephone conference at the parties’ request to discuss logistical consequences of my claim construction order. See Notice Regarding Hearing and ' “Respondents” refers collectively to Lumileds Holding B.V.; Lurnileds LLC; Cree, Inc.; Cree Hong Kong Ltd.; Cree Huizhou Solid State Lighting Co. Ltd.; Acuity Brands, Inc.; Acuity Brands Lighting, Inc.; Current Lighting Solutions, LLC; General Electric Company; Consumer Lighting (U.S.), LLC; LEDVANCE LLC; Leedarson Co., Ltd.; Leedarson America, Inc.; Nichia C0rp.; Nichia America Corp.; OSRAM GmbH; OSRAM Licht AG; OSRAM Opto Semiconductors GmbH; OSRAM Opto Semiconductors, Inc.; Signify N.V.; and Signify North America Corporation. 2“LSG” refers collectively to Lighting Science Group Corporation, Healthe Inc., and Global Value Lighting, LLC. 3The patents and claims asserted in this investigation are claims 1-3, 5-7, 11-15, and 21 of U.S. Patent No. 7,095,053-(“the ’053 patent”); claims 11 and 14-16 of U.S. Patent No. 7,098,483 (“the ’483 patent”); and claims 1 and 6 of U.S. Patent No. 7,528,421 (“the ’421 patent’_’). See 84 Fed. Reg. 29877 (June 25, 2019) (“Notice of Investigation”); Order No. 18: Initial Determination Terminating the Investigation as to Claim 7 of U.S. Patent No. 7,528,421 (Dec. 30, 2019), afl’d, Comrn’n Notice (EDIS Doc. ID 700609) (Jan. 29, 2020); Order No. 26: Initial Determination Tenninating the Investigation as to Certain Claims (Jan. 29, 2020) (pending Commission review). 4 LSG subsequently filed a motion seeking leave to supplement its response to the pending motion for summary determination. Motion Docket No. 1168-007. Respondents filed a response stating they do not oppose LSG’s motion for leave. Motion No. 1168-007 is granted.
Respondents’ Motion for Summary Determination (EDIS Doc. ID 702579) (Feb. 14, 2020) (“Notice”). Following the conference, the parties filed the following joint statement: Under Judge Cheney’s claim constructions of “decoder/driver electronics” and “an electrical path including an insulating conducting via through the metal base,” Complainants will notbe able to demonstrate infiingement or technical domestic industry as to the asserted claims of the ’483 patent and as to claim 7 of the ’O53patent and its dependents based on the products at . issue in this investigation. ' Notice at 1‘-2. I F I hereby deem this joint statement and the oral arguments presented during the conference to be a supplement to the pending motion for summary detemminationsuch that, in addition to the domestic industry teclmical prong arguments briefed previously, Respondents now also seek summary determination of noninfringement as to the asserted claims of the ’483 patent and claim 7 of the ’O53 patent and its _dependents.5 I II. LEGAL STANDARDS A. Summary Determination Summary determination is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to a determination as a matter of law. See 19 C.F.R. § 210.18. In detennining whether there is a genuine issue of material fact, “the evidence must be viewed in the light most favorable to the party opposing the motion with doubts resolved in favor of the non n1ovant;” Crown Operations Int’l, Ltd v. Solutia, Ina, 289 F.3d 1367, 1375 (Fed. Cir. 2002) (citations omitted). 5Asserted claims 11-15 of the ’053 patent depend from claim 7. . 2 V
B. Infringement A determination of patent infringement generally encompasses a two-part process. See Cybor Corp. v. FAS Techs., 1nc., 138 F.3d 1448, 1454 (Fed. Cir. 1998). First, the language of the claims must be construed todetermine the proper scope and meaning of the terms, which is a question of law. Deering Precision Instrument, L.L.C. v. Vector Distribution -Sys.,Inc., 347 F.3d 1314, 1322 (Fed. Cir. 2003). Second, a factual determination must be made as to whether the claims, as construed, cover the accused products. Id. “Since the ultimate burden of proving infringement rests with the patentee, an accused infringer seeking summary judgment of noninfringement may meet its initial responsibility either by providing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to establish amaterial issue of fact essential to the patentee’s case.” Novartis Corp. v. Ben Venue Labs., 1nc., 271 F.3d 1043, 1046 (Fed. Cir. 2001). C. Technical Prong of the Domestic Industry Requirement > For a patent-based complaint, a violation of section 337 can be found “only if an industry in the United States, relating to the articles protected by the patent . . . concerned, exists or is in the process of being established.” 19 U.S.C. § 1337(a)(2). The complainant bears the burden of establishing that the domestic industry requirement is satisfied. See Certain Set-Top Boxes and Components Thereof, Inv. No. 337-TA-454, ID at 294, 2002 WL 31556392 (June 21, 2002) (Lmreviewedby Commission in relevant part). The domestic industry requirement of section 337 is often described as having an economic prong and a technical prong. InterDigital Commc’ns, LLC v. Int'l Trade Comm ’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013); Certain Stringed Musical Instruments and Components Thereoj’,Inv. No. 337-TA-586, Cornrn’n Op. at 12-14, USITC Pub. No. 4120, 2009 WL 5134139 (Dec. 2009). 3
\ The technical prong of the domestic industry requirement is satisfied when the complainant in a patent-based section 337 investigation establishes that is practicing or exploiting the patents at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain iMicr0sphere Adhesives, Process for Making Same .and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, C0mm’n Op., 1996 WL 1056095, at *4 (Jan. 16, 1996). “The test for satisfying the ‘technical prong‘ of the industry requirement is essentially [the] same as that for infringement, i.e., a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int ‘ITrade Comm ’n,342 F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of the evidence that the domestic product practices one or more claims of the patent. It is sufficient to show that the products practice any claim of that patent, not necessarily an asserted claim of that patent. See Certain Male Prophylactic Devices, Inv. No. 337-TA-546, Comm’n Op. at 38 (Aug. 1, 2007). 9 HI. UNDISPUTED FACTS As discussed above, no party disputes the following facts: Under Judge Cheney’s claim‘constructions of “decoder/driver electronics” and “_anelectrical path including an insulating conducting via through the metal base,” Complainants [camiot] demonstrate infringement or technical domestic industry as to the asserted claims of the ’483 patent and as to claim 7 of the ’O53patent and its dependents based on the products at issue in this investigation. . See Notice at 1-2. I hereby adopt the undisputed facts above as part of this initial determination. I hereby also incorporate the discussion of the terms “decoder/driver electronics” and “an electrical path including an insulating conducting via through the metal base” on pages 7-16 of Order No. 31 as part of this initial determination. 4
IV. INITIAL DETERMINATION ' In view of my construction of the terms “decoder/driver electronics” and “an electrical path including an insulating conducting via through the metal base” and the undisputed facts above, I find that none of the accused products in this investigation infringe asserted claims 11, 15, 14, and 16 ofthe ’483 patent or asserted claims 7, 11, 12, 13, 14, and 15 ofthe ’053 patent. I also find that LSG does not satisfy the technical prong of the domestic industry requirement with respect to asserted claims 11, 15, 14, and 16 ofthe ’483 patent or asserted claims 7, 11, 12, 13, 14',and 15 of the ’053 patent. It is therefore my initial determination that there has not been a violation of section 337 of the Tariff Act, as amended, due to the importation into the United States, the sale for importation, or the sale within the United States afier importation of certain light-emitting diode products, systems, and components thereof with respect to these claims. Accordingly, Motion No. 1168-004 is granted in part.° ' ; This initial determination is hereby certified to the Commission. Pursuant to 19 C.F.R. § 210.42(h), this initial determination shall become the determination of the Commission unless a party files a petition for review pursuant to § 210.43(a) or the Commission, pursuant to § 210.44, orders on its own motion a review of the initial determination or certain issues herein. i j §Clark s. Cheney . Administrative Law Judge SO ORDERED 6The portions of the pending motion for summary determination that I have not addressed in this initial determination shall be held in abeyance pending further proceedings at the evidentiary hearing scheduled to begin on February 18, 2020. See Order N0. 10: Modifying Procedural Schedule (Nov. 19, 2019). 5
In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) INV. NO. 337-TA-1168 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER NO. 32 has been served by hand upon thefollowing parties asindicated, on. ‘R /,_ 2/ Lisa R. Barton, Secretary ’ ' U.S. Intemational Trade Commission 500 E Street, SW, Room 112 ' Washington, DC 20436 On Behalf of Complainants Lighting ScienceGroup Corporation and Healthe, Inc.: \ Kayvan B. Noroozi, Esq. NOROOZI PC 11601 Wilshire Blvd. Suite 2170 ‘L05 Angeles, CA 90025 On Behalf of Complainant Global Value Lighting, LLC: Kenneth G. Parker, Esq. HAYNES AND BOONE, LLP 600 Anton Boulevard Suite 700 Costa Mesa, CA 92626 III Via Hand Delivery E/Via'Express Delivery |:l Via First Class Mail El Other: III Via Hand Delivery @’Via Express Delivery l:l Via First Class Mail El Other: On Behalf of Respondents Nichia Corporation and Nichia America Corporation: Thomas R. Makin, Esq. SHEARMAN & STERLING LLP 599 Lexington Avenue New York, NY 10022-6069 El Via Hand Delivery E’Via Express Delivery U Via First Class Mail Cl Other:
In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, INV. NO. 337-TA-1168 SYSTEMS, AND CQMPONENTS THEREOF (III) I PUBLIC CERTIFICATE OF SERVICE On Behalf of Respondents Cree, Inc., Cree Hong Kong, Limited, and Cree Huizhou Solid State Lighting Co., Ltd.: S. Alex Lasher, Esq. U Via Hand Delivery QUINN EMANUEL URQUHART & SULLIVAN, LLP Efvia Express Delivery 1300 I street’ NW Cl Via First Class Mail Suite 900 Cl Other: ' Washington, DC20005 L On Behalf of Respondents OSRAM GmbH, OSRAM Licht AG, OSRAM Opto Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.: Paul M. Bartkowski, Esq. III Via Hand Delivery l 133 Connecticut Avenue, NW ' |:| Via First class Mail 12th Floor U Other, Washington, DC20036 W On Behalf of Respondents Signifv N.V. and Signify North America Corporation: _ Adam D. Swain, Esq. II] Via Hand Delivery ALSTON & BIRD LLP 13/Via Express Delivery 950 F Street, NW El Via First Class Mail Washington, DC 20004 El Other: ' ' On Behalf of Respondents General Electric Companv and Consumer Lighting_(U.S.),LLC jd/b/a GE Lighting, LLC}: _ Eric S. Namrow, Esq. El Via Hand Delivery MORGAN, LEWIS & BOCKIUS LLP EiVia Express Delivery 1111 Pennsylvania Avenue, NW ‘ E Via First Class Mail ' Washington, DC 20004-2541 I] Other: 2
In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, INV. NO. 337-TA SYSTEMS, AND COMPONENTS THEREOF (III) PUBLIC CERTIFICATE OF SERVICE On Behalf of Respondents Lumileds Holding B.V. and Lumileds, LLC Bryan A. Kohm, Esq. FENWICK & WEST LLP 555 California Street 12th Floor San Fransico, CA 94'104 E] Via Hand Delivery |ZfVia Express Delivery I1 Via First Class Mail II] Other: -1168 On Behalf of Respondents Leedarson Lighting C0..,Ltd. and Leedarson America, Inc. John M. Caracappa, Esq. STEPTOE & JOHNSON, LLP 1330 Connecticut Avenue, NW ' Washington, DC 20036 On Behalf of Respondent Current Lighting Solutions. LLC: Steven E. Adkins, Esq. McGUIREWOODS LLP 2001 K Street, NW Suite 400 Washington, DC 20006-1040 ' II! Via Hand Delivery E/Via Express Delivery El Via First Class Mail El Other: El Via Hand Delivery EfVia Express Delivery U .Via First Class Mail El Other: On Behalf of Respondents Acuity Brands, Inc. and Acuitv Brands Lighting, Inc.: Matthew S. Yungwirth, Esq. DUANE MORRIS LLP 1075 Peachtree Street, NE Suite 2000 Atlanta, GA 30309 On Behalf of Respondent Ledvance LLC Edwin Wheeler, Esq. 4 INTERLINK LAW GROUP, PC One Market Street Spear Tower, 36th Floor San Francisco, CA 94105 C] Via Hand Delivery Q]/Via Express Delivery El Via First Class Mail U Other: III Via Hand Delivery E/Via Express Delivery El Via First Class Mail \I| Other: \,
¥ UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. ’ In the Matter of n CERTAIN LIGHT-EMITTING DIODE IIlV-N0- 337-TA-1168 PRODUCTS, SYSTEMS, AND COMPONENTS THEREOF (III) ORDER NO. 31: CONSTRUING CERTAIN CLAIMS . (February 11, 2020)
TABLE OF CONTENTS ' Page Introduction ........................................................................................................................ ..1 Relevant Law ............................. ........................................................................................ ..3 Level of Ordinary Skill in the Art ...................................................................................... ..5 The Asserted Patents .......................................................................................................... ..6 A.‘ U.S. Patent No. 7,095,053 ...................................................................................... ..6 B. U.S. Patent No. 7,098,483...................................................................................... ..7 C. U.S. Patent No. 7,528,421 ...................................................................................... ..7 Construction of Disputed Claim Terms ............................................................................. ..7 A. “decoder/driver electronics that control the LED electrodes, wherein the A electronics are mounted within the assembly” (’483 patent) ................................. ..7 B. “an electrical path including an insulated conducting via through the metal base” (’053 patent) .................................................................................................ll C. “one or more isolated terminals formed on the metal base” (’483 patent) ............l 6 D. “overlying” (’053, ’483, and ’421 patents) .......................................................... ..17 E. “wherein the electrically insulating layers include one or more terminals” (’42l patent) ......................................................................................................... ..20 F. “base” (’053, ’483, and ’42l patents) .................................................................. ..22 G. “one or more thermal vias” (’053 patent) ............................................................ ..25 H. “wherein the layer of electrically insulating material includes at least one opening to house the LED die” (’483 patent) ......................................... ...............25 I. “a thennally conductive region in solderable thennal contact with the thermally conducting base” (’421 patent) ............................................................ ..29 J. “A light emitting diode (LED) assembly” (’483 patent) ..................................... ..31
I. INTRODUCTION The Commission instituted this investigation to determine whether certain light-emitting diode (“LED”) products, systems, and components thereof infringe U.S. Patent Nos. 7,098,483 (“the ’483 patent”), 7,095,053 (“the ’053 patent”), and 7,528,421 (“the ’421 patent”) (collectively, “the asserted patents”). See 84 Fed. Reg. 29877 (June 25, 2019) (“Notice of Investigation”); Certain LED Products, Sys., and Components Thereof (I), Inv. No. 337-TA-1163, Order No. 5 (July l0, 2019) (severing this investigation from the 1163 investigation). The asserted patents are generally directed to designing light-emitting diode assemblies and packages that can operate more reliably at higher temperatures. See, e.g., ’483 patent at 1:20-22. As set forth in the Notice of Investigation, the plain language description of the accused products or category of accused products, which defines the scope of the investigation, is “(l) LED packages andassemblies; (2) LED luminaires; and (3) connected ‘smart’ LED lighting systemsand components thereof.” Notice of Investigation at 29878. p ~ The complainants are Lighting Science Group Corporation, Hea1theInc., and Global Value Lighting, LLC (collectively, “LSG”). Id. The respondents are Lumileds Holding B.V., Lumileds LLC, Cree, Inc., Cree Hong Kong Ltd., Cree Huizhou Solid State Lighting Co. Ltd., Acuity Brands, Inc., Acuity Brands Lighting, Inc., Current Lighting Solutions, LLC, General Electric Company, Consumer Lighting (U.S.), LLC, LEDVANCE LLC, Leedarson Co., Ltd., Leedarson America, Inc., Nichia'C0rp., Nichia America Corp., OSRAM GmbH, OSRAM Licht AG, OSRAM Opto Semiconductors GmbH, OSRAM Opto Semiconductors, Inc., Signify N.V., and Signify North America Corporation (collectively, “Respondents”). Id.; Order No. 24: Initial Determination Tenrrinating the Investigation as to Respondents MLS and Ledvance (Jan. 14, 2020), afi"d, Comrn’n Notice (EDIS Doc. ID 701830) (Feb. 7, 2020).
In accordance with the‘procedural schedule issued as Order No. 7 on July 22, 2019, the parties submitted ajoint chart of proposed claim constructions on September 12, 2019. The parties also submitted opening claim construction briefs on September 20, 2019, and responsive claim construction briefs on October 4, 2019.1 On October 17, 2019, I convened a claim construction hearing? 1 After the claim construction hearing, Respondents subsequently submitted aNotice of New Evidence of Prosecution History Disclaimer (“Notice”) that brought attention to a recent decision by the Patent Trial and Appeal Board (“PTAB”) involving the same claims of the ’42l patent as are asserted here. EDIS Doc. ID 699505 (Jan. 16, 2020). LSG also submitted comments about the PTAB decision. EDIS Doc. ID 699518 (Jan. 17, 2020). The PTAB decision focuses on LSG’s arguments as to whether certain prior art references disclose a “thennally conductive region in solderable thermal contact with the thermally conducting base,” a disputed claim term discussed below. I have considered LSG’s arguments ‘ For convenience, the materials submitted by the parties shall be referred to as: CIMB Complainants’ Corrected Opening Claim Construction Brief CRMB Complainants’ Responsive Claim Construction Brief ’ 1 RIMB Respondents’ Opening Claim Construction Brief RRMB Respondents’ Responsive Claim Construction Brief _ . . JC Joint Disclosure of Proposed Claim Constructions 2 The transcript of the claim construction hearing is available as EDIS Doc. ID 691542 and is hereinafter referred to as “Tr.” ' 2
before the PTAB and I find they are not inconsistent with arguments LSG presented here. LSG’s positions will be discussed further in conjunction with my order addressing Respondents’ pending Motion for Summary Determination of N0 Domestic Industry (Teclmical Prong) (Mot. Docket No. 1168-004). This order addresses claim terms in dispute between the parties that were identified in briefing and discussed during oral argument. ll. RELEVANT LAW = \ “An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing.” Markman v. WestviewInstruments, 1nc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane) (internal citations omitted), afi”d, 517 U.S. 370 (1996). Claim construction resolves legal disputes between the parties regarding claim scope. See Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016). Evidence intrinsic to the application, prosecution, and issuance of a patent is the most significant source of the legally operative meaning of disputed claim language. See Bell Atl. Network Servs., Inc. v. Covad C0mmc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips v. AWH C0rp., 415 F.3d'1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman, 52 F.3d at 979. As the Federal Circuit explained in Phillips, courts examine the intrinsic evidence to determine the “ordinary and customary meaning of a claim term” as understood by a person of ordinary skill in the art at the time of the invention. 415 F.3d at 1313. “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.”’ Phillips, 415 F.3d at 1312 (quoting 3
Iimova/Pure Water, Inc. v. Safari Water Filtration Sys., Ina, 381 F.3d 1111, 1115 (Fed. Cir. 2004)). “Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claims terms.” Id at 1314; . / » see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to ‘particularly point[ ] out and distinctly claim[ ] the subject matter which the patentee regards as his invention.”’). The ‘contextin which a term is used in an asserted claim can be “highly instmctive.” Phillips, 415 F.3d at 1314. Additionally, other claims in the same patent, asserted or un-asserted, may also provide guidance as to the meaning of a claim term. Id. The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vilronics Corp. v. Conceplronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). ‘-‘[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography govems.” Id. at 1316. “In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. As a general rule, however, the particular examples or embodiments discussed in the specification are not to be read into the claims as limitations. Id. at 1323. In the end, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct construction.” Id. at 1316 (quoting Renishaw PLC v. Marposs Societa ’per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). Only when the intrinsic evidence does not establish the meaning of a claim may extrinsic evidence (i.e., all evidence external to the patent and the prosecution history, including 4
dictionaries, inventor testimony, expert testimony, and learned treatises) be considered. Phillips, 415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent itself and its prosecution history in determining how to define claim tenns. Id. “The court may receive extrinsic evidence to educate itself about the invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence.” Elkay Mfg. C0. v. Ebco Mfg. C0., 192 F.3d 973, 977 (Fed. Cir. 1999). A claim must also be definite. Specifically, “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, 112. The Supreme Court has held that § 112, 1 2 requires “that a patent’s claims, viewed in light of the specification and prosecution history inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 at 2129 (2014). A claim is required to “provide objective boundaries for those of skill in the art,” and a claim tenn is indefinite if it “might mean several different things and no informed and confident choice is among the contending definitions.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). A patent claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A). lll. LEVEL OF ORDINARY SKILL IN THE ART Although LSG did not propose a level of ordinary skill in the art in its opening brief, its expert, Dr. Martin Kuball, opined that “a person of ordinary skill in the art . . . of the asserted patents at the time of the invention would have had a bachelor’s degree in electrical engineering, materials science, or physics, or at least 5 years’ experience in manufacturing or engineering, with significant exposure to the lighting and/or semiconductor packaging industries." CIMB Ex. 1 5 .
(Declaration of Dr. Martin Kuball in Support of Complainants’ Opening Claim Construction Brief) 1]‘5 (hereinafter “Kuball Decl.”). ’ Respondents take the position that a person of ordinary skill in the art at the time of the inventions of the asserted patents would “have had at least a B.S. in mechanical or electrical engineering or a related field, and four years’ experience designing or developing semiconductor including LED—packages,” and that “a higher level of education or skill might make up for less experience, and vice-versa.” RIMB at 2. , To the extent the parties’ proposals are not substantially the same, no party argues that the claim construction analysis differs under either proposal. I accordingly decline to make a finding on this issue at this time. See Genzyme Therapeutic Prod. Ltd. P ’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1372 (Fed. Cir. 2016) (failure to make a specific finding about the required level of skill in the art is not reversable error where the record did not show any meaningful differences in proposed definitions or that the outcome of the case would have been different based on which definition was selected). IV. THE ASSERTED PATENTS ‘A. U.S. Patent No. 7,095,053 » The ’053 patent is titled, “Light Emitting Diodes Packaged for High Temperature Operation.” The ’053 patent issuedon August 22, 2006, and the named inventors are Joseph Mazzochette and Greg Blonder. LSG asserts claims 1-3, 5-7, 11-15, and 21 of the ’053 patent; claims 1 and 7 are independent claims. See Notice of Investigation; Order No. 26: Initial Determination Terminating the Investigation as to Certain Claims (Jan. 29, 2020);3 ’053 patent. 3 Order No. 26 is pending Commission review. ’ 6
I B. U.S. Patent N0. 7,098,483 V The ’483 patent is titled, “Light Emitting Diodes Packaged for High Temperature Operation.” The ’483 patent issued on August 29, 2006, and the named inventors are Joseph Mazzochette and Greg_Blonder. LSG asserts claims ll and 14-16 of the ’483 patent; claim 11 is an independent claim. See Notice of Investigation; ’483 patent. The ’483 patent is a division of the application that resulted in the ’053 patent; the ’053 and ’483 patents share a common specification. See ’053 patent; ’483 patent. C. U.S. Patent N0. 7,528,421 p The ’421 patent is titled, “Surface Mountable Light Emitting Diode Assemblies Packaged for High Temperature Operation.” The ’421 patent issued on May 5, 2009, and .»thenamed inventors are Joseph Mazzochette and Greg Blonder. LSG asserts claims 1 and 6 of the ’42l patent; claim 1' is an independent claim. See Notice of Investigation; Order No. 18: Initial Determination Terminating the Investigation as to Claim 7 of U.S. Patent N0. 7,528,421 (Dec. 30, 2019), afl’d, Comm’n Notice (EDIS Doc. ID 700609) (Jan. 29, 2020); Order N0. 26; ’42l patent. The ’42l patent is a continuation-in-part of the application that resulted in the ’053 patent. See ’42l patent. , _ V. CONSTRUCTION OF DISPUTED CLAIM TERMS A. “dec0der/driver electronics that control the LED electrodes, wherein the electronics are mounted within the assembly” (’483 patent) The disputed phrase “decoder/driver electronics that control the LED electrodes, wherein the electronics are mounted within the assembly” is recited in asserted claim 11 of the ’483 patent, which reads, in relevant part: - 11. A light emitting diode (LED) assembly for high temperature operation comprising: . 7
. . . one or more isolated terminals formed on the metal base, the one or more isolated terminals electrically connected to decoder/driver electronics that control the LED electrodes, wherein the electronics are mounted within the assembly. ’483 patent at 10:3-4, 10:20-24. The parties’ proposed constructions are as follows: . Complainants’ Construction i Respondents’ Construction “one or more ‘electroniccomponents of a “electronic circuitry, mounted within the LED decoder or driver that can impact electricity package, that receives data as input, decodes flow to the LED electrodes mounted within that input, and drives the at least one LED die the assembly” in response thereto” JCatl. _ The patent specification provides scant guidance as to the construction of this term. In describing the benefits of the low temperature co-fired ceramic on metal (“LTCC-M”) technique taught by the patent, colmnn 7 states: “Densely packed micro—circuitry,and devices such as decoder/drivers, amplifiers, oscillators and the like which generate large amounts of heat, can also use LTCC-M techniques advantageously.” ’483 patent at 7:60-63. In addition, column 5 teaches that, “[i]n another version of this embodiment, decoding/driver electronics can be embedded directly in the layers of the card and can control individual LED die or groups of die.” Id. at 5:25-27. . 1 . Respondents take the position that the claimed “decoder/driver electronics . . .” means a complete decoder/driver device component of the type that would have been known to a person of ordinary skill around the time of the ’483 patent’s filing date. See RIMB at 3-4. In support of this proposal, Respondents submitted a declaration from their expert, Dr. Jianzhong Jiao. Dr. Jiao opined that, around the ’483 patent’s filing date, a decoder/driver was a known component that 8
(i) accepted encoded data as input, (ii) decoded that input, and (iii) output a signal that controlled the driving of the current to one or more LEDs. RIMB Ex. 5 (Declaration of Jianzhong Jiao, Ph.D. in -Support of Respondents’ Opening Claim Construction Brief) W 24-25 (hereinafter “Jiao Decl.”). By contrast, LSG argues that a person of ordinary skill would understand the forward slash in the term “decoder/driver electronics . . .” to mean “or” such that the claim term requires only decoder circuitry or driver circuitry, but not both. See CIMB at 27-28. LSG further argues that the phrase “driver electronics that control the LED electrodes” should be construed to mean “any electronic component of a driver that can impact electricity flow to the LED electrode, such as an electrostatic protection device.” Id. at 28-29. Having considered the intrinsic evidence in conjunction with the arguments and extrinsic evidence provided by the parties, it is my determination that the plain and ordinary meaning of “decoder/driver electronics . . .” is neither a complete decoder/driver device (as argued by Respondents) nor mere electronics of a decoder or driver (as argued by LSG), but rather electronics that perform the function of, at least, either decoding or driving.‘ This interpretation is supported by the patent specification, which reads: “In another version of this embodiment, decoding/driver electronics can be embedded directly in the layers of the card and can control individual LED die or groups of die.” ’483 patent at 5:25-27 (emphasis added). Here, the specification’s use of the present participle “decoding” indicates that the word “decoding” — and also the companion Word “driver” — is being used to modify “electronics,” rather than as a compound noun describing a subcomponent of the (elsewhere mentioned) “decoder/driver” device known in the art. Moreover, 4 Although the parties dispute whether the term “decoding/driver electronics . . .” requires both decoding and driving, I do not reach that question in this order. . 9
\ when the phrase “decoder/driver” is used in the specification to describe the device known in-the . 1 art, it appears in without the accompanying word “electronics.” Id. at 7:60-63. LSG’s construction would essentially read out the words “decoder/driver.” To explain, LSG contends that the disputed limitation reads on any “electronic components of a decoder or driver that can impact electricity flow to the LED.” But all manner of components can be found in a decoder or driver, including transistors, resistors, capacitors, diodes, and transformers. In fact, it is difficult to imagine a circuit component that would never be used in a decoder or driver. And all circuit components “impact electricity” — that is what “electronics” do. Thus, although LSG’s construction uses more words, it boils down to mere “electronics,” not “decoder/driver electronics.” A construction that does not give meaning to all of the words of the claim is usually incorrect. See Funai Elec. C0. v. Daewoo Elecs. C0rp., 616 F.3d 1357, 1372 (Fed. Cir. 2010) (quoting Exxon Chemical Patents, Inc. v. Lubrizol C0rp., 64 F.3d 1553, 1557 (Fed. Cir. 1995) (“We must give meaning to all the words in [the] claims.”)). _ Moreover, at the claim construction hearing, counsel for LSG conceded that, although electrostatic discharge protection (“ESD”) circuits are common elements of decoding and driving circuitry, such circuits are not necessary to decoding or driving, and do not themselves perform decoding or driving functions. Tr. at 158:6-20. Accordingly, electrostatic discharge protection circuitry, without more, camiot satisfy. this claim tenn, as ESD circuits are not themselves electronics with the fimction of decoding or driving LEDs. This much resolves the dispute between the parties, and no more need be said to understand the plain and ordinary meaning of the term. I adopt that plain and ordinary meaning. 10
B. “an electrical path including an insulated conducting via through the metal e base” (’053 patent) ‘ The claim term “an electrical path including an insulated conducting via through the meta] base” is recited in asserted claim 7 of the ’053 patent. It is also recited in claim 4 of the ’053 patent, which was originally asserted against Respondents but has since been withdrawn from the investigation. See Order No. 26. The parties propose the following constructions for this claim term: Complainants’ Construction I Respondents’ Construction “an electrical path that passes through the “an electrical path including an electrically metal base and an insulated conducting via” conducting interconnect that passes through, ' and is insulated from, the metal base" JC at 1. . The dispute between the parties centers on whether the phrase “through the metal base” modifies the phrase “insulated conducting via” or whether it modifies the phrase “electrical path.” Stated differently, the question is whether the disputed phrase reads on any electrical path running through the metal base and through an insulating conducting via, regardless of whether the insulating via is within the metal base. LSG argues it does. Respondents contend that the electrical path in question must pass through the metal base by way of an insulated conducting via. See CIMB at l9-20; RIMB at 6. Respondents’ construction is correct. The basic rules of English grammar render the claim language unambiguous _aswritten. Specifically, the claimed “electrical path” “include[s]” — that is, moves electrons through — an “insulated via,” and‘that_“insulated via” is “through the metal base.” The sequence of the words themselves, the proximity of the modifier words to their object, ll
and the lack of offsetting commas in the phrase all confinn this meaning to a personof ordinary skill in the art. ' Under the “last-antecedent” rule or the “nearest-reasonable-referent” rule of English grammar, “modifiers and qualifying phrases attach to the terms that are nearest.” Grecian Magnesite Mining, Indus. & Shipping C0,, _SAv. Comm ’r of Internal Revenue Serv. , 926 F.3d 819, 824 (D.C. Cir. 2019) (citing Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 152 (2012)); see Toshiba Corp. v. Juniper Networks, Inc., 248 Fed. Appx. 170, 174 (Fed. Cir. 2007) (analyzing the term “policy information indicating a permitted neighboring node/network from which a packet transfer by the label switching is to be permitted,” holding that “from which” modifies “neighboring node/network,” and finding that if the patentee had intended “fiom Which”to modify “policy information,” “it would have used commas to set off the phrase”);_ see also, e.g., Strunk & White, The Elements of Style (4th ed. 2000) § 20 (“Modifiers should come, if possible, next to the word they modify.”). Here, the phrase “through the metal base” is irmnediately proximate to the phrase “insulat_edconducting via.” In contrast, the phrase “through the metal base” is distant from the phrase “electrical path”; it is separated by the intervening phrase “including an insulated conducting via.” Because the prepositional phrase “though the metal base” immediately follows the “insulating conducting via,” the nearest-reasonable-referent rule presumes that the via is through the metal base. There are no “grammatical signals to the contrary” here. Toshiba, 248 Fed. Appx. at 174 (Fed. Cir. 2007) (affirming district court’s construction of “policy information indicating a permitted neighboring node/network from which a packet transfer by the label switching is to be permitted” to mean “requiring the policy information to relate to an upstream node/network”); .12 l
Another rule of English usage supports the application of the nearest-reasonable-referent rule here. Restrictive phrases — those essential to the meaning of the clause to which they belong — should not be set off by commas. See Chicago Manual of Style, 248 (15th ed. 2003) (Sections \ 6.3l, 6.36, 6.38). Commas should, however, be used to offset a restrictive clause when their omission creates ambiguity. Here, there are no offsetting commas, so the phrase “through the metal base” is presumed to be essential, that is, it is presumed to restrict or narrow the immediately adjacent phrase “insulating conducting via.” ' By contrast, the construction proposed by LSG disregards these basic grannnar rules by rearranging the words to mean “an electrical path through the metal base including an insulated conducting via.” See CIMB at 20. LSG in effect seeks to read in offsetting commas where there are none, transforming the claim language “an electrical path including an insulated conducting via through the metal base” into “an electrical path, including an insulated conducting via, through the metal b(ase.” Id. Not only does LSG’s proposed construction contradict the plain meaning of the claim tenn as written, it is also belied by the structure of other claims. Claim 4 is no longer asserted, but it contains the same claim language in question. ' An examination of that claim and asserted claim 5 is instructive: 4. The packaged LED of claim 1 wherein at least one electrode of the LED is connected to one of the underlying electrical cormection pads by an electrical path including an insulated conducting via through the metal base. - V 5. The packaged LED of claim l wherein at least one electrode of the LED is connected to one of the underlying electrical connection pads by an ' electrical path including the metal base. ’O53patent, claims 4, 5 (emphasis added). 1 l 3
As can be seen, claims 4 and 5 are nearly identical; they vary only in their description of an electrical path. In claim 5, the electrical path includes the metal base itself. That is, the electrons of the metal base must flow to create the electrical path. LSG would have that same arrangement invoked by the differing language of claim 4. The path in claim 4 is an insulated via “through” the metal base. In claim 4, the electrons of the metal base are insulated from the electrical path, not part of it. Thus, in claim 5, the patentees used language to describe the outcome LSG seeks, but that language is not in claims 4 or 7. These differences presumably have a meaning. Tandon Corp. v. U.S. Int’! Trade Comm ’n, 831 F.2d 1017,1023 (Fed. Cir. 1987). LSG’s proposed construction would render superfluous the word “through,” an additional indicator that the construction is incorrect. See Innova/Pure Water, 381 F.3d at 1119 (finding the term “operatively comiected” does not require a physical cormection because the word “operatively” would otherwise be redundant, and “all claim terms are presumed to have meaning in a claim”). Figure 5 of the ’053 patent specification, and accompanying description, inform the proper construction. That figure expressly illustrates and describes a via 56 “with insulated feed-though in [the] metal base”: 14
y FIG. -5
LE" LED
aoumns PAD DIE
urn moor: 10 "l°°E' BONDING
smut) c"‘"*°°E PAD vu
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’O53 patent, Fig. 5. _
Figure 5 is consistent with the normal grammatical interpretation of claim 7. It also
illustrates the differences between claim 4 and claim 5. The left side of the figure shows an
electrical path between anode/cathode 15B and LED anode/cathode 53 where the electrons of the
metal base are the path. In contrast, the right side of the figure shows a via 56 that provides an
electrical path that is insulated from the metal base as the via feeds through that base.
- In discussing Figure 5, the specification reinforces a plain-language reading of the claim.
It states that “[t]he top electrode 53 can be connected, for example by a bonding wire 54 to a top
bonding pad 55 on the ceramic 17 and through via 57 including insulated via section 56 to the
bonding pad 15A underlying the formed metal base 51.” ’053 patent at 4:7-1 1 (emphasis added);
see also id. at 2:54-57. Not only does this description match the illustration :Eroma technical
perspective, it reinforces the appropriate application of the nearest-reasonable-referent rule in
English grammar. The “including” phrase in the specification modifies the immediately proximate
“via 57,” not some remote phase like “top electrode 53.”
l5In sum, the language of claim 7, the structure of claims 4 and 5, and consistent disclosures in the specification and drawings indicate LSG’s construction must be rejected. I adopt the plain meaning of the claim term. C. “one or more isolated terminals formed on the metal base” (’483 patent) The disputed term “one or more isolated terminals formed on the metal base” is recited in asserted claim ll of the ’483 patent. The parties’ proposed constructions for this term are as follows: Complainants’ Construction Respondents’ Construction l “one or more isolated tenninals formed on or Plain meaning A from the metal base” , _ JCatl. The plain meaning of the claim term is evident from the words themselves —-“one or more isolated terminals fonned on the metal base.” LSG seeks to broaden this limitation to include configurations in which the isolated tenninals are formed “from” the metal base, but LSG’s proposed interpretation is not supported by the intrinsic evidence. In particular, nothing in the ’483 specification indicates that that patentee intended for the word “on” to mean “on or from.”\ See Hill—R0mServs., Inc. v. Stryker Corp, 755 F.3d I367, 1371 (Fed. Cir. 2014) (“We depart from the plain and ordinary meaning of claim tenns based on the specification in only two instances: lexicography and disavowal.”). I LSG argues that the ’483 patent’s teachings with respect to Figures 1, 4, and 17 provide support for its proposed construction, but the patent’s teachings in fact support the plain meaning of the words “formed on the meta] base.” See, e.g., CIMB at 32-34. For instance, the embodiment 16
illustrated in Figure 17 expressly shows isolated tenninals formed on the metal base. ’483 patent at 5:47-49 (“[A]s shown in FIG. 17, connections to the LED assembly can be made by isolated temiinals 175 on base l74."§ (emphasis added). Nothing in Figure 17 or the corresponding text suggests that the isolated terminals may be formed in any manner other than on the metal base." Furthermore, Figtues 1A and 4 show that electrical comiection pads 15A and 15B — the claimed “isolated terminals” — are formed on the single-structure metal base 11 in a stacked arrangement with intervening insulation layer l2. See ’483 patent at 2:45-3:13. Accordingly, the term “one or more isolated terminals formed on the metal base” shall be construed in accordance with the plain and ordinary meaning of its constituent words. 1). “overlying” 0053, *4s3, and *421 patents) _ The disputed term “overlying” is recited in asserted claims 1, 7, 12, and 15 of the ’053 patent; asserted claim ll of the ’483 patent; and asserted claim 1 of the ’42l patent. The parties proposed the following constructions for this term: I Complainants’ Construction Respondents’ Construction “lying above and not requiring direct contact “positioned only above” with” J C at 2. The asserted patent claims use the term “overlying” in several contexts, such as “a layer of ceramic overlying the metal base” (’054 patent, claim l) or “insulating layers overlying at least a portion of the planar portion of the thennally conducting base” (’42l patent, claim 1). The parties agree that “overlying,” as used in the asserted patents, ‘does not require direct contact. Tr. at 116:19-25; see also RRMB at 9. The dispute then boils down to whether, as Respondents contend, 17
that “overlying” means positioned only above. See Tr. at 117:1-5. Respondents argue that “if a layer, for example, overlies something, it can’t be both above and below it at the same time.” Tr. at 106:2-S. Respondents’ proposed restriction that “overlying” means “positioned only above” is not supported by the specifications and drawings of the asserted patents. For example, the ’053,patent specification states that Figure 4 illustrates “lens 40 overlying the LED 10”: FIG. 4 i ii I 12 ,, ...... “ GLASS ?ZQ'*!L2L:>§£'¢£4”'*’////////vzv///4I/2'/////11W"f..'f3>\.$Z退.'; ,5 13A 136 15 ’0$3 patent at 3:57-60.- But the left and right edges of lens 40 are not “positioned only above” LED 10;they are to the side of LED 10 also. Respondents apparently argue, without much support, that what is shown in Figure 4 can be “ignored” because the patent calls that figure “an alternative embodiment.” RRMB at 10. I decline to ignore this significant intrinsic evidence. _ Respondents prefer to focus on Figure 5 of the ’053 patent, arguing that the LED in Figure 5 is “overlying” the metal base within their construction of that term: The LED, enclosed by a blue box, is clearly situated in the space overlying the base (likewise, the three “solderable” components are underlying the base). [Jiao Resp. D_ecl. 1]22.] Whether a portion of metal base 51 is vertically higher than the LED, in a region not vertically aligned with the LED, is irrelevant to whether or not the LED is overlying the base. 18
. FIG. 5 ten e<»am:s Pm 01 LE“ urn moon 10E cifiwngg aumms um ' [:ATl‘lDllEl t 53 PAD [mt VIA as \ \ 5‘ WAamt msuutm V//* v? L FEED-THRGIEHINIE/ ram , RS7 ‘Q Y L L m ;\;\ l ._ p us 15 monetcmuxa mm" sowauas RRMB at 9-10 (emphasis original); see RRMB Ex. 21 1]22 (Declaration of Jianzhong Jiao, Ph.D. in Support of Respondents’ Responsive Claim Construction Brief) (hereinafter “Jiao Resp. Decl.”). But the ’053 patent specification never describes LED 10 as “overlying” the metal layer. Even if it did, Respondents appear to concede that it is possible for the lower edges of metal base 51 — illustrated at the far lefi and right of Figure 5 — to be at a higher elevation than LED 53. See RRMB at 9-10. In such a configuration, the position of LED 10 is not exclusively “above” the metal base; LED 10 is also to the side of some portions of the metal base and below the elevated portions of .that same base. Respondents’ discussion of Figure 5 does not support their construction. l9
Having considered the arguments of the parties, I adopt the plain and ordinary meaning of “overlying,” which is not limited to “positioned only above.”5 ' E. “wherein the electrically insulating layers include one or more terminals” (’42l patent) _ The claim term “wherein the electrically insulating layers include one or more terminals” is recited in asserted claim 1 of the ’42l patent. Respondents contend thatithis tenn is indefinite, whereas LSG argues that this term is not indefinite and should be construed to mean “wherein one or more terminals are on or within the electrically insulating layers.” Complainants’ Construction Respondents’ Construction “wherein one or more tenninals are on or Indefinite within the electrically insulating layers” This term is not indefinite. JC at 2. , _ Respondents argue that this term is indefinite as “presenting a logical impossibility” when construed in view of the claim construction principle that “includes” means “comprising.” See RIMB at 15-16. Respondents cite to a declaration submitted by their expert, Dr. Thomas Katona, in support of the following proposition: _ It is a physical impossibility for an element that is electrically insulating—— such as the claimed “electrically insulating layers”-—to be comprised of elements that are electrically conducting—such as the “temiinals” disclosed " and claimed in the ’42l patent. T 5Respondents argue that the glass depicted in Figure lA of the of the ’053 patent is not “overlying” base 11 because the base is either “embedded in the glass” or the glass is “enveloping” the base; See Tr. at ll0:10-112:7. My construction of “overlying” does not include instances of embedding or enveloping as described by the Respondents at the claim construction hearing. 20 i
Id. at 16 (citing RIMB Ex. 4 (Declaration of Dr. Thomas Katona, Ph.D.)1[ 28 (hereinafter “Katona Decl.”)). ‘ i LSG argues that this claim term is not indefinite because a person of ordinary skill “would not have read the claim language to be creating an ‘impossibility”’ and provides a declaration from its expert, Dr. Martin Kuball, in support of this proposition. See CRMB 18-19 (citing CRMB Ex. 2 (Declaration of Dr. Martin Kuball in Support of Complainants’ Responsive Claim Construction Brief) 1]38-44 (hereinafter “Kuball Resp. Decl.”)); see also Kuball Decl. 1111 116-24. According to LSG, a person of ordinary skill “reading the claims in context of all the claim language, the specification, and the nature of the invention, would understand this term to mean ‘wherein one or more terminals are on or within the electrically insulating layers.’” Id. at 18-19 (citing ’42l patent at 2:63-3:3, 3:66-4:4, 7:1-8 (examples in the specification of “terminals on or within an electrically insulating layer”); _id.at Figs. 1A, 1B, 2, 10). LSG fiirtherargues that the specification’s use of the term “include” does not exclusively mean “made up of’; it can also mean “to have.” Id. at 19. Taken as a whole, the intrinsic evidence does not support a finding that the term “wherein the electrically insulating layers include one or more tenninals” renders claim 1 invalid as indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 134 S. Ct. at 2124. The extrinsic expert declarations from both sides do little to resolve what a person of ordinary skill in the art would understand when reading claim l. LSG’s expert Dr. Kuball takes the position that a person of ordinary skill would understand the tenn to mean that the claimed “one or more tenninals” are located within or on the claimed “electrically insulating layers,” whereas Respondents? expert Dr. Katona opines that it is impossible for an electrically insulating (i.e., non-conducting) layer to 21
include a conducting terminal. See Kuball Resp. Decl. 1]43; Katona Decl. 1110. Without the benefit of cross-examination, it is difficult to assess the weight that should be given to the opinions of Drs. Kuball and Katona. ‘ _ It is thereiore my determination that Respondents have failed, at this time, to show clearly and convincingly that a person of ordinary skill in the art would lack reasonable certainty as to the scope of claim l of the ’421 patent in connection with the claim tenn “wherein the electrically insulating layers include one or more terminals.” F. “base” (’053, ’483, and ’421 patents) _ ' The-disputed tenn “base” is recited in asserted claims l, 5, 7, 12, 14, and 15 of the ’053 patent; asserted claim ll of the ’483 patent; and asserted claims 1 and 6 of the ’421 patent. The parties agree that this term should be construed in the same manner for all asserted patents, and proposed the following constructions: . Complainants’ Construction i Respondents’ Construction “a material that underlies (without requiring “a substrate or board that provides support for direct contact) at least a portion of an the assembly components and layers” insulatinglayer” __ or _ “support or foundation” JCat2.‘ According to LSG, the dispute between the parties centers on whether or not the base needs to be a “unitary” structure.‘ See Tr. at 61:24-62:23. For instance, LSG contends that the metal base ll illustrated in Figure lA of the ’053 patent “contains three portions that are electrically 6 That a “base” does not necessarily require “direct contact” — as setforth in LSG’s proposed construction — is not in dispute. . 22
isolated from each other.” See CIMB at 16. Under this interpretation of the illustration, LSG argues that Respondents’ proposed construction is incorrect because “[t]he metal base in Figure 1A is neither a ‘substrate’ nor a ‘board,’ nor does it necessarily ‘provide support for the assembly components and layers,’ as Respondents’ construction would require. . . . It is also not necessarily ‘foundation,’ since it is a three-part base with two of its parts (the right and lefl sides) simply running through the middle of the LED package.” Id. at l6-17. LSG further argues that the embodiment in Figure 4 of the ’053 patent shows a three-part metal base ll that fails to support Respondents’ proposed construction. See id. at 17. LSG’s argument is not persuasive, however, insofar as the ’421 patent specification uses the terms “metal base,” “metal support board,” and “metal substrate” intercl_1angeably.7 For example, the specification teaches: In the simplest form, LTCC-M technology is used to provide an integrated package for a semiconductor LED die and accompanying circuitry, wherein the conductive metal support board provides a heat sink for the LED die. Referring to FIG. 10, bare LED die 100, for example, may be mounted directly onto a metal base I01 of the LTCC-M system having high thennal conductivity to cool the die 100. In such case, the electrical signals used to operate the die 100 may be connected to the component from the ceramic 102. In FIG. 10, a wire bond 103 serves this purpose. Indirect attachment to the metal support "board101 may also be used. ’421 patent at 6:57-6:67 (emphasis added); see also id. at 7: 1-8 (noting “components are mounted on the metal support board 101”), Fig. 10 (indicating “METAL BASE” 101). The patents likewise use the terms “substrates” and “boards” interchangeably. See, e.g., ’42l patent at 6:8-9 (“More recently, metal support substrates (metal boards) have been used to support the green tapes”); ’O53 patent at 7:4-5 (same). ' 7As the parties have agreed that “base” should be construed similarly across all asserted patents, this intrinsic evidence is particularly germane. 23
. i . With respect to >LSG’scontention that the claimed “base” need not be a unitary stnlcture, Respondents argue that the metal base ll depicted in Figure 1A of the ’053 and ’_483patents does not consist of three pieces. See, e.g., RRMB at 13-14. Respondents’ expert Dr. Jiao provided a declaration in which he opined that a person of ordinary skill would understand Figure 1A to be a “schematic cross section” of a packaged LED that shows where the insulated conducting via passes through the metal base. See Jiao Resp. Decl. 111]26-29. According to Respondents, “[v]iewed three-dimensionally, the metal base l l is one piece—a metal support substrate or metal board, see, e.g., ’483 patent, 7:8~that' includes two electrically insulated vias enumerated as 14 . . . .” RRMB at 13 (emphasis original). Having considered the intrinsic evidence and the argtunents of the parties, including the expert declarations submitted therewith, it is my determination that neither construction proposed for “base” reflects the plain and ordinary meaning as viewed by a person of ordinary skill in the art. LSG’s construction is overbroad because it would extend the claimed “base” to any component underlying the claimed insulating layer. For instance, Figure 5 of the ’O53 and ’483 patents shows several elements underlying the insulating layer, including an anode/cathode l5A, an anode/cathode 15B, thennal conduction pads 16,"and electrically conductive vias 56 and 57. All of those components could constitute the claimed “base” under LSG’s construction. But that is plainly not what a person of ordinary skill would understand from the reading the patents. On the other hand, Respondents’ alternate proposals of either “a substrate or board that provides support for the assembly components and layers” or “support or foundation” adds an unnecessary ftmctional requirement into the disputed claim element_ Therefore, I will interpret the term “base” according to its ordinary meaning in the art, which encompasses terms like f‘supportboard” and “substrate.” 24
G. .“one or more thermal vias” (’053 patent) _ . 4 9' The disputed phrase “one or more thermal vias’.’is recited in asserted claims 1 and 12 of the ’053 patent. The parties proposed the following constructions for this tenn in their briefs: V Complainants’ Construction Respondents’ Construction No construction necessary. “one or more interconnects, the position, dimension, and composition of which provide enhanced heat flow from the LED die to the metal base” JC at 2. Y A . At the claim construction hearing, the parties agreed that “thennal vias” means “vias that enhance heat flow.” See Tr. at 54:19-55:12, 59:3-5. Accordingly, the claim term “one or more thermal vias” is construed to mean “one or more viass that enhance heat flow.” H; “wherein the layer of electrically insulating material includes at least one opening to house the LED die” (’483 patent) . The disputed claim term “wherein the layer of electrically insulating material includes at least one opening to house the LED die” is recited in asserted claim 11 of the ’483 patent. The parties have proposed the following‘ constructions for this term: e Complainants’ Construction Respondents’ Construction No construction necessary. - ‘fwhereinthe layer of electrically insulating material includes at least one cavity or well ' into which the LED die is mounted” v 3 The parties agree that “via” is an acronym for “vertical interconnect access.” See Tr. at 23 :14-17, 36:3-8, 58:7-10. ' I 25
JC at 2. The dispute between the parties arises because Respondents seek a construction of this claim term that would exclude the embodiment shown in Figure 4 of the ’483 patent. See Tr. at 134:19-135:9. , i , I The ’483 patent specification uses the word “openings” only once outside of the claims when it teaches (in reference to Figure 17 reproduced below) that “[0]penings in insulating layer 171 form wells for the LEDs as before.” .’483 patent at 5:49-50. ' FIG‘. 17 ,,- to ' 4:7 112 171 i \ o .= p 173 %114/ Us \ i \ The reference to “as before” points to sections of the ‘specification that discuss “cavities.” For instance, Figure 1A of the ’483 patent (reproduced below) shows that “one or more ceramic layers 17 . . . form acavity 18 around the LED 10.” Id. at 3:5-7. I \ 26.
\ FIG. 1A 19 1310A 101° 101213 t 7473056301734VEQIIQ5$351/3,5}?-Q *4 '4' \ 17 1, mssrsxm-2-fls\\.ss\‘\a - 2-1=Le'4:§f:4#)>}>}}2?>‘}>)§}‘}}>4*#»;"§$_11¢'!:2 tsa 1‘ 16 313*13“ ISA Other embodiments described in the specification also refer to an insulating layer with a “cavity” into which an LED die is mounted. See, e.g., ’483 patent at 2:8-9 (“FIGS. 3A and 3B illustrate exemplary light dispersive cavities in the ceramic layer”); 3:49-52 (“FIGS. 3A and 3B illustrate exemplary light dispersive cavities for the LED of FIG. l. In FIG. 3A the cavity 18 is - .4 provided with walls 30 having straight taper. In FIG. 3B, the walls 31 have a parabolic taper.”), 4:7-10 (“The FIG. 5 device is similar to FIG. 1 device except that the metal base 51 is formed, as by coining, to include a concave light reflecting cavity 52 around the LED die 10.”), 4:34-37 (“The FIG. 7 embodiment is similar to the FIG. 5 embodiment except that the cavity 18 in the ceramic layer 17 is enlarged so that the shaped region of formed metal base 51 is more widely exposed for acting as a layer area reflector.”), 5:11-12 (In Fig. 12, “[a] plurality of cavities 122 includes a plurality LED die [sic] 123, 124, and 125.”); see also 5:66-6:1; 6:7-12; 67:26-29;6:48-52. Turning now to Figure 4 (reproduced below), on which the parties’ dispute is centered, the specification teaches: _ FIG. 4 is a schematic cross section of an alternative embodiment of a single LED packaged for high temperature operation. In this embodiment a.1ens 40 overlying the LED 10 replaces the ceramic layer 17, cavity 18 and lens cover l9. The other features of the FIG. 4 device are substantially the same as described for the FIG. l device. 27
’483 patent at 3:62-67.
FIG. 4
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The ’483 specification ‘makes clear that lens 40 in Figure 4 takes the place of the ceramic
layer l7 and cavity 18 in Figure 1, which correspond to the claimed “layer of electrically insulating
material” and “opening,” respectively? Accordingly, there is nothing in the Figure 4 illustration
to show the claimed “opening” in the “layer of electrically insulating material.” As Respondents
argue, “Figure 4 does not have the claimed ‘layer of electrically insulating material includ[ing] at
least one opening to house the LED die.’ It has a lens covering an LED instead.” RRMB at 19
(emphasis original).
In view of the teachings of the ’483 specification, Ifind that Respondents’ proposed
construction of “opening” to mean “cavity or well” reflects the plain and ordinary meaning of the
term ‘asunderstood by a person of ordinary skill in the art. The alternative embodiment shown in
Figure 4 is not encompassed by the disputed claim language. iThe fact that construing “opening”
in this manner would, in the words of LSG, “exclude Figure 4 from all claims of the ’483 patent,”
does not foreclose such a construction. See CRMB at 12. To be correct, the construction of a
claim need not encompass all embodiments taught in a patent specification. Baran v. Med. Device
9 Neither Figure 1 nor any other illustration in the ’483 patent appears to show “lens cover 19.”
28I Techs, Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment”); Helmsderfizr v. Bobrick Washroom Equip.,’Inc., 527 F-.3d1379, 1383 (Fed. Cir. 2008) (“It is often the case that different claims are directed to and cover different disclosed embodiments”). ’ ‘ I. “a thennally conductive region in solderable thermal contact with the ' thermally conducting base” (’42l patent) The claim term “a thennally conductive region in solderable thermal contact with the thermally conducting base” is recited in asserted claim 1 of the ’42l patent. Respondents contend that this term is indefinite, whereas LSG argues this term is not indefinite and should be construed in accordance with the meaning of “base” as determined earlier: ‘ L Complainants’ Construction ~ Respondents’ Construction For “base,” see Complainants’ proposal for i Indefinite “base.” Otherwise, no construction is i - V l necessary. * . This tenn is not indefinite. JC at 2. I Respondents argue that the intrinsic evidence as to the meaning of this claim term “is hopelessly inconsistent,” and base their argument on the language of claims 1 and 2 of the ’421 patent. See RIMB at 24. These claims read, in relevant part: . - . 1. A LED assembly . . . comprising . . . a thermally conducting base . . . wherin a bottom surface of the LED assembly includes a thermally conductive region in solderable thermal contact with the thermally . conducting base . . . . V _ 2. The LED assembly of claim 1, wherein the thermally conductive region is an integral part of the thermally conducting base. ’42l patent at 7:46-8,13. 29
Respondents argue: . Claim l on its face appears to require the “thermally conductive region” be “solderable” to the “base.” However, claim 2—which depends from claim 1 and includes all of its limitations—requires the “region” and the “base” to be “integral” with each other, which would preclude the possibility of the - components being “solderable” to each other. The specification and prosecution history are themselves murky and susceptible to various interpretations. RIMB at 24. LSG argues that this claim term is not indefinite because a person of ordinary skill “would readily rmderstand that claim 1 simply requires athennally conductive region that can be, but is not necessarily yet, soldered to the thermally conductive base, whereas claim 2 requires that thermally conductive region h-asbeen soldered to the base, and is thus integral to the base.” CRMB at 20 (emphasis original) (citing Kuball Resp. Decl. W 46-53). According to LSG, a person of ordinary skill would have been “infonned by the teachings of Figures 2 and 4, which make clear that ‘solderable thennal contact’ means the capability to be soldered, such that the thermally conductive region of Claim 1 need not actually be soldered to the base.” Id. at 21 (citing Kuball Resp. Decl. 1]50). LSG further argues: “[E]ven after the [thermally conductive] region and the base have been soldered together (and have become integral), a [person of ordinary skill] would still understand them to be in solderable contact with one another. [Kuball Resp. Decl.] 1153. The fact that they have been soldered is proof that they are solderable, i.e., capable of being soldered. Id. Taken as a whole, the intrinsic evidence does not support a finding that the tenn “a thermally conductive region in solderable thermal contact with the thermally conducting base” renders claim 1 invalid as indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with 30"
reasonable certainty, those skilled in the art about the scope of the invention.”~Nautilus, 134 S. Ct. at 2l24. The extrinsic evidence, which includes expert declarations from both sides, is conflicting. LSG’s expert Dr. Kuball takes the position that a person of ordinary skill would understand that claim l requires a thermally conductive region that can be soldered to the thermally conductive base, whereas claim 2 requires that thermally conductive region has been soldered to the base. Respondents’ expert Dr. Katona opines that a “thennally conductive region” integral vsdtha “base? cannot be “solderable” to that base because the two components are already combined in some way. See Kuball Resp. Decl. 111]46-53; Katona Decl. 1]30-39. Without the benefit of cross examination, it is difficult to assess the weight that should be given to the opinions of Drs. Kuball and Katona. It is therefore my determination that Respondents have failed, at this time, to show clearly and convincingly that a person of ordinary skill in the art would lack reasonable certainty as to the scope of claim 1 of the ’42l patent in comection with the claim tem1 “a thermally conductive region in solderable thermal contact with the thermally conducting base.” J. “A light emitting diode (LED) assembly” (’483 patent) The phrase “[a] light emitting diode (LED) assembly” is recited in the preamble to asserted claim l 1 of the ’483 patent. Respondents take the position that this preamble is limiting and should be construed to mean “a low temperature co-fired ceramic on metal (LTCC-M) light emitting diode (LED) assembly,” whereas LSG contends that no construction is needed and that the disputed phrase should take its plain and ordinary meaning: 31
Complainants’ Construction Respondents’ Construction ‘N0 construction necessary. “A low temperature co-fired ceramic on metal . (LTCC-M) light emitting diode (LED) assembly” JC at 2. \ As an initial matter, the intrinsic evidence demonstrates that the “light emitting diode (LED) assembly” identified in the preamble-of claim ll is a limiting feature of the claims. It is the structure that the other claim elements combine to form. Independent claim ll requires “one or more isolated terminals formed on the metal base, the one or more isolated terminals electrically connected to decoder/driver electronics that control the LED electrodes, wherein the electronics are mounted within the assembly.” ’483 patent at 10:19-23. The preamble provides the antecedent for “the assembly” on which the claimed electronics are mounted. The preamble of claim 11 is also the antecedent for “[t]he assembly” in non-asserted dependent claim 13: “The LED assembly of claim ll further comprising an additional metal block on which the LED assembly is mounted to further improve heat dissipation.” Id. at 10:27-29. The fact that other parts of claim ll and claim 13 refer back to the assembly in the preamble indicates that the preamble is limiting. See, e.g., Pacing Techs, LLC v. Garmin Int’I, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (“Because the‘preamble terms ‘user’ and ‘repetitive motion pacing system’ provide antecedent basis for and are necessary to understand the positive limitations in the body of claims in the ’843 patent, we hold that the preamble to claim 25 is limiting”). Moreover, the structure of the invention would not be complete without the “light emitting diode (LED) assembly” introduced in the preamble. The claims specifically describe components mounted to that assembly, which is an indication that the preamble is limiting. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“Where a patentee 32
uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage”). 'For all of these reasons, I find the preamble of claim 11 is limiting, and LSG does not dispute that here. See CIMB at 34-37; CRMB at 16-17. As for the question of whether the preamble should be construed to mean “a low temperature co-fired ceramic on metal (LTCC-M) light emitting diode (LED) assembly” as proposed by Respondents, the prosecution history of the ’483 patent is instructive. The ’483 patent ’483 patent is a divisional of U.S. Patent Application No. 10/638,579 (“the ’579 application”). See ’483 patent at cover. The Examiner issued an Office Action stating that the ’579 application contained two patentably distinct species of the same invention: 1 Group l (claims 1—l0) ~ a packaged LED comprising a metal base including an underlying thermal connection pad and a pair of underlying electrical connection pads, the pair of underlying electrical connection pads is electrically connected to the electrodes of LED; Group ll (claims 11-20) — a low temperature co-fired an metal (LTCC-Ill) LED comprising a metal base including a thermal cormection surface and a plurality of conductive traces insulated from the metal base and cormected to the LED electrodes. RIMB Ex. 19 (Office Action dated July 20, 2004, from ’483 prosecution history) at NICHIA_00000089 (emphasis added). In response, the applicants chose to prosecute the first group in the ’579 application (leading to the issuance of the ’053 patent), and to prosecute the LTCC-M claims in divisional U.S. Patent Application No. 10/933,096 (“the ’096 application”), which issued as the ’483 patent. Thus, following the applicants’ election in response to the July 20, 2004, Office Action, all the originally filed claims of the ’096 application included the phrase “A low temperature co-fired [ceramic] on metal (LTCC-M) light emitting diode (LED) assembly.” See, e.g., RIMB Ex. 20 (excerpts from ’483 prosecution history) at NICHIA_0O002337-38 (Preliminaly Amendment dated Sept. 2, 2004). ’ 33
In the first Office Action of the ’O96application, the Examiner rejected as obvious eight of the ten original claims over certain non-LED LTCC-M package prior art combined with certain LED non-LTCC-M prior art. RIMB Ex. 20 at NICHIA_00002364-66 (Office Action dated Jun. 2, 2005). The Examiner also noted dependent claims 14 and 19 would be allowable if written in independent form because “[t]he prior art of record fails to disclose the decoder/driver electronics that control the LED electrodes is embedded in the LTCC-M package.” Id at NICHIA_00002366 (Office Action dated Jun. 2, 2005). The applicants subsequently amended the claims as instructed and rewrote dependent claims 14 and 19 in independent fonn, resulting in issued claims l and 7. 14. at NICHIA_00O02387-89 (Reply dated Nov. 1, 2005). In that same response, the applicants also added new claims 25734, including independent application claims 25 and‘ 31 (which issued as claims ll and 17), stating that the new claims covered embodiments “wherein the layer 17 overlying the metal base ll is comprised of any suitable insulating material, and not limited to ceramic.” RIMB Ex. 20 at NICHIA_0O002394 (Reply dated Nov. 1, 2005). x The Examiner subsequently allowed the amended and new claims and provided the following reasoning: The prior art of record fails to disclose all the limitations recited in the base Claims. Specifically, the combination of a LTCC-M LED structure comprising a metal base including a thermal connection surface; an LED >1 die having a pair of electrodes overlying and electrically insulated from the metal base by an insulating layer; and one or more isolated terminals formed on the metal base and electrically connected to decoder/driver electronics which are mounted within the assembly (base claims 1l and 25) [i.e., issued claims l and 11], Q a plurality of edge connector fingers connected to decoder/driver electronics which are embedded in the assembly and control the LED electrodes (base claims 21 and 31) [i.e., issued claims 7 and l7]. 34
RIMB Ex. 20 at NICHIA_O0002407 (Reason for Allowance dated Dec. -30, 2005) (underline original). i The applicants did not comment on the Examiner’s stated reasons for allowance, and Respondents argue this silence indicates that “the examiner’s statements are strong evidence as to the interpretation of the claim limitations discussed in the reasons for allowance.” RIMB at 36 (citing Elkay Mfg. Co. v. Ebco Mfg. C0., 192 F.3d 973, 979 (Fed. Cir. 1999) (finding applicant’s failure to respond to‘examiner’s ‘statement in the reasons for allowance relevant to claim construction); ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003); Biogen, Inc. v. Berlex Labs., 1nc., 318 F.3d 1132, 1138-39 (Fed. Cir, 2003) (finding examiner’s stated reasons for allowance persuasive evidence in claim construction)). I find that, on this record, the applicants’ silence after receiving the Examiner’s stated reasons for allowance does not constitute a clear and Lmmistakabledisavowal of claim scope. In particular, I find the applicants’ express statement that they were adding claims (including issued claim 11) to “present embodiments of the present invention wherein the layer 17 overlying the metal base ll is comprised of any suitable insulating material, and not limited to ceramic” as demonstrating a lack of disavowal. See RIMB Ex. 20 at NICHIA_00002394 (Reply dated Nov. 1, 2005) (emphasis added); see ‘also Salazar v. Proctor & Gamble C0., 414 F.3d 1342, 1345 (Fed. Cir. 2005) (“Consequently, an applicant’s silence regarding statements made by the examiner during prosecution, without more, cannot amount to a ‘clear and unmistakable disavowal’ of claim ' _/ 35
sc0pe.”). Accordingly, I decline to limit the term “light emitting diode (LED) assembly” to only
LTCC-M assemblies. I will interpret it using its plain and ordinary meaning. V
-£7&;Z_’jfl/{Q24/\>
Clark s. Cheney
Administrative Law Judge
SO ORDERED.
36In the Matter of » CERTAIN LIGHT-EMITTING DIODE‘PRODUCTS, INV. NO. 337-TA-1168 SYSTEMS, AND COMPONENTS THEREOF (III) ~ PUBLIC CERTIFICATE OF SERVICE , I, Lisa R. Barton, hereby certify that the attached ORDER NO. 31 has been served by hand upon the following parties as indicated, on February 11, 2020. \ >Lisa R Barton, ecretary U.S. Intemational Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Lighting Science_GroupCorporation and Healthe. Inc.: Kayvan B. Noroozi, Esq. NOROOZI PC 11601 Wilshire Blvd. Suite 2170 Los Angeles, CA 90025 C] Via Hand Delivery D Via Express Delivery |2(Via First Class Mail El Other: » On Behalf of Complainant Global Value Lighting, LLC: Kenneth G. Parker, Esq. HAYNES AND BOONE, LLP 600 Anton Boulevard Suite 700 Costa Mesa, CA 92626 III Via Hand Delivery U Via Express Delivery @’Via First Class Mail [:1 Other: On Behalf of Respondents Nichia Corporation and Nichia America Corporation: Thomas R. Makin, Esq. " SHEARMAN & STERLING LLP 599 Lexington Avenue V New York, NY 10022-6069 [:1Via Hand Delivery Cl Via Express Delivery @'Via First Class Mail \:| Other: i
In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, ' INV. NO. 337-TA-1168 SYSTEMS, AND COMPONENTS THEREOF (III) V PUBLIC CERTIFICATE OF SERVICE On Behalf of Respondents Cree, Inc.. Cree Hong Kong, Limited, and Cree Huizhou Solid State Lighting Co., Ltd.: . S. Alex Lasher, Esq. Cl Via Hand Delivery 1300 I StT'3et>NW lZfVia First Class Mail Suite D Other: Washington, DC20005 M‘ On Behalf of Respondents OSRAM GmbH. OSRAM Licht AG, OSRAM Opto Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.: Paul M. Bartkowski, Esq. II] Via Hand Delivery ADDUCI MASTRIANI & SCHAUMBERG, LLP Q)Via Expmss Delivefy 1133 Connecticut Avenue, NW Mvia First Class Mai] 12th Eloor " U Othfl: * Washington, DC20036 M? On Behalf of Respondents Signifv N.V. and Signifv North America Corporation: Adam D. Swain, Esq. El Via Hand Delivery ALSTON & BIRD LLP El Via Express Delivery 950 F Street, NW E’ Via First Class Mail Washington, DC 20004 |:| Other; On Behalf of Respondents General Electric Com-panv and Consumer Lighting_(U.S.)_,LLC gd/b/a GE Lighting, LLC): Eric S. Namrow, Esq. . III Via Hand Delivery MORGAN, LEWIS & BOCKIUS LLP I] Via Express Delivery llll Pennsylvania Avenue, NW ’ |ZrVia"First Class Mail Washington, DC 20004-2541 III Other; 2
In the Matter of CERTAIN LIGHT-EMITTING DIODE PRODUCTS, INV. NO. 337-TA-1168 SYSTEMS, AND COMPONENTS THEREOF (III) PUBLIC CERTIFICATE OF SERVICE On Behalf of Respondents Lumileds Holding B.V. and Lumileds. LLC Bryan A. Kohm, Esq. FENWICK & WEST LLP 555 Califomia Street 12th Floor San Fransico, CA 94104 III Via Hand Delivery Cl Via Express Delivery Er Via First Class Mail III Other: On Behalf of Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc. John M. Caracappa, Esq. STEPTOE & JOHNSON, LLP 1330 Connecticut Avenue, NW Washington, D,C20036 On Behalf of Respondent Current Lighting Solutions. LLC: Steven E. Adkins, Esq. , ' McGUIREWOODS LLP 2001 K Street, NW Suite 400 Washington, DC 20006-1040 III Via Hand Delivery II! Via Express Delivery lZl'Via First Class Mail E] Other: |:| Via Hand Delivery U Via Express Delivery |ZVia First Class Mail II] Other: On Behalf of Respondents Acuitv Brands, Inc. and Acuitv Brands Lighting, Inc.: Matthew S. Yungwirth, Esq. DUANE MORRIS LLP 1075 Peachtree Street, NE Suite 2000 Atlanta, GA 30309 F On Behalf of Respondent Ledvance LLC Edwin Wheeler, Esq-. INTERLINK LAW GROUP, PC One Market Street Spear Tower, 36th Floor San Francisco, CA 94105 III Via Hand Delivery Cl Via Express Delivery |ZfVia First Class Mail III Other: III Via Hand Delivery . El Via Express Delivery Ef Via First Class Mail III Other:
OCR transcription for search; preserved printed pages are authoritative
In the Matter of
CERTAIN LIGHT-EMITTING DIODE
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (Ill)
337-TA-1168
Publication 5302 March 2022
U.S. International Trade Commission
| ;
| : ange
7 CTT
Washington, DC 20436
U.S. International Trade Commission
COMMISSIONERS
Jason E. Kearns, Chair
Randolph J. Stayin, Vice Chair
*David S. Johanson, Commissioner
Rhonda K. Schmidtlein, Commissioner
Amy A. Karpel, Commissioner
*Has been recused from investigation.
Address all communications to
Secretary to the Commission
United States International Trade Commission
Washington, DC 20436
U.S. International Trade Commission
Washington, DC 20436
www. usitc. gov
In the Matter of
CERTAIN LIGHT-EMITTING DIODE
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (Ill)
33/7-TA-1168
Publication 5302 March 2022
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN LIGHT-EMITTING DIODE
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (III)
Investigation No. 337-TA-1168
NOTICE OF A COMMISSION DETERMINATION TO REVIEW IN PART A FINAL
INITIAL DETERMINATION FINDING NO VIOLATION OF SECTION 337 AND, ON
REVIEW, TO AFFIRM THE FINAL INITIAL DETERMINATION’S FINDING OF NO
VIOLATION; TERMINATION OF THE INVESTIGATION
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that, on June 26, 2020, the presiding administrative law
judge (“ALJ”) issued a combined final initial determination (“ID”) and recommended
determination (“RD”) on remedy and bonding. The final ID finds no violation of section 337 in
the above-captioned investigation. The Commission has determined to review the final ID in
part and, on review, has determined to affirm the final ID’s finding of no violation. The
investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Richard P. Hadorn, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C.
20436, telephone (202) 205-3179. Copies of non-confidential documents filed in connection
with this investigation may be viewed on the Commission’s electronic docket (EDIS) at
https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General
information concerning the Commission may also be obtained by accessing its Internet server at
https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
be obtained by contacting the Commission’s TDD terminal, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: On June 25, 2019, the Commission instituted
Investigation No. 337-TA-1163 (“the 1163 investigation”), based on a complaint, as amended,
filed by Lighting Science Group Corporation and Health Inc., both of Cocoa Beach, Florida, and
Global Value Lighting, LLC of West Warwick, Rhode Island (collectively, “LSG”). 84 FR
29877 (June 25, 2019). The complaint alleges violations of section 337 of the Tariff Act of
1930, as amended (19 U.S.C. 1337) (“section 337”), based on the importation into the United
States, the sale for importation, and the sale within the United States after importation of certain
light-emitting diode products, systems, and components thereof by reason of infringement of
certain claims of U.S. Patent Nos. 7,098,483 (“the ’483 patent”), 7,095,053 (“the ’053 patent”),
7,528,421 (“the ’421 patent”), 8,506,118, and 8,674,608. Id. The complaint further alleges that
2
a domestic industry exists. Id. The notice of investigation names the following entities as
respondents: Nichia Corporation of Tokushima, Japan and Nichia America Corporation of
Wixom, Michigan (together, “Nichia”); Cree, Inc. of Durham, North Carolina; Cree Hong Kong,
Limited of Shatin, Hong Kong; Cree Huizhou Solid State Lighting Co., Ltd. of Guangdong,
China; OSRAM GmbH and OSRAM Licht AG, both of Munich, Germany; OSRAM Opto
Semiconductors GmbH of Regensburg, Germany; OSRAM Opto Semiconductors, Inc. of
Sunnyvale, California; Lumileds Holding B.V. of Schipol, Netherlands and Lumileds, LLC of
San Jose, California (together, “Lumileds”); Signify N.V. (f/k/a Philips Lighting N.V.) of
Eindhoven, Netherlands; Signify North America Corporation (f/k/a Philips Lighting North
America Corporation) of Somerset, New Jersey; MLS Co., Ltd. of Zhongshan City, China;
LEDVANCE GmbH of Garching, Germany; LEDVANCE LLC of Wilmington, Massachusetts;
General Electric Company of Boston, Massachusetts; Consumer Lighting (U.S.), LLC (d/b/a GE
Lighting, LLC) of Cleveland, Ohio; Current Lighting Solutions, LLC of Cleveland, Ohio; Acuity
Brands, Inc. of Atlanta, Georgia; Acuity Brands Lighting, Inc. of Conyers, Georgia; Leedarson
Lighting Co., Ltd. of Xiamen, China; and Leedarson America, Inc. of Smyrna, Georgia
(collectively, the “Respondents”). Id. at 29878. The Office of Unfair Import Investigations is
not a party to this investigation. Id.
On July 10, 2019, the ALJ severed from the 1163 investigation the present investigation,
Investigation No. 337-TA-1168, which concerns whether there is a violation of section 337
based on allegations of infringement of the ’483, ’053, and ’421 patents. Order No. 5 at 2 (July
10, 2019).
On January 20, 2020, the Commission terminated this investigation as to claim 7 of the
’421 patent. Order No. 18 (Dec. 30, 2019), unreviewed by Comm’n Notice (Jan. 29, 2020). On
February 7, 2020, the Commission terminated this investigation as to respondents MLS Co., Ltd.
and Ledvance GmbH. Order No. 24 (Jan. 14, 2020), unreviewed by Comm’n Notice (Feb. 7,
2020). On February 26, 2020, the Commission terminated this investigation as to: (1) claims 2
and 10 of the ’421 patent; (2) claims 4, 16-20, 22, and 26-30 of the ’053 patent; and (3) as to
Lumileds only, claims 1-5 and 12 of the ’053 patent. Order No. 26 (Jan. 29, 2020), unreviewed
by Comm’n Notice (Feb. 26, 2020).
On February 14, 2020, the ALJ issued an initial determination granting in part
Respondents’ motion for summary determination on non-infringement and failure to meet the
technical prong of the domestic industry requirement. Order No. 32 (Initial Determination) (Feb.
14, 2020). The Commission declined to review that determination and subsequently terminated
the investigation as to: (1) all asserted claims of the ’483 patent; and (2) asserted claims 7 and
11-15 of the ’053 patent. See Comm’n Notice (Apr. 7, 2020). That determination is currently on
appeal. Appeal No. 20-1907 (Fed. Cir.).
On June 26, 2020, the ALJ issued a combined final ID and RD on remedy and bonding.
The final ID finds no violation of Section 337. See Final ID.
On July 15, 2020, LSG filed a petition for review of certain findings in the final ID, and
Respondents filed a contingent-in-part petition for review. On July 28, 2020, the parties filed
responses to each other’s petitions.
3
On July 27, 2020, the Commission received submissions on the public interest pursuant
to Commission Rule 210.50(a)(4) (19 CFR 210.50(a)(4)) from the following Respondents:
(1) Acuity Brands, Inc. and Acuity Brands Lighting, Inc.; and (2) General Electric Co. and
Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC). On July 28, 2020, the Commission
received a submission on the public interest from LSG. No submissions were filed in response
to the Commission’s Federal Register notice. See 85 FR 40318-19 (July 6, 2020).
Having reviewed the record in this investigation, including the ALJ’s orders and final ID,
as well as the parties’ petitions and responses thereto, the Commission has determined to review
the final ID in part. Specifically, the Commission has determined to review the following issues:
(1) whether the accused Nichia products and the alleged domestic industry product satisfy the
limitation “and thermally coupled through the metal base to the thermal connection pad” of claim
1 of the ’053 patent; (2) whether the accused products and the alleged domestic industry products
satisfy the additional limitation “wherein the thermally conducting base includes a metal base” of
claim 6 of the ’421 patent; (3) whether the asserted claims of the ’421 patent are invalid as
obvious; and (4) whether LSG satisfied the economic prong of the domestic industry
requirement. On review, the Commission has determined to take no position on these issues.
Further on review, the Commission has determined to correct two typographical errors in
the final ID: in the fourth line of page 34, “does recite” is replaced with “does not recite”; and in
the fifth line of page 40, “a thermal via” is replaced with “thermal coupling.”
The Commission has determined not to review the remaining findings in the final ID, in
particular that the asserted claims of the ’053 and ’421 patents have not been infringed, that the
technical prong of the domestic industry requirement has not been satisfied with respect to either
the ’053 or ’421 patent, and that the asserted claims of the ’421 patent have been shown invalid
as anticipated and for lacking written description support.
Accordingly, the Commission has determined to affirm the final ID’s finding of no
violation of section 337. The investigation is terminated.
The Commission vote for these determinations took place on October 1, 2020.
The authority for the Commission’s determinations is contained in section 337 of the
Tariff Act of 1930, as amended (19 U.S.C. 1337), and in Part 210 of the Commission’s Rules of
Practice and Procedure (19 CFR part 210).
While temporary remote operating procedures are in place in response to COVID-19, the
Office of the Secretary is not able to serve parties that have not retained counsel or otherwise
provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules
201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the
Complainant(s) complete service for any party/parties without a method of electronic service
noted on the attached Certificate of Service and shall file proof of service on the Electronic
Document Information System (EDIS).
4
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: October 1, 2020
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS,
AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served to the
following parties as indicated, on October 1, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Lighting Science Group
Corporation and Healthe, Inc.:
Kayvan B. Noroozi, Esq.
NOROOZI PC
11601 Wilshire Blvd., Suite 2170
Los Angeles, CA 90025
Email: kayvan@noroozipc.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Complainant Global Value Lighting, LLC:
Richard Rochford, Esq.
HAYNES AND BOONE, LLP
30 Rockefeller Plaza, 26th Floor
New York, NY 10112
Email: richard.rochford@haynesboone.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent General Electric Company and
Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC):
Eric S. Namrow. Esq.
MORGAN, LEWIS & BOCKIUS LLP
1111 Pennsylvania Ave, N.W.
Washington, D.C. 20004
Email: eric.namrow@morganlewis.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
Certificate of Service – Page 2
On Behalf of Respondents OSRAM GmbH, OSRAM Licht
AG, OSRAM Opto Semiconductors GmbH, and OSRAM
Opto Semiconductors, Inc.:
Paul M. Bartkowski, Esq.
ADDUCI, MASTRIANI & SCHAUMBERG, LLP
1133 Connecticut Avenue, NW, 12th Floor
Washington, DC 20036
Email: bartkowski@adduci.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Signify N.V. (f/k/a Philips Lighting
N.V.) and Signify North America Corporation (f/k/a Philips
Lighting North America Corporation):
Adam D. Swain, Esq.
ALSTON & BIRD LLP
950 F Street NW
Washington, DC 20004
Email: adam.swain@alston.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Nichia Corporation and Nichia
America Corporation:
Thomas R. Makin, Esq.
SHEARMAN & STERLING LLP
599 Lexington Avenue
New York, NY 10022
Email: thomas.makin@shearman.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Cree Inc., Cree Hong Kong,
Limited, and Cree Huizhou Solid State Lighting Co. Ltd.:
S. Alex Lasher, Esq.
QUINN EMANUEL URQUHART & SULLIVAN, LLP
1300 I Street, NW, Suite 900
Washington, DC 20005
Email: alexlasher@quinnemanuel.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
Certificate of Service – Page 3
On Behalf of Respondents Lumileds Holding B.V. and
Lumileds, LLC:
Bryan A. Kohm, Esq.
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Email: bkohm@fenwick.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Leedarson Lighting Co., Ltd. and
Leedarson America, Inc.:
John M. Caracappa, Esq.
STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, N.W.
Washington, D.C. 20036
Email: jcaracappa@steptoe.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Acuity Brands, Inc. and Acuity
Brands Lighting, Inc.:
Matthew S. Yungwirth, Esq.
DUANE MORRIS LLP
1075 Peachtree Street NE, Suite 2000
Atlanta, Georgia 30309
Email: MSYungwirth@duanemorris.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Current Lighting Solutions, LLC:
Steven E. Adkins, Esq.
MCGUIREWOODS LLP
2001 K Street N.W., Suite 400
Washington, D.C. 20006
Email: seadkins@mcguirewoods.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LEDVANCE LLC:
Edwin Wheeler, Esq.
INTELINK LAW GROUP, PC
One Market Street
Spear Tower, 36th Floor
San Francisco, CA 94105
Email: ewheeler@intelinklaw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN LIGHT-EMITTING DIODE
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (III)
INV. NO. 337-TA-1168
INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND
Administrative Law Judge Clark S. Cheney
(June 26, 2020)
Appearances:
For Complainants Lighting Science Group Corporation and Healthe, Inc.:
Kayvan B. Noroozi, Esq., James A. Milkey, Esq., and Karly Valenzuela, Esq. of Noroozi PC of
Los Angeles, CA
Joel P. Stonedale, Esq. of Noroozi PC of Austin, TX
Andrew Gish, Esq. of Noroozi PC of New York, NY
Barbara A. Murphy, Esq., David F. Nickel, Esq., Susan Koegel, Esq. Kandis C. Gibson, Esq., and
Matthew N. Duesher, Esq. of Foster, Murphy, Altman & Nickel, PC of Washington, DC
Bradley W. Caldwell, Esq., John Austin Curry, Esq., Christopher S. Stewart, Esq., Justin T.
Nemunaitis, Esq., Hamad M. Hamad, Esq., and Daniel R. Pearson, Esq. of Caldwell Cassady
Curry, PC of Dallas, TX
For Complainant Global Value Lighting, LLC:
Kenneth G. Parker, Esq., Jason T. Lao, Esq., and Andrea Levenson, Esq. of Haynes and Boone,
LLP of Costa Mesa, CA
Tiffany M. Cooke, Esq. of Haynes and Boone, LLP of Dallas, TX
PUBLIC VERSION
For Respondents OSRAM GmbH; OSRAM Licht AG; OSRAM Opto Semiconductors GmbH; and
OSRAM Opto Semiconductors, Inc.:
Tom M. Schaumberg, Esq., Paul M. Bartkowski, Esq., and Michael R. Doman, Jr., Esq. of Adduci,
Mastriani & Schaumberg, LLP of Washington, DC
Mark A. Hannemann, Esq., Patrick R. Colsher, Esq., Eric S. Lucas, Esq., Shaina L. Schwartz, Esq.,
and Ahmed E. ElDessouki, Esq. of Shearman & Sterling LLP of New York, NY
For Respondents Nichia Corporation and Nichia America Corporation:
Thomas R. Makin, Esq., Patrick R. Colsher, Esq., Eric S. Lucas, Esq., Shaina L. Schwartz, Esq.,
and Ahmed E. ElDessouki, Esq. of Shearman & Sterling LLP of New York, NY
Matthew G. Berkowitz, Esq. and Yue (Joy) Wang, Esq. of Shearman & Sterling LLP of Menlo
Park, CA
For Respondents Lumileds Holding B.V. and Lumileds LLC:
Bryan A. Kohm, Esq., Laurence F. Pulgram, Esq., Michael J. Sacksteder, Esq., Shannon E. Turner,
Esq., and Sarah V. Lightstone, Esq. of Fenwick & West LLP of San Francisco, CA
Jae Won Song, Esq., and Jason E. Amsel, Esq. of Fenwick & West LLP of Mountain View, CA
Jessica M. Kaempf, Esq. and Jonathan T. McMichael, Esq. of Fenwick & West LLP of Seattle,
WA
Eric Menist, Esq. of Fenwick & West LLP of New York, NY
For Respondents Cree, Inc.; Cree Hong Kong Ltd.; and Cree Huizhou Solid State Lighting Co.
Ltd.:
S. Alex Lasher, Esq. and Jared W. Newton, Esq. of Quinn Emanuel Urquhart & Sullivan, LLP of
Washington, DC
Raymond N. Nimrod, Esq. and Richard W. Erwine, Esq. of Quinn Emanuel Urquhart & Sullivan,
LLP of New York, NY
For Respondents Acuity Brands, Inc. and Acuity Brands Lighting, Inc.:
Matthew S. Yungwirth, Esq., L. Norwood Jameson, Esq., Alice E. Snedeker, Esq., Sajid Saleem,
Esq., and Glenn D. Richeson, Esq. of Duane Morris LLP of Atlanta, GA
Pierre J. Hubert, Esq. and Jun Zheng, Esq. of Duane Morris LLP of Austin, TX
Kevin P. Anderson, Esq. of Duane Morris LLP of Washington, DC
Daniel Tarr, Esq. of Duane Morris LLP of Philadelphia, PA
PUBLIC VERSION
Benjamin Levi, Esq. of Levi & Snotherly, PLLC of Washington, DC
For Respondent Current Lighting Solutions, LLC:
Steven E. Adkins, Esq. of McGuireWoods LLP of Washington, DC
Darren W. Collins, Esq., Kuan-Chieh Tu, Esq., and Matthew W. Cornelia, Esq. of McGuireWoods
LLP of Dallas, TX
Tyler T. VanHoutan, Esq. of McGuireWoods LLP of Houston, TX
Fredericka J. Sowers, Esq. of McGuireWoods LLP of Raleigh, NC
Wanda French-Brown, Esq. of McGuireWoods LLP of New York, NY
George B. Davis, Esq. of McGuireWoods LLP of Richmond, VA
For Respondents General Electric Company and Consumer Lighting (U.S.), LLC (d/b/a GE
Lighting, LLC):
Eric S. Namrow, Esq., Natalie A. Bennett, Esq., Riccardo S. Macchiaroli, Esq., Stephanie L.
Roberts, Esq., and Calvin M. Brien, Esq. of Morgan, Lewis & Bockius LLP of Washington, DC
Hersh Mehta, Esq., Karon N. Fowler, Esq., James J. Kristas, Esq., and Nicholas A. Restauri, Esq.
of Morgan, Lewis & Bockius LLP of Chicago, IL
Elizabeth M. Chiaviello, Esq. of Morgan, Lewis & Bockius LLP of Houston, TX
Christopher D. Bright, Esq. of Morgan, Lewis & Bockius LLP of Costa Mesa, CA
For Respondent LEDVANCE LLC:
Edwin Wheeler, Esq. and Brad Bertoglio, Esq. of InteLink Law Group, PC of San Francisco, CA
Michael B. Marion, Esq. of InteLink Law Group, PC of Phoenix, AZ
For Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc.:
John M. Caracappa, Esq., Stanley Kuo, Esq., Matthew N. Bathon, Esq., Katherine D. Cappaert,
Esq., Thomas C. Yebernetsky, Esq., W. Kiersten Choi, Esq., Nigel G. Ray, Esq., and Christopher
Suarez of Steptoe & Johnson, LLP of Washington, DC
For Respondents Signify N.V. and Signify North America Corporation:
Adam D. Swain, Esq. and Brian D. Hill, Esq. of Alston & Bird LLP of Washington, DC
John Haynes, Esq. of Alston & Bird LLP of Atlanta, GA
Christopher Ziegler, Esq. of Alston & Bird LLP of Charlotte, NC
PUBLIC VERSION
iv
Table of Contents
I. Introduction ......................................................................................................................... 2
A. Procedural History .............................................................................................................. 2
B. The Parties .......................................................................................................................... 5
1. Complainants ................................................................................................................ 5
2. The Cree Respondents .................................................................................................. 6
3. The Lumileds Respondents ........................................................................................... 7
4. The Nichia Respondents ............................................................................................... 7
5. The OSRAM Respondents............................................................................................ 7
6. The Acuity Respondents ............................................................................................... 8
7. The GE Respondents..................................................................................................... 8
8. Respondent Current ...................................................................................................... 9
9. Respondent LEDVANCE ............................................................................................. 9
10. The Leedarson Respondents ......................................................................................... 9
11. The Signify Respondents .............................................................................................. 9
C. The Asserted Patents ......................................................................................................... 10
1. The ’053 Patent ........................................................................................................... 10
2. The ’421 Patent ........................................................................................................... 12
II. Jurisdiction & Importation ................................................................................................ 13
A. Subject Matter Jurisdiction ............................................................................................... 13
B. Personal Jurisdiction ......................................................................................................... 13
C. Importation ........................................................................................................................ 14
D. In Rem Jurisdiction ........................................................................................................... 16
E. Standing ............................................................................................................................ 16
III. Legal Principles ................................................................................................................ 17
A. Infringement ...................................................................................................................... 17
B. Claim Construction ........................................................................................................... 17
C. Validity ............................................................................................................................. 19
1. Anticipation................................................................................................................. 19
2. Obviousness ................................................................................................................ 20
3. Written Description..................................................................................................... 21
4. Indefiniteness .............................................................................................................. 22
D. Domestic Industry ............................................................................................................. 22
PUBLIC VERSION
v
1. Economic Prong .......................................................................................................... 22
2. Technical Prong .......................................................................................................... 23
IV. The ’053 Patent ................................................................................................................. 24
A. Infringement ...................................................................................................................... 24
1. The ’053 Accused Products ........................................................................................ 24
2. Claim 1 ........................................................................................................................ 27
3. Claim 2 ........................................................................................................................ 45
4. Claim 3 ........................................................................................................................ 45
5. Claim 5 ........................................................................................................................ 46
6. Claims 6 and 21 .......................................................................................................... 47
B. Technical Prong of the Domestic Industry Requirement .................................................. 47
1. The ’053 Domestic Industry Product .......................................................................... 47
2. Claim 1 ........................................................................................................................ 48
3. Claim 2 ........................................................................................................................ 56
4. Claim 5 ........................................................................................................................ 57
C. Validity ............................................................................................................................. 57
1. Obviousness: Harrah in view of Griffin...................................................................... 57
V. The ’421 Patent ................................................................................................................. 59
A. Infringement ...................................................................................................................... 59
1. The Accused Products................................................................................................. 59
2. Claim 1 ........................................................................................................................ 71
3. Claim 6 ........................................................................................................................ 93
4. Infringement Conclusion ............................................................................................ 94
B. Technical Prong of the Domestic Industry Requirement .................................................. 94
C. Validity ............................................................................................................................. 97
1. Priority Date ................................................................................................................ 97
2. Anticipation: BL-3000 On-Sale Bar ......................................................................... 106
3. Obviousness: Hammond ........................................................................................... 107
4. Anticipation: Yoganandan ........................................................................................ 111
5. Anticipation: Seko .................................................................................................... 112
6. Written Description................................................................................................... 113
7. Indefiniteness ............................................................................................................ 116
VI. Economic Prong of the Domestic Industry Requirement ............................................... 116
A. The Relevant Industry ..................................................................................................... 116
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B. LSG/Healthe’s Domestic Expenditures .......................................................................... 119
1. Labor Activities and Expenditures............................................................................ 119
2. Capital Expenditures ................................................................................................. 125
C. Significance..................................................................................................................... 126
VII. Conclusions of Law ........................................................................................................ 129
VIII. Recommended Determination on Remedy & Bond ....................................................... 130
A. Findings of Fact Relevant to Remedy and Bond ............................................................ 130
B. Limited Exclusion Order................................................................................................. 130
C. Cease and Desist Order ................................................................................................... 132
D. Bond During Presidential Review .................................................................................. 137
IX. Initial Determination on Violation .................................................................................. 139
X. Order ............................................................................................................................... 139
PUBLIC VERSION
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Table of Abbreviations
CC Tr. Transcript of claim construction hearing held October 17, 2019
CDX Complainants’ demonstrative exhibit
CIB Complainants’ initial post-hearing brief
CPB Complainants’ pre-hearing brief
CPX Complainants’ physical exhibit
CRB Complainants’ responsive post-hearing brief
CX Complainants’ exhibit
Dep. Deposition
JX Joint Exhibit
RDX Respondents’ demonstrative exhibit
RIB Respondents’ initial post-hearing brief
RPB Respondents’ pre-hearing brief
RPX Respondents’ physical exhibit
RRB Respondents’ responsive post-hearing brief
RX Respondents’ exhibit
Stip. Stipulation of the parties
Tr. Transcript
PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN LIGHT-EMITTING DIODE
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (III)
INV. NO. 337-TA-1168
INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND
Administrative Law Judge Clark S. Cheney
(June 26, 2020)
Pursuant to the Notice of Investigation, 84 Fed. Reg. 29877 (June 25, 2019), and 19 C.F.R.
§§ 210.10(b), 210.42(a)(1)(i), this is the final Initial Determination in the matter of Certain Light-
Emitting Diode Products, Systems, and Components Thereof (III), Investigation No. 337-TA-1168.
For the reasons stated herein, I have determined that a violation of section 337 of the Tariff
Act, as amended, has not occurred in the importation into the United States, the sale for
importation, or the sale within the United States after importation, of certain light-emitting diode
products, systems, and components thereof based on allegations of infringement of U.S. Patent
No. 7,095,053 and U.S. Patent No. 7,528,421.
PUBLIC VERSION
2
I. INTRODUCTION
A. Procedural History
On May 20, 2019, complainants Lighting Science Group Corporation; Healthe, Inc.; and
Global Value Lighting, LLC (collectively, “LSG” or “Complainants”) filed an Amended
Complaint (“Compl.”) alleging violations of section 337 based on the importation into the United
States, the sale for importation, and the sale within the United States after importation of certain
light-emitting diode (“LED”) products, systems, and components thereof. 84 Fed. Reg. 24180
(May 24, 2019); see EDIS Doc. ID 681033.
On June 25, 2019, the Commission instituted Investigation No. 337-TA-1163 (“the 1163
investigation”) to determine:
[W]hether there is a violation of subsection (a)(1)(B) of section 337
in the importation into the United States, the sale for importation, or
the sale within the United States after importation of certain
products identified in paragraph (3) by reason of infringement of one
or more of claims 11 and 14–16 of the ’483 patent [U.S. Patent No.
7,098,483]; claims 1–7, 11–22, and 26–30 of the ’053 patent [U.S.
Patent No. 7,095,053]; claims 1, 2, 6, 7, and 10 of the ’421 patent
[U.S. Patent No. 7,528,421]; claims 1, 2, 5, 10, 12, 14, 15, 17, and
18 of the ’118 patent [U.S. Patent No. 8,506,118]; and claims 1, 2,
6, 12, 13, 16, 19–22, 24, 28, and 37 of the ’608 patent [U.S. Patent
No. 8,674,608]; and whether an industry in the United States exists
as required by subsection (a)(2) of section 337.
84 Fed. Reg. 29877 (June 25, 2019) (“Notice of Investigation”).
The Notice of Investigation named the following entities as respondents:
• Nichia Corporation
• Nichia America Corporation
• Cree, Inc.
• Cree Hong Kong, Limited
• Cree Huizhou Solid State Lighting Co. Ltd.
PUBLIC VERSION
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• OSRAM GmbH
• OSRAM Licht AG
• OSRAM Opto Semiconductors GmbH
• OSRAM Opto Semiconductors, Inc.
• Lumileds Holding B.V.
• Lumileds, LLC
• Signify N.V. (f/k/a Philips Lighting N.V.)
• Signify North America Corporation (f/k/a Philips Lighting North America
Corporation)
• MLS Co., Ltd.
• LEDVANCE GmbH
• LEDVANCE LLC
• General Electric Company
• Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC)
• Current Lighting Solutions, LLC
• Acuity Brands, Inc.
• Acuity Brands Lighting, Inc.
• Leedarson Lighting Co., Ltd.
• Leedarson America, Inc.
Id.1
The Office of Unfair Import Investigations is not a party to this investigation. Id.
1 All named respondents remaining in this investigation are hereinafter collectively referred to as
“Respondents.”
PUBLIC VERSION
4
On July 10, 2019, I issued Order No. 5 severing the 1163 investigation into two
investigations. This investigation is the second of the severed investigations and concerns whether
there is a violation of section 337 based on allegations of infringement of the ’483, ’053, and ’421
patents. Order No. 5 at 2. I subsequently set the target date for this investigation at sixteen months,
which makes this final initial determination due no later than June 26, 2020. Order No. 6 (July 17,
2019).
On December 30, 2019, I granted an unopposed motion by LSG for termination of the
investigation with respect to claim 7 of the ’421 patent. Order No. 18, aff’d, Comm’n Notice (Jan.
29, 2020). On January 14, 2020, I granted an unopposed motion by LSG for termination of the
investigation with respect to respondents MLS Co., Ltd., and Ledvance GmbH. Order No. 24,
aff’d, Comm’n Notice (Feb. 7, 2020). On January 29, 2020, I granted an unopposed motion by
LSG for termination of the investigation with respect to (1) claims 2 and 10 of the ’421 patent and
claims 4, 16–20, 22, and 26–30 of the ’053 patent and (2) claims 1–5 and 12 of the ’053 patent as
asserted against respondents Lumileds Holding B.V. and Lumileds LLC. Order No. 26, aff’d,
Comm’n Notice (Feb. 26, 2020).
In accordance with the procedural schedule issued as Order No. 7 on July 22, 2019, the
parties submitted a joint chart of proposed claim constructions on September 12, 2019. The parties
submitted opening claim construction briefs on September 20, 2019, and responsive claim
construction briefs on October 4, 2019. On October 17, 2019, I convened a claim construction
hearing.2 I subsequently issued Order No. 31 (“CC Order”) on February 11, 2020, construing
certain disputed claims.
2 The transcript of the claim construction hearing is available as EDIS Doc. ID 691452 and is
hereinafter referred to as “CC Tr.”
PUBLIC VERSION
5
On February 14, 2020, I granted a motion filed by Respondents seeking findings on
summary determination that (1) none of the products accused in this investigation infringe asserted
claims 11 and 14–16 of the ’483 patent or asserted claims 7 and 11–15 of the ’053 patent and
(2) the technical prong of the domestic industry requirement is not satisfied with respect to those
same claims. Order No. 32.3 The Commission declined to review my initial determination finding
no violation of section 337 as to these claims. Comm’n Notice (Apr. 7, 2020).4
I held a prehearing conference on February 18, 2020, and convened the evidentiary hearing
immediately afterwards. The evidentiary hearing ended on February 26, 2020. See Tr. 1–1455.5
B. The Parties
1. Complainants
Lighting Science Group Corporation (“Lighting Science”) is a corporation organized under
the laws of Delaware with its corporate headquarters at 1350 Division Road, Suite 204, West
Warwick, Rhode Island 02893. Its principal place of business is at 801 N. Atlantic Avenue, Cocoa
Beach, Florida 32931. Compl. ¶ 10. Lighting Science is in the business of manufacturing,
researching, developing, and selling devices and systems that use LEDs as the light source. See
id. ¶ 11.
3 Order No. 32 granted in part Respondents’ Motion No. 1168-004 for summary determination.
To the extent issues raised in that motion remain at issue, Motion No. 1168-004 is denied as moot
in view of the findings and conclusions set forth in this initial determination.
4 The asserted patent claims remaining at issue are: claims 1, 2, 3, 5, 6, and 21 of the ’053 patent;
and claims 1 and 6 of the ’421 patent.
5 After initial versions of the evidentiary hearing transcript were filed on EDIS, some portions of
the transcript were declassified, changing some pagination. To clarify which transcript pagination
is cited herein, citations to the public hearing transcript will be made in reference to EDIS Doc.
IDs 705937, 705942, 705946, 705948, and 705949. Citations to the confidential hearing transcript
will be made in reference to EDIS Doc. IDs 702885, 703084, 703335, 703849, and 703578.
PUBLIC VERSION
6
Healthe, Inc. (“Healthe”) is a corporation organized under the laws of Delaware, with
corporate headquarters and principal place of business at 801 N. Atlantic Avenue, Cocoa Beach,
Florida 32931. Compl. ¶ 27. Healthe was founded as a wholly-owned subsidiary of Lighting
Science on October 23, 2018, and it is a licensee of the ’483, ’053, and ’421 patents. See id. ¶ 28.
Global Value Lighting, LLC (“GVL”) is a corporation organized under the laws of
Delaware, with corporate headquarters and principal place of business at 1350 Division Road,
Suite 204, West Warwick, Rhode Island 02893. Compl. ¶ 30. GVL was founded as a majority-
owned subsidiary of Lighting Science on May 8, 2017, and it is a licensee of the ’483, ’053, and
’421 patents. See id. ¶ 31.
2. The Cree Respondents
Cree, Inc., is a publicly traded corporation organized under the laws of the State of North
Carolina with a principal place of business at 4600 Silicon Drive, Durham, North Carolina 27703.
Cree Resp. to Compl. ¶ 38 (EDIS Doc. ID 681480) (July 15, 2019).
Cree Hong Kong, Limited, is organized under the laws of Hong Kong with its principal
place of business at 18 Science Park East Avenue, Hong Kong Science Park, Shatin, New
Territories, Hong Kong. Id. ¶ 40. Cree Hong Kong, Limited, is a wholly owned subsidiary of
Cree, Inc. Id.
Cree Huizhou Solid State Lighting Company Limited is organized under the laws of the
People’s Republic of China with a principal place of business in Huizhou, Guangdong Province,
China. Id. ¶ 42. Cree Huizhou Solid State Lighting Company Limited is a wholly owned
subsidiary of Cree Hong Kong, Limited. Id.
These three entities are hereinafter collectively referred to as “Cree.”
PUBLIC VERSION
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3. The Lumileds Respondents
Lumileds Holding B.V. is a privately held company organized under the laws of the
Netherlands and has its principal place of business and corporate headquarters at The Base
Building B, 5th Floor, Evert van de Beeksttraat 1-107, 1118 CN Schipol, Netherlands. Compl.
¶ 58; Lumileds Resp. to Compl. ¶ 58 (EDIS Doc. ID 681420) (July 15, 2019).
Lumileds, LLC, is a privately held company organized under the laws of the State of
Delaware and has its principal place of business and operational headquarters at 370 West Trimble
Road, San Jose, California 95131. Compl. ¶ 60; Lumileds Resp. to Compl. ¶ 60. Lumileds, LLC,
is an indirect subsidiary of Lumileds Holding B.V. Lumileds Resp. to Compl. ¶ 61.
These two entities are hereinafter collectively referred to as “Lumileds.”
4. The Nichia Respondents
Nichia Corporation is a privately held corporation organized under the laws of Japan and
has its principal place of business at 491 Oka, Kaminaka-Cho, Anan-Shi, Tokushima 774-8601,
Japan. Nichia Resp. to Compl. ¶ 32 (EDIS Doc. ID 681396) (July 15, 2019).
Nichia America Corporation is a privately held corporation organized under the laws of the
State of Michigan. Id. ¶ 34. It has its principal place of business at 48561 Alpha Drive, Suite 100,
Wixom, Michigan 48393, and a sales office at 3625 Del Amo Boulevard, Suite 325, Torrance,
California 90503. Id. Nichia America Corporation is a subsidiary of Nichia Corporation. Id. ¶ 35.
These two entities are hereinafter collectively referred to as “Nichia.”
5. The OSRAM Respondents
OSRAM Licht AG is a publicly traded company organized under the laws of Germany and
has its principal place of business at Marcel-Breuer-Strasse 6, 80807 Munich, Germany. OSRAM
Resp. to Compl. ¶ 48 (EDIS Doc. ID 681474) (July 15, 2019).
PUBLIC VERSION
8
OSRAM GmbH is a privately held company organized under the laws of Germany and has
its principal place of business at Marcel-Breuer-Strasse 6, 80807 Munich, Germany. Id. ¶ 50.
OSRAM GmbH is a (partly indirectly) wholly-owned subsidiary of OSRAM Licht AG. Id. ¶ 49.
OSRAM Opto Semiconductors GmbH is a privately held company organized under the
laws of Germany and has its principal place of business at Leibnizstr 4, 93055 Regensburg,
Germany. Id. ¶ 52. OSRAM Opto Semiconductors GmbH is a subsidiary of OSRAM GmbH. Id.
¶ 53.
OSRAM Opto Semiconductors, Inc., is a privately held corporation organized under the
laws of the State of Delaware and has its principal place of business at 1150 Kifer Road, Suite 100,
Sunnyvale, California 94086. Id. ¶ 54. OSRAM Opto Semiconductors GmbH holds 100% of the
shares of OSRAM Opto Semiconductors, Inc. Id. ¶ 55.
These four entities are hereinafter collectively referred to as “OSRAM.”
6. The Acuity Respondents
Acuity Brands, Inc., is a publicly traded corporation organized under the laws of the State
of Delaware with its principal place of business at 1170 Peachtree St. NE, Suite 2300, Atlanta,
Georgia, 30309. Acuity Resp. to Compl. ¶ 90 (EDIS Doc. ID 681716) (July 16, 2019).
Acuity Brands Lighting, Inc., is a wholly-owned subsidiary of Acuity Brands, Inc.,
organized under the laws of the State of Delaware. Id. ¶ 92.
These two entities are hereinafter collectively referred to as “Acuity.”
7. The GE Respondents
General Electric Company is a publicly traded company organized under the laws of New
York and has its principal place of business at 41 Farnsworth Street, Boston, Massachusetts 02210.
Compl. ¶ 78; GE Resp. to Compl. ¶ 78 (EDIS Doc. ID 682214) (July 18, 2019).
PUBLIC VERSION
9
Consumer Lighting (U.S.), LLC, is a privately owned company organized under the laws
of the State of Delaware with its principal place of business at 1975 Noble Road, Cleveland, Ohio
44112. Compl. ¶ 80; GE Resp. to Compl. ¶ 78.
These two entities are hereinafter collectively referred to as “GE.”
8. Respondent Current
Current Lighting Solutions, LLC (“Current”) is a company organized under the laws of
Delaware and has its principal place of business at 1975 Noble Road, Nela Park, Cleveland, Ohio
44112. Compl. ¶ 84; Current Resp. to Compl. ¶ 84 (EDIS Doc. No. 681476) (July 15, 2019).
9. Respondent LEDVANCE
LEDVANCE LLC (“LEDVANCE”) is a privately held U.S. company organized under
Delaware law and has its principal place of business at 200 Ballardvale Street, Wilmington,
Massachusetts 01887. LEDVANCE Resp. to Compl. ¶ 74 (EDIS Doc. No. 681442) (July 15,
2019). LEDVANCE LLC is wholly owned by MLS Co., Ltd. Id.
10. The Leedarson Respondents
Leedarson Lighting Co., Ltd., is headquartered in the People’s Republic of China at the
Leedarson Building, No. 1511, 2nd Fanghu North Road, Xiamen 361010, People’s Republic of
China. Leedarson Resp. to Compl. ¶ 96 (EDIS Doc. ID 681473) (July 15, 2019).
Leedarson America, Inc., is headquartered in the State of Georgia at 4600 Highlands Pkwy
SE, Suite D-E, Smyrna, Georgia 30082. Id. ¶ 98.
These two entities are hereinafter collectively referred to as “Leedarson.”
11. The Signify Respondents
Signify N.V. was formerly named Philips Lighting N.V. and is a publicly traded company
organized under the laws of the Netherlands, with its principal place of business at High Tech
PUBLIC VERSION
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Campus 48, 5656 AE Eindhoven, The Netherlands. Signify Resp. to Compl. ¶ 64 (EDIS Doc. ID
681382) (July 15, 2019).
Signify North America Corporation was formerly named Philips Lighting North America
Corporation and is a publicly traded company organized under the laws of Delaware, with a place
of business at 200 Franklin Square Drive, Somerset, New Jersey 08873. Id. ¶ 67. Signify North
America Corporation is a wholly-owned subsidiary of Signify N.V. Id. ¶ 68.
These two entities are hereinafter collectively referred to as “Signify.”
C. The Asserted Patents
LSG asserts claims under two patents in this investigation: the ’053 patent and
the ’421 patent.
1. The ’053 Patent
U.S. Patent No. 7,095,053 is titled “Light Emitting Diodes Packaged for High Temperature
Operation,” issued on August 22, 2006, and names Joseph Mazzochette and Greg Blonder as
inventors. JX-0003 (’053 patent) at cover page. The ’053 patent issued from application
No. 10/638,579, filed on August 11, 2003, and claims priority to provisional application
No. 60/467,857, filed on May 5, 2003. Id.
The ’053 patent, on its face, is assigned to Lamina Ceramics, Inc. ’053 patent at cover
page. LSG is the owner by assignment of the ’053 patent. See Compl. Exs. 9, 13–14, 16–17,
20–23, 25, 28–29.
The remaining ’053 claims at issue in this investigation are claims 1, 2, 3, 5, 6, and 21.6
Claim 1 is an independent claim from which claims 2, 3, 5, and 6 depend. Claim 21 is a dependent
6 See Section I.A above.
PUBLIC VERSION
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claim depending from independent claim 16, which has been terminated from this investigation.
These claims read as follows:
1. A packaged LED for high temperature operation comprising:
a metal base, the metal base including an underlying thermal
connection pad and a pair of underlying electrical connection pads;
a layer of ceramic overlying the metal base; and
an LED mounted on the ceramic layer, wherein the LED includes a
pair of electrodes electrically connected to respective underlying
electrical connection pads, and wherein the LED is thermally
coupled to the metal base by one or more thermal vias, and thermally
coupled through the metal base to the thermal connection pad.
2. The packaged LED of claim 1 wherein the underlying electrical
connection pads and the underlying thermal connection pad are coplanar to
permit surface mounting on corresponding pads of a PC board.
3. The packaged LED of claim 1 wherein at least one electrode of the LED
is connected to one of the underlying electrical connection pads by an
electrical path including a bonding wire from the electrode to a bonding pad
on the ceramic layer.
5. The packaged LED of claim 1 wherein at least one electrode of the LED
is connected to one of the underlying electrical connection pads by an
electrical path including the metal base.
6. An array of LEDs comprising a plurality of LEDs according to claim 1
overlying a common metal base.
16. A packaged LED for high temperature operation comprising:
a metal base, the metal base including an underlying thermal
connection pad and a pair of underlying electrical connection pads;
a layer of electrically insulating material overlying the metal base;
and
an LED mounted on the layer of electrically insulating material,
wherein the LED includes a pair of electrodes electrically connected
to respective underlying electrical connection pads, and wherein the
LED is thermally coupled to the metal base by one or more thermal
vias, and thermally coupled through the metal base to the thermal
connection pad.
PUBLIC VERSION
12
21. An array of LEDs comprising a plurality of LEDs according to claim 16
overlying a common metal base.
’053 patent at 9:5–25, 9:30–35, 10:16–23, 10:41–42.
2. The ’421 Patent
U.S. Patent No. 7,528,421 is titled “Surface Mountable Light Emitting Diode Assemblies
Packaged for High Temperature Operation,” issued on May 5, 2009, and names Joseph
Mazzochette and Greg Blonder as inventors. JX-0004 (’421 patent) at cover page. The ’421 patent
issued from Application No. 11/179,863, filed on July 12, 2005, and is a continuation-in-part of
the application that resulted in the ’053 patent. Id. Similar to the ’053 patent, the ’421 patent also
claims priority to provisional application No. 60/467,857, filed on May 5, 2003. Id.
The ’421 patent, on its face, is assigned to Lamina Lighting, Inc. ’421 patent at cover page.
LSG is the owner by assignment of the ’421 patent. See Compl. Exs. 11–14, 16–17, 20–23, 25,
28.
The remaining ’421 claims at issue in this investigation are claims 1 and 6.7 Claim 1 is an
independent claim from which claim 6 depends. These claims read as follows:
1. A LED assembly adapted for surface mounting and high temperature
operation, the LED assembly comprising:
a thermally conducting base, wherein at least a portion of the
thermally conducting base is substantially planar;
one or more electrically insulating layers overlying at least a portion
of the planar portion of the thermally conducting base and defining
a surface cavity, wherein the electrically insulating layers include
one or more terminals;
one or more LED die disposed at least partially within the surface
cavity, wherein the one or more LED die are in thermal contact with
the planar portion of the thermally conducting base, and electrically
7 See Section I.A above.
PUBLIC VERSION
13
connected to the one or more terminals of the one or more insulating
layers,
wherein a bottom surface of the LED assembly includes a thermally
conductive region in solderable thermal contact with the thermally
conducting base, for spreading heat transmitted to the base from the
one or more LED die; and
further comprising an LED assembly mount selected from the group
consisting of an electrically insulated fastener and a solderable
bonding pad.
6. The LED assembly of claim 1, wherein the thermally conducting base
includes a metal base.
’421 patent at 7:46–67, 8:17–18.
II. JURISDICTION & IMPORTATION
A. Subject Matter Jurisdiction
No party has contested the Commission’s subject matter jurisdiction over this
investigation. Section 337 of the Tariff Act prohibits the importation, the sale for importation, or
the sale after importation of articles that infringe a valid and enforceable patent if an industry exists
in the United States relating to articles protected by the patent. 19 U.S.C. §§ 1337(a)(1)–(2).
LSG’s Amended Complaint states a cause of action under section 337. Specifically, LSG has
alleged that the Respondents are importing, selling for importation, and selling after importation
certain LED products that infringe the asserted patents. See Compl. at 45–118. The Commission,
therefore, has subject matter jurisdiction over this investigation.
B. Personal Jurisdiction
By filing the Amended Complaint and participating in the investigation, LSG has
consented to personal jurisdiction at the Commission. See Certain Cutting Tools for Flexible
Plastic Conduit & Components Thereof, 337-TA-344, Initial Determination at 4, not reviewed,
Comm’n Determination Not to Review an Initial Determination Finding a Violation of Section
PUBLIC VERSION
14
337 (Oct. 28, 1993), USITC Pub. No. 2719 (Jan. 1994). The Respondents have appeared and
participated in this investigation, and no party has contested the Commission’s jurisdiction over it.
I therefore find that the Commission has personal jurisdiction over all parties. See, e.g., Certain
Optical Disk Controller Chips & Chipsets & Prods. Containing Same, Including DVD Players &
PC Optical Storage Devices, Inv. No. 337-TA-506, Initial Determination at 4–5 (May 16, 2005)
(unreviewed in relevant part).
C. Importation
To prove a violation of section 337 by any particular respondent, the complainant must
show that the respondent engaged in “[t]he importation into the United States, the sale for
importation, or the sale within the United States after importation by the owner, importer, or
consignee” of products accused of infringement. 19 U.S.C. §§ 1337(a)(1)(A)–(B).
Of the four OSRAM entities named as respondents in this investigation, OSRAM Opto
Semiconductors GmbH and OSRAM Opto Semiconductors, Inc., stipulated that they have
imported into the United States, sold for importation into the United States, or sold within the
United States after importation certain products accused in this investigation. JX-0434C at 6. LSG
has not offered evidence to show that the other two OSRAM entities, OSRAM GMbH and
OSRAM Licht AG, satisfy the importation requirement. See Tr. (Malkiewicz) 876:1–7. I
therefore find that the importation requirement of section 337 has been satisfied as to OSRAM
Opto Semiconductors GmbH and OSRAM Opto Semiconductors, Inc., but has not been satisfied
as to OSRAM GMbH and OSRAM Licht AG.
With respect to the two named Lumileds respondents, LSG relies on Exhibit A to
Lumileds’s Response to the Amended Complaint and Lumileds’s discovery responses to argue
that both Lumileds entities satisfy the importation requirement in this investigation. See Tr.
(Malkiewicz) 828:15–829:10 (referring to CDX-0009C at 73), 883:1–884:7; CX-1686C; see also
PUBLIC VERSION
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CIB at 2. Lumileds did not contest that Lumileds, LLC, imported accused articles. See RRB at
142. I therefore find that the importation requirement of section 337 has been satisfied as to
Lumileds, LLC. On the other hand, LSG has not demonstrated that Lumileds Holding B.V. has
imported or sold articles in violation of section 337. Contrary to LSG’s representation, LSG’s
witness Mr. Malkiewicz testified that Lumileds Holding B.V. does not satisfy the importation
requirement. See Tr. (Malkiewicz) 883:1–884:7. In its response to the Amended Complaint,
Lumileds provided information relating to the quantity and value of Lumileds products imported
into the United States, but never admitted that Lumileds Holding B.V. participated in the
importation. See Lumileds Resp. to Compl. Ex. A; see also id. ¶ 377. Similarly, the Lumileds
discovery response relied upon by LSG does not expressly state Lumileds Holding B.V. imported
or sold the accused products. Cf. CX-1686C. Instead, it lists volumes of imported products
without identifying who imported or sold the products. See id. The discovery response also states
that third parties were involved in an unidentified number of importations. Id. at 1 n.1. Weighing
the record evidence as a whole, I find that LSG has not established by a preponderance of the
evidence that the importation requirement of section 337 has been satisfied as to Lumileds Holding
B.V.
The Acuity respondents stipulated as to the importation, sale for importation, and/or sale
after importation of certain Acuity luminaires. JX-0433C ¶ 5. Acuity argues that this list of
stipulated products does not match the list of Acuity products LSG accuses of infringement in this
investigation. RIB at 143; compare JX-0433C at 2–5 with CX-0001C at 746–766. Acuity further
argues that, “to the extent any violation may be found, its basis should be limited to the accused
Acuity luminaires identified in JX-0433C.” RIB at 143. Based on the stipulation marked as exhibit
JX-0433C, I find Acuity has imported accused articles. The Commission has found that a single
PUBLIC VERSION
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importation of an accused article is sufficient to satisfy the importation requirement. Certain
Trolley Wheel Assemblies, Inv. No. 337-TA-161, Comm’n Op. at 7–8, USITC Pub. No. 1605 (Nov.
1984) (deeming the importation requirement satisfied by the importation of a single product of no
commercial value). I find the importation requirement of section 337 has been satisfied with
respect to Acuity.
LEDVANCE, Current, Leedarson, GE, and Nichia have also each stipulated to the
importation, sale for importation, and/or sale after importation of certain accused products. See
JX-0008C (GE); JX-0009C (Current); JX-0010C (Leedarson); JX-0011C (LEDVANCE);
JX-0432C (Nichia); JX-0435C (LEDVANCE); JX-0436C (Current). Cree and Signify provided
information regarding importation of their accused products in response to the Amended
Complaint and through discovery responses. See Tr. (Malkiewicz) 828:10–22; CX-0982C (Cree
list of products); CX-1694C (Exhibit A to Signify’s Response to Amended Complaint); CX-1108C
(Signify’s Interrogatory Responses). Accordingly, I find that the importation requirement of
section 337 has been satisfied with respect to LEDVANCE, Current, Leedarson, GE, Nichia, Cree,
and Signify.
D. In Rem Jurisdiction
As discussed above, LSG adduced evidence demonstrating the importation, sale for
importation, and sale after importation into the United States of products accused in this
investigation. I therefore find the Commission has in rem jurisdiction over the accused products.
See Sealed Air Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985–86 (C.C.P.A. 1981) (noting the
Commission has jurisdiction over imported goods).
E. Standing
Respondents do not dispute LSG’s ownership of the asserted patents. The record
demonstrates that LSG has standing in this investigation due to its ownership by assignment of the
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asserted patents. See Compl. Exs. 9, 13–14, 16–17, 20–23, 25, 28–29 (’053 patent); Compl. Exs.
11–14, 16–17, 20–23, 25, 28 (’421 patent).
III. LEGAL PRINCIPLES
A. Infringement
In a section 337 investigation, the complainant bears the burden of proving infringement
of the asserted patent claims by a preponderance of the evidence. See Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1349 (Fed. Cir. 2010). This standard “requires proving that infringement
was more likely than not to have occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418
F.3d 1326, 1341 n.15 (Fed. Cir. 2005).
Literal infringement is a question of fact. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
1323, 1332 (Fed. Cir. 2008). “Literal infringement requires the patentee to prove that the accused
device contains each limitation of the asserted claim(s). If any claim limitation is absent, there is
no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
1241, 1247 (Fed. Cir. 2000).
B. Claim Construction
“An infringement analysis entails two steps. The first step is determining the meaning and
scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc., 52
F.3d 967, 976 (Fed. Cir. 1995) (en banc) (internal citations omitted), aff’d, 517 U.S. 370 (1996).
Claim construction resolves legal disputes between the parties regarding claim scope. See Eon
Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016).
Evidence intrinsic to the application, prosecution, and issuance of a patent is the most
significant source of the legally operative meaning of disputed claim language. See Bell Atl.
Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The
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intrinsic evidence includes the claims themselves, the specification, and the prosecution history.
See Phillips v. AWH Corp, 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman, 52
F.3d at 979. As the Federal Circuit explained in Phillips, courts must analyze each of these
components to determine the “ordinary and customary meaning of a claim term” as understood by
a person of ordinary skill in the art at the time of the invention. 415 F.3d at 1313.
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). “Quite apart from the written description and the prosecution history, the claims
themselves provide substantial guidance as to the meaning of particular claim terms.” Id. at 1314;
see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In
construing claims, the analytical focus must begin and remain centered on the language of the
claims themselves, for it is that language that the patentee chose to use to ‘particularly point[ ] out
and distinctly claim[ ] the subject matter which the patentee regards as his invention.”’). The
context in which a term is used in an asserted claim can be “highly instructive.” Phillips, 415 F.3d
at 1314. Additionally, other claims in the same patent, asserted or unasserted, may also provide
guidance as to the meaning of a claim term. Id.
The specification “is always highly relevant to the claim construction analysis. Usually, it
is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 1315 (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he specification
may reveal a special definition given to a claim term by the patentee that differs from the meaning
it would otherwise possess. In such cases, the inventor’s lexicography governs.” Id. at 1316. “In
other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope
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by the inventor.” Id. As a general rule, however, the particular examples or embodiments
discussed in the specification are not to be read into the claims as limitations. Id. at 1323. In the
end, “[t]he construction that stays true to the claim language and most naturally aligns with the
patent’s description of the invention will be . . . the correct construction.” Id. at 1316 (quoting
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
When the intrinsic evidence does not establish the meaning of a claim, then extrinsic
evidence (i.e., all evidence external to the patent and the prosecution history, including
dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered. Id.
at 1317. Extrinsic evidence is generally viewed as less reliable than the patent itself and its
prosecution history in determining how to define claim terms. Id. “The court may receive extrinsic
evidence to educate itself about the invention and the relevant technology, but the court may not
use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction
mandated by the intrinsic evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed.
Cir. 1999).
C. Validity
A patent is presumed valid. See 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P’ship, 131
S. Ct. 2238, 2242 (2011). A respondent who has raised patent invalidity as an affirmative defense
has the burden of overcoming this presumption by clear and convincing evidence. See Microsoft,
131 S. Ct. at 2242.
1. Anticipation
Under 35 U.S.C. § 102, a claim is anticipated, and therefore invalid, when “the four comers
of a single, prior art document describe every element of the claimed invention, either expressly
or inherently, such that a person of ordinary skill in the art could practice the invention without
undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
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(Fed. Cir. 2000). To be considered anticipatory, the prior art reference must be enabling and
describe the applicant’s claimed invention sufficiently to have placed it in possession of a person
of ordinary skill in the field of the invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339,
1346 (Fed. Cir. 2000).
2. Obviousness
Under 35 U.S.C. § 103, a patent may be found invalid as obvious if “the differences
between the subject matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). Because obviousness is
determined at the time of invention, rather than the date of litigation, “[t]he great challenge of the
obviousness judgment is proceeding without any hint of hindsight.” Star Scientific, Inc. v. R.J.
Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
When a patent is challenged as obvious, the critical inquiry in determining the differences
between the claimed invention and the prior art is whether there is an apparent reason to combine
the known elements in the fashion claimed by the patent at issue. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417–418 (2007). Thus, based on a combination of several prior art references,
“the burden falls on the patent challenger to show by clear and convincing evidence that a person
of ordinary skill in the art would have had reason to attempt to make the composition or device, or
carry out the claimed process, and would have had a reasonable expectation of success in doing
so.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)
(citations omitted).
Obviousness is a determination of law based on underlying determinations of fact. Star
Scientific, 655 F.3d at 1374. The factual determinations behind a finding of obviousness include:
(1) the scope and content of the prior art, (2) the level and content of the prior art, (3) the differences
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between the claimed invention and the prior art, and (4) secondary considerations of non-
obviousness. KSR, 550 U.S. at 399 (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
These factual determinations are referred to collectively as the “Graham factors.” Secondary
considerations of non-obviousness include commercial success, long felt but unresolved need, and
the failure of others. Id. When present, secondary considerations “give light to the circumstances
surrounding the origin of the subject matter sought to be patented,” but they are not dispositive on
the issue of obviousness. Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l., 618 F.3d 1294,
1304–06 (Fed. Cir. 2010). For evidence of secondary considerations to be given substantial weight
in the obviousness determination, its proponent must establish a nexus between the evidence and
the merits of the claimed invention. See W. Union Co. v. MoneyGram Payment Sys. Inc., 626 F.3d
1361, 1372–73 (Fed. Cir. 2010) (citing In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)).
3. Written Description
The issue of whether a patent is invalid for failure to meet the written description
requirement of 35 U.S.C. § 112, ¶ 1 is a question of fact. Bard Peripheral Vascular, Inc. v. W.L.
Gore & Assocs., Inc., 670 F.3d 1171, 1188 (Fed. Cir. 2012). The hallmark of the written
description requirement is the disclosure of the invention. See Ariad Pharm., Inc. v. Eli Lilly and
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The test for determining the sufficiency of
the written description in a patent requires “an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art. Based on that inquiry,
the specification must describe an invention understandable to that skilled artisan and show that
the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy
the written description requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology.” Id.
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4. Indefiniteness
Pursuant to 35 U.S.C. § 112, ¶ 2, a patent specification “shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter which the applicant
regards as his invention.” 35 U.S.C. § 112, ¶ 2. Section 112, ¶ 2 requires “that a patent’s claims,
viewed in light of the specification and prosecution history inform those skilled in the art about
the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2129 (2014). A patent claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A).
D. Domestic Industry
For a patent-based complaint, a violation of section 337 can be found “only if an industry
in the United States, relating to the articles protected by the patent . . . concerned, exists or is in
the process of being established.” 19 U.S.C. § 1337(a)(2). The complainant bears the burden of
establishing that the domestic industry requirement is satisfied. John Mezzalingua Assocs., Inc. v.
Int’l Trade Comm’n, 660 F.3d 1322, 1331 (Fed. Cir. 2011). The domestic industry requirement
of section 337 is often described as having an economic prong and a technical prong. InterDigital
Commc’ns, LLC v. Int'l Trade Comm’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013); Certain Stringed
Musical Instruments and Components Thereof, Inv. No. 337-TA-586, Comm’n Op. at 12–14,
USITC Pub. No. 4120 (Dec. 2009).
1. Economic Prong
Section 337(a)(3) sets forth the following economic criteria for determining the existence
of a domestic industry in such investigations:
(3) For purposes of paragraph (2), an industry in the United States shall be
considered to exist if there is in the United States, with respect to the articles
protected by the patent, copyright, trademark, mask work, or design
concerned –
(A) significant investment in plant and equipment;
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(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including engineering,
research and development, or licensing.
19 U.S.C. § 1337(a)(3). Given that the statutory criteria are listed in the disjunctive, satisfaction
of any one of them will be sufficient to meet the economic prong of the domestic industry
requirement. See Certain Variable Speed Wind Turbines and Components Thereof, Inv. No.
337-TA-376, Comm’n Op. at 15, USITC Pub. No. 3003 (Nov. 1996).
2. Technical Prong
The technical prong of the domestic industry requirement is satisfied when the complainant
in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents
at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain Microsphere Adhesives, Process for Making
Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No.
337-TA-366, Comm’n Op. at 8, 1996 WL 1056095 (Jan. 16, 1996). “The test for satisfying the
‘technical prong’ of the industry requirement is essentially [the] same as that for infringement, i.e.,
a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int’l Trade Comm’n, 342
F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of
the evidence that the domestic product practices one or more valid claims of the patent. See id.;
Spansion, 629 F.3d at 1349; Certain Vision-Based Driver Assistance System Cameras and
Components Thereof, Inv. No. 337-TA-907, Comm’n Op. at 36, USITC Pub. No. 4866 (Feb.
2019). It is sufficient to show that the products practice any claim of that patent, not necessarily
an asserted claim of that patent. See Certain Male Prophylactic Devices, Inv. No. 337-TA-546,
Comm’n Op. at 38 (Aug. 1, 2007).
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IV. THE ’053 PATENT
A. Infringement
1. The ’053 Accused Products
a) Nichia
At the evidentiary hearing and in its post-hearing brief, LSG argued that the importation
and sale of Nichia’s 219B series of products of infringe claims 1, 2, and 5 of the ’053 patent.8 See
CIB at 4–39. LSG’s expert Dr. Kuball focused his hearing testimony on an infringement analysis
of the Nichia NCSE219B-V1 product. The figure below shows top, side, and bottom views of the
Nichia NCSE219B-V1 product:
CX-0589 at LSGITC_1439293-300.
LSG contends the Nichia NCSE219B-V1 product is “representative” of all Nichia 219B
series products. See CIB at 36. In particular, LSG identifies the following Nichia products as
“[not] contain[ing] any differences that are material to infringement with respect to meeting any
specific claim limitation”:
• NVSL219BT-V1
8 As discussed above in Section I.A, claims 1, 2, 3, 5, 6, and 21 of the ’053 patent remain in this
investigation. LSG did not argue infringement of claims 3, 6, or 21 at the hearing or in its post-
hearing brief. See CIB at 4–39.
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• NVSW219BT-V1
• NCSA219B-V1
• NCSC219B-V1
• NCSE219B-V1
• NCSG219B-V1
• NCSR219B-V1
• NVSA219B-V1
• NVSL219BT
• NVSL219B-V1
• NVSW219B
• NVSW219BT
• NCSB219B-V1
CIB at 36–39.
Respondents do not dispute LSG’s assertion that these products are materially identical for
the purpose of the infringement analysis here. See RRB at 1–40. Based on the record evidence, I
find that the Nichia NCSE219B-V1 product is representative of the Nichia 219B series products
listed above for purposes of the infringement analysis of claims 1, 2, and 5 of the ’053 patent.
b) Acuity
LSG also accuses Acuity of infringing claims 1, 2, and 5 of the ’053 patent, alleging
“Acuity purchases and imports Nichia’s infringing 219B series of packages from various suppliers,
including Nichia and Universal Lighting Technologies.” See CIB at 39 (citing Tr. (Kuball)
232:24–234:8); CX-4191C (Quinlan Dep.) at 41:5–13, 44:5–12, 45:2–7. LSG’s expert Dr. Kuball
testified that he used Acuity’s interrogatory responses (CX-1075C) at pages 173–240 to determine
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which Acuity luminaires use the Nichia 219B series of products and summarized information
relating to Acuity’s purchase and use of the Nichia 219B series products in CX-0001C. Tr.
(Kuball) 230:9–232:23, 232:24–238:24.
Acuity disputes that its luminaires incorporate the Nichia 219B series LEDs, arguing that
“Acuity does not currently use the Accused 219Bs . . . Acuity historically used them, but they
have been replaced in those luminaires with non-accused Nichia 219C/319 packages.” RRB at
40–41 (emphasis original) (citing CX-1075C at 32–49; CX-4191C (Quinlan Dep.) at 89:9–92:13).
LSG and Acuity both rely on Exhibit CX-1075C in support of their arguments here. The
exhibit is titled “Acuity Respondents’ Eighth Supplemental and Corrected Objections and
Responses To Complainants’ First Set Of Interrogatories.” CX-1075C at 1. That discovery
response contains a chart titled “Updated Exhibit 1” with the following columns:
• SUPPLIER_NUMBER
• SUPPLIER_NAME
• ITEM
• DESCRIPTION
• QTY
• SPEND
Id. at 173–240.
Each page of Updated Exhibit 1 shows many products with “219B” descriptors, with
quantities numbering in the millions. See, e.g., CX-1075C.0173–.0240. This evidence suggests
that certain Acuity luminaries did incorporate Nichia 219B series LEDs at one time. In contrast,
the narrative interrogatory responses cited by Acuity do not contain any reference to the Nichia
219B series. Cf. CX-1075C.0033–.0040. The luminaries listed in the passages cited by Acuity
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appear instead to incorporate Nichia 219C series LEDs, which are not accused of infringement.
See, e.g., CX-1075C.0040 (listing “NVSW219CT”). The deposition testimony of Acuity’s
corporate witness Mr. Quinlan is unclear as to whether the narrative interrogatory responses are
meant to supplant the listing in Updated Exhibit 1. See CX-4191C (Quinlan Dep.) 89:9–92:13.
The evidence thus shows that, at least during the period covered by Acuity’s discovery
responses, both the Nichia 219B series and the Nichia 219C series of LEDs were incorporated into
Acuity’s luminaires. Whether some Acuity products now incorporate the Nichia 219C series
LEDs does not change the infringement analysis of those Acuity products in evidence that contain
the Nichia 219B series. Acuity’s practices going forward may have ramifications on an
appropriate remedy in the event a violation of section 337 is found, and I address that issue in more
detail below.
2. Claim 1
The following subsections analyze the accused Nichia 291B series products, with a focus
on the representative NCSE219B-V1 product. As set forth below, the evidence demonstrates that
the Nichia 219B series products do not infringe claim 1 of the ’421 patent.
a) “A packaged LED for high temperature operation comprising: ”
The parties disagree as to whether the phrase “for high temperature operation” recited in
the preamble to claim 1 is limiting. LSG argues that the preamble is not limiting; Respondents
argue that it limits the invention to LED packages capable of handling operational and die
temperatures of up to 200° C and 250° C, respectively. CIB at 5–10; RRB at 3–7. As discussed
below, I find that the preamble phrase “for high temperature operation” does not limit the scope
of claim 1 of the ’053 patent.
Generally speaking, the preamble does not limit the scope of the invention defined in the
claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). A preamble
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can be limiting where “it recites essential structure or steps, or if it is ‘necessary to give life,
meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002). By contrast, a preamble is not limiting when a patent “defines a
structurally complete invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.” Artic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320, 1328
(Fed. Cir. 2019). This follows from the long-established principle that patentability of an apparatus
claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, 289 F.3d at 809 (citing In re Gardiner, 171 F.2d 313, 315–16 (C.C.P.A. 1948) (“It is
trite to state that the patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof.”).
Here, the body of claim 1 of the ’053 patent describes a structurally complete LED package.
See ’053 patent at 9:5–16. The phrase “for high temperature operation” adds no further structural
meaning to the claim; the structure described in claim 1 would remain intact if the words “for high
temperature operation” were deleted from the preamble. See Catalina Mktg. Int’l, 289 F.3d at 809
(“[A] preamble generally is not limiting when the claim body describes a structurally complete
invention such that deletion of the preamble phrase does not affect the structure or steps of the
claimed invention.”). When I asked Respondents’ expert Dr. Schubert at the evidentiary hearing
if he had given an opinion that the phrase “for high temperature operation” is “necessary to
understand the structure of the invention recited in the remainder of the claim,” he admitted he
offered no such opinion. Tr. (Schubert) 1068:19–25.
The phrase “for high temperature operation” also does not provide an antecedent basis for
limitations in the body of the claim, which weighs in favor of a conclusion that this preamble
phrase is not limiting. See Arctic Cat Inc., 919 F.3d at 1329 (holding that the preamble in question
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was not limiting because, inter alia, the preamble did not supply an antecedent basis for any terms
in the body of the claim); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir.
2010) (same).
A “review of the entirety of the patent” does not compel a different conclusion. See
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). The
specification of the ’053 patent discloses embodiments of the invention a person of skill in the art
would understand to be operable across a range of temperatures. For example, the specification
teaches that “prevalent” plastic LED packages have an operational temperature limit of about
80° C and “[s]ome LED die . . . will operate at 120° C.” ’053 patent at 1:32–34. The specification
never disclaims use of the invention with such LED packages. The specification also states the
LED used in the invention “can be made by the low temperature co-fired ceramic on metal
technique (LTCC-M),” a prior art technique. Id. at 1:54–56, 7:29–39. Reinforcing the flexible
application of the invention with such devices, the specification states: “The system can be tailored
to be compatible with devices including silicon-based devices, indium phosphide-based devices
and gallium arsenide based-devices, for example, by proper choice of the metal for the support
board and of the glasses in the green tapes.” Id. at 7:19–24. The patent goes on to explain why
the “proper choice” of metal and glasses must be made: “The ceramic layers of the LTCC-M
structure must be matched to the thermal coefficient of expansion of the metal support board.” Id.
at 7:25–27. In other words, as the invention passes through a range of temperatures, the ceramic
layers and metal support board must expand and contract at the same rate to avoid damage to the
package. Thus, the teachings of the specification do not support a conclusion that the claimed
invention must be operable above 200° C; it “can be tailored to be compatible with devices”
operating at a range of temperatures.
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The specific temperatures Respondents propose in their construction are described in only
three places in the ’053 patent. First, the Background of the Invention describes an “industry
preference” for an LED package with operational temperature “of about 200° C.” ’053 patent at
1:33–35. But an industry preference for an improvement over the prior art is not a declaration by
the inventors about the scope of the invention. See Textron Innovations Inc. v. Am. Eurocopter
Corp., 498 F. App’x 23, 29 (Fed. Cir. 2012) (not selected for publication) (a claim preamble
reciting an “improved replacement helicopter landing gear assembly” was not limited to
replacement gear even though the background section of the patent said it would be “beneficial to
have a replacement landing gear assembly that would have a substantially longer service life than
the prior art landing gear assemblies”).
Next, the Summary of the Invention states the diode described in the patent “can operate
at temperatures as high as 250° C.” ’053 patent at 1:56–57. At best, this statement reflects the
capability of a preferred embodiment. It is not a statement excluding all LED structures that cannot
operate at 250° C from the invention. See SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d
1298, 1304 (Fed. Cir. 2003) (where a specification stated that “each handgrip shift actuator
contains a generally cylindrical cam member,” the claim term “shift actuator” did not require a
cam member because the specification statement was merely a preferred embodiment).
Finally, the Abstract contains a similar statement that the LED package “can operate at
temperatures as high as 250 C.” ’053 patent at cover page. Like the statement in the Summary of
the Invention, this statement merely reflects the capability of a preferred embodiment; it does not
limit the invention. See MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142, 151 (Fed.
Cir. 2011) (not selected for publication) (declining to limit claims based on language in the abstract
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and summary sections because it did not represent “the full scope of the embodiments in the
specification”).
After reviewing the entire ’053 patent, including the language of the claim, I conclude that
the preamble phrase “for high temperature operation” is “simply a ‘laudatory term’ that only sets
forth the purpose of the claimed invention” and is not limiting. See Allen Eng’g, 299 F.3d at
1346–47.
With this understanding, the evidence demonstrates that the accused Nichia
NCSE219B-V1 product is a packaged LED, as are the rest of the 219B series of products. See,
e.g., CX-4180C (Amo Dep.) at 91:7–14.
b) “a metal base, ”
I construed the disputed term “base” as part of the claim construction order issued as Order
No. 31. See CC Order at 22–24. In that order, I stated: “I will interpret the term ‘base’ according
to its ordinary meaning in the art, which encompasses terms like ‘support board’ and ‘substrate.’”
Id. at 24. I hereby incorporate the discussion of the term “base” on pages 22–24 of Order No. 31
as part of this initial determination.
LSG argues that each of the accused Nichia produces has the claimed “base” in the form
of a “three-piece copper metal base” on the bottom of the LED package. See CIB at 10. In
particular, LSG’s expert Dr. Kuball “noted that the heat spreading effect of the metal base in the
Nichia 219B series, as well as its effect in lending strength to the ceramic layer by reducing
cracking during soldering, are both closely matched with the ’053 Patent’s teachings regarding the
‘metal base.’” Id. at 12. Dr. Kuball used the following demonstrative exhibit—an x-ray side view
of the NCSE219B-V1 product—to highlight the alleged “base” in brown:
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CDX-0005C.25.
These brown-highlighted structures comprise a layer of copper approximately 30 microns
thick, less than the thickness of a human hair. See Tr. (Kuball) 186:11–17; Tr. (Jokerst)
1181:12–14; CX-4179C (Tanaka Dep.) at 111:12–112:14; RX-0388C.0004 (delivery specification
for accused product, per stipulation (JX-0432C); RX-0386C.0004 (same); RX-0389C.0004
(same); RX-0391C.0034 (same).
Based on the record evidence, I find that the three structures identified by LSG in the
accused product are not a “base” as that term is used in the context of the ’053 patent. A
comparison of CDX-0005C.25 and Figure 5 of the ’053 patent demonstrates that these structures
correspond to the anode/cathode and thermal connection pads taught in the ’053 patent:
’053 patent at Figure 5 (annotated).
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In my claim construction order, I stated that a person of ordinary skill in the art would not
understand the Figure 5 elements 15A, 15B, and 16 (highlighted in red above) to constitute the
claimed “base.” See CC Order at 24. That conclusion was informed by the teachings of the
drawings and written description, which teach element 51 is a “metal base” and elements 15A,
15B, and 16 are connection pads distinct from the “base.” ’053 patent at 4:1–19, Fig. 5.
Figure 5 of the ’053 patent does not provide a direct analogy to the accused Nichia
NCSE219B-V1 product, however. The accused product differs from the LED configuration
shown in Figure 5 in that there is no structure corresponding to metal base 51 in the accused
product. The closest analog to metal base 51 in the accused product is a ceramic substrate or
support board. See Tr. (Kuball) 478:19–479:4; Tr. (Schubert) 935:21–936:4, 940:3–941:9;
RX-0386C.0003 (delivery specification for accused product, per stipulation at JX-0432C);
RX-0388C.0004 (same); RX-0389C.0004 (same); RX-0391C.0034 (same); CX-4178C (Miki
Dep.) at 96:1–10; CX-4181C (Amo Dep.) at 122:15–123:14. Neither is made of metal. LSG is
therefore left with the argument that the metal pads located below the ceramic substrate comprise
the claimed “metal base.”
The metal pads identified by LSG are not the claimed “metal base” because the evidence
shows that these copper structures are too thin and malleable to provide a supportive substrate to
the LED package; it is the aforementioned ceramic structure that provides a supportive substrate
to the LED package. See Tr. (Kuball) 477:15–479:4; Tr. (Schubert) 935:21–936:4, 939:11–21,
940:3–941:9; RX-386C.0003; RX-0388C.0004; RX-0389C.0004; RX-0391C.0034; CX-4181C
(Amo Dep.) at 122:15–123:14; RX-0132C (Blonder Dep.) at 119:12–120:9. Nichia’s expert
Dr. Schubert testified that, if a force were applied to a Nichia package and, “if that force is so
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strong that it would crack the . . . ceramic base, then the metal could not prevent that . . . . Metal is
a soft, malleable material.” Tr. (Schubert) 939:11–21.
LSG’s argument that the “heat spreading effect” of copper demonstrates the metal pads are
the claimed “base” is irrelevant because the claim language does recite any heat-spreading
requirement for the “base.” See CIB at 12. Additionally, LSG’s argument that the copper pads
protect the ceramic from cracking is premised on a misreading of deposition testimony given by
Nichia witness Mr. Amo. See id. At his deposition, Mr. Amo testified that the copper in the metal
pads protects against “soldering crack,” and not necessarily cracking of the ceramic package
component. See CX-4181C (Amo Dep.) at 131:6–20 (testifying that copper “has an effect to
suppress that soldering crack”); Tr. (Schubert) 938:10–939:21.
I therefore find that LSG has not shown that the accused Nichia NCSE219B-V1 product
has a “metal base” as required by claim 1 of the ’053 patent.
c) “the metal base including an underlying thermal connection pad
and a pair of underlying electrical connection pads;”
On the underside of the copper pads on the accused Nichia product (from the perspective
of the x-ray image), “there is a layer of nickel plating, and around that area of nickel plating there’s
the external surface which is plated with gold.” CX-4180C (Amo Dep.) at 18:2–9. LSG argues
that the “nickel and gold plating below the copper constitutes the underlying thermal and electrical
connection pads” recited in claim 1. CIB at 19. Dr. Kuball used the demonstrative below to
illustrate this argument:
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CDX-0005C.37.
Respondents do not dispute the three metal structures have “an underlying thermal
connection pad and a pair of underlying electrical connection pads” as recited in claim 1. See RRB
at 13–20.
Although I decline to find that these metal structures are the “base” recited in claim 1, I
nevertheless conclude that the accused Nichia devices have “an underlying thermal connection pad
and a pair of underlying electrical connection pads.”
d) “a layer of ceramic overlying the metal base; and”
The evidence shows that the accused Nichia product has a layer of alumina ceramic
overlying the three copper structures that LSG argues is the claimed “base.” See Tr. (Kuball)
202:18–20. The following demonstrative exhibit provided by LSG’s expert Dr. Kuball identifies
the ceramic layer in pink:
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CDX-0005C.42.
Although I do not find that the accused Nichia product has a “base” as that term is used in
claim 1, I do find the evidence shows “a layer of ceramic overlying . . .” the structure LSG calls
the base.
e) “an LED mounted on the ceramic layer, ”
The undisputed evidence shows that the accused Nichia product comprises an LED
mounted on the ceramic layer. See Tr. (Kuball) 203:4–17. The following demonstrative exhibit
provided by LSG’s expert Dr. Kuball identifies the LED in purple:
CDX-0005C.47.
f) “wherein the LED includes a pair of electrodes electrically
connected to respective underlying electrical connection pads, ”
The record evidence shows that the LED in the accused Nichia product includes “a pair of
electrodes electrically connected to respective underlying electrical connection pads.” Tr. (Kuball)
203:18–204:11. This connection is illustrated in green in Dr. Kuball’s demonstrative exhibit
reproduced below:
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CDX-0005C.49.
g) “and wherein the LED is thermally coupled to the metal base by
one or more thermal vias, ”
The parties disagree as to whether the LED in the accused Nichia product is thermally
coupled9 to the metal pads at the bottom of the package10 by one or more thermal vias.11 See CIB
at 21–33; RRB at 24–32. As discussed more fully below, I find that the accused Nichia product
does not satisfy this claim limitation because the accused vias are not “thermal vias” and because
the accused vias do not thermally couple the LED to the metal pads.
LSG’s expert Dr. Kuball provided an opinion stating that the accused Nichia 219B series
products have two architectures for the accused thermal vias. Tr. (Kuball) 207:15–208:2.
According to Dr. Kuball, the majority of accused 219B series models have two thermal vias, a top
thermal via and a bottom thermal via. Tr. (Kuball) 208:10–210:8. Dr. Kuball illustrated his
testimony with demonstrative exhibits of a cross-section x-ray view, an overhead x-ray view, and
9 The parties agree that “thermally coupled” means “coupled by way of heat transfer.” See Tr.
(Kuball) 204:19–24.
10 LSG’s argument regarding this phrase assumes that the microscopically thin copper pads on the
bottom of the accused Nichia packages correspond to the claimed metal “base.” I have rejected
that position above. In this section I consider whether a thermal via couples the LED to the copper
pads in the accused devices.
11 The parties agree that the term “thermal vias” means “vias that enhance heat flow.” See CC
Order at 25. The parties further agree that the word “via” is an acronym for “vertical interconnect
access.” See id. at 25 n.8.
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overhead schematic views of accused Nichia products. He marked the elements he concluded
were thermal vias in red:
SPAT PN REE
¢ Ai Setng en Pinu yaaicias
NCSE2198B-V1 (CX-0589)
CDX-0005C.54.
CDX-0005C.56.
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39
CDX-0005C.57.
Dr. Kuball also testified that a minority of accused 219B series models have only one
thermal via in the bottom ceramic layer. Tr. (Kuball) 207:15–21, 208:22–23. He illustrated his
testimony with the following demonstrative exhibit:
CDX-0005C.54.
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LSG argues that, in both types of architectures, “the LED in the 219B series is thermally
coupled through the bottom metallization and out of the pads at the very bottom of the package.”
See CIB at 24 (citing Tr. (Kuball) 206:19–207:2). Note that Dr. Kuball’s annotations do not
highlight a red path from the LED on top of the package to the metal pads on the bottom in any
image. Instead, LSG argues that a thermal via can be achieved between the LED and the metal
pads with “no direct physical connection between them.” See id. at 21. According to LSG, objects
A and C can be thermally coupled without a physical connection if heat transfer occurs from object
A to object C through intervening object B by way of the movement of photons. See id. (citing
Tr. (Kuball) 204:25–205:12). LSG’s theory was echoed in Dr. Kuball’s testimony that “all vias in
general will act as . . . thermal vias to some degree.” See Tr. (Kuball) 540:8–10.
Although this statement of the transitive property of heat may be correct in a theoretical
context, it is not how a person of ordinary skill in the art would understand the claimed invention
in the context of the ’053 patent teachings. The patent claim requires thermal coupling between
the LED and the metal pads “by one or more thermal [vertical interconnect accesses],” not by just
any intervening element. If LSG’s argument were accepted, anything that transferred any heat at
all (and all elements do) would satisfy the limitation. Such an interpretation would read the
required “thermal vias” out the claim and therefore must be rejected. See Merck & Co. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning
to all the terms of the claim is preferred is preferred over one that does not do so.”).
Other elements identified by LSG as the alleged “thermal vias” are shown in the images
below:
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RDX-0005C.0021.
Again, the record does not establish that these vias (highlighted in red) provide heat transfer
between the LED and the metal pads; instead the record shows these vias are provided for plating
during the manufacturing process and for testing connection points. See Tr. (Kuball) 207:3–210:8;
Tr. (Schubert) 949:3–951:8 (referring to RDX-0005C.0021); RX-0482 (inverted); RX-0483;
RX-0629 (inverted); RX-0630; RX-0529 (inverted); RX-0531; see also JX-0432C. For instance,
Nichia research scientist Mr. Tanaka testified at deposition that the accused vias are not for heat
dissipation, but rather are used for plating. CX-4179C (Tanaka Dep.) at 13:7–14, 127:10–130:21.
Even LSG’s expert Dr. Kuball testified that Nichia “likely [] would have used [the alleged via] for
testing in some form.” Tr. (Kuball) 536:10–14.
LSG argues that the intended purpose of the accused vias is legally and factually irrelevant.
CIB at 31 (citing Marrin v. Griffin, 599 F.3d 1290, 1294 (Fed. Cir. 2010) (“For apparatus
claims, . . . generally patentability ‘depends on the claimed structure, not on the use or purpose of
that structure.’”) (citation omitted)). But the question here is whether a person of ordinary skill
would understand the claimed “thermal via” to encompass any arbitrarily designated elements that
theoretically could transfer even minuscule amounts of heat. The patent’s teachings answer that
question. The ’053 patent teaches thermal vias actively “enhance[]” heat flow. ’053 patent at
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Abstract, 1:51–53. The patent also teaches that thermal vias are “numbered and dimensioned to
conduct heat.” Id. at 4:26–28. In this case, it is “entirely proper to consider the functions of an
invention in seeking to determine the meaning of particular claim language.” See Medrad, Inc. v.
MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005).
Other teachings in the ’053 patent confirm that any arbitrary element that conducts heat is
not a “thermal via.” The ’053 patent distinguishes between “electrically conductive vias” and
“thermal vias.” Compare ’053 patent at 2:54–57 and 6:35–37 with id. at 4:26–28. Even if thermal
vias can fulfill an electrical role, they still must be positioned and dimensioned in sufficient
numbers to fulfill their thermal role. See Tr. (Schubert) 951:23–955:3; see ’053 patent at Fig. 6
and 4:20-28.
The record evidence demonstrates that the vias identified by LSG would not provide
thermal enhancement to the LED package. Tr. (Schubert) 949:3–951:22; CX-4180C (Amo Dep.)
at 25:14–27:17, 78:7–79:8. Specifically, Nichia’s expert Dr. Schubert testified that a person of
ordinary skill would understand these vias do not provide significant thermal improvement
because of their narrow dimension and location near the package edge (as opposed to under the
LED die). See Tr. (Schubert) 949:3–951:22. And Nichia’s witness Mr. Amo testified: “[T]here’s
no via right . . . below the chip. Therefore, there’s no heat dissipation effect provided by [the]
via.” CX-4180C (Amo Dep.) at 10:1–5, 78:7–79:8.
Other evidence demonstrates the vias do not measurably increase heat flow. For example,
Dr. Schubert testified that he used a mathematical model to calculate the theoretical die
temperature improvement due to the single alleged via in the NVSW219BT identified by
Dr. Kuball. Dr. Schubert’s calculation took into consideration the dimension, location,
orientation, and material properties of the LED, alleged vias, heat spreader, and ceramic substrate.
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Tr. (Schubert) 959:2–962:12; see RX-0378C; RX-0391C; RX-0388C; RX-0389C. Dr. Schubert
concluded that the alleged “thermal” via would have resulted in a change of LED chip temperature
of only 0.02° C. Tr. (Schubert) 958:13–18.
Dr. Schubert performed a similar calculation for the accused products with two offset vias,
such as those Dr. Kuball identified in the Nichia NCSE219B-V1. Dr. Schubert concluded that the
temperature change would be only 0.04° C. Tr. (Schubert) at 959:19–959:11.
The minuscule temperature changes calculated by Dr. Schubert using a theoretical model
are practically immeasurable in the real world, even using “gold standard” measurement
techniques. See Tr. (Schubert) 959:12–20. Instrument calibration is limited to 1° C and results
due to manufacturing variations among samples would not be distinguishable from a thermal
variance as small as the ones Dr. Schubert calculated. See Tr. (Schubert) 958:13–961:8.
According to Dr. Schubert, “for practical purposes, this change in temperature is zero.” See Tr.
(Schubert) 961:9–23.
Furthermore, the evidence shows that the elements identified by LSG are not positioned in
such a way as to “thermally couple[]” the LED to the metal base along a vertical path. The term
“via” as used in the art is an acronym for “vertical interconnect access,” as all parties have agreed.
See CC Order at 25 n.8 (emphasis added). Therefore, in order to be the claimed “thermal via,” the
accused structure must vertically connect the LED to the metal base.
One of LSG’s demonstrative exhibits shows two views of three different LED packages.
The alleged thermal vias are marked in red in both views:
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RDX-0005C.0021 (images from RX-0482 (inverted); RX-483; RX-0629 (inverted); RX-0630;
RX-0529 (inverted); RX-0531); see also JX-0432C.
The top image for each package is a side view, showing a hemispherical enclosure and a
flat LED beneath the center of the dome. The bottom image is a top view, in which the LED is in
the center of the circle. As can be seen, none of the alleged thermal vias are positioned proximate
to the LED; they are at best on the periphery of the circular LED enclosure. See Tr. (Schubert)
949:3–951:11, 967:4–969:22. Thus, the alleged vias are not positioned to provide a vertical
thermal coupling from the LED to the metal pads.
The weight of the record evidence shows that the elements LSG calls thermal vias do not
provide a measurable change in die temperature. See Tr. (Schubert) 948:1–22, 951:23–955:3,
959:12–961:23. They are not positioned to provide a vertical thermal coupling between the LED
and the metal pads. For all of the reasons discussed above, I find that the accused structure is not
the claimed “thermal via.”
h) “and thermally coupled through the metal base to the thermal
connection pad.”
The evidence indicates that the LED in the accused Nichia product is “thermally coupled”
through the underlying copper pads to the thermal connection pad. See Tr. (Kuball) 216:10–217:1.
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3. Claim 2
Dependent claim 2 of the ’053 patent reads:
2. The packaged LED of claim 1 wherein the underlying electrical
connection pads and the underlying thermal connection pad are coplanar to
permit surface mounting on corresponding pads of a PC board.
As illustrated below, LSG has adduced evidence showing that the underlying connection
pads and the underlying thermal connection pad in the accused Nichia product are coplanar. See
Tr. (Kuball) 226:2–228:4.
CDX-0005C.37.
Respondents do not dispute that this claim limitation is satisfied. See RRB at 1–43.
I therefore find LSG has demonstrated that the additional limitation recited in claim 2 has
been satisfied. Nevertheless, because there is no infringement of claim 1 from which claim 2
depends, there is no infringement of claim 2.
4. Claim 3
As discussed above in Section I.A, LSG asserted claim 3 of the ’053 patent in its Amended
Complaint, and that claim remains at issue in this investigation. LSG did not argue infringement
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of claim 3 in its post-hearing brief. See CIB at 4–39. Any allegation of infringement of claim 3
of the ’053 patent is therefore deemed abandoned or withdrawn pursuant to my Ground Rule 14.1.
Order No. 2 at 26 (June 25, 2019) (“Any contentions for which a party has the burden of proof that
are not set forth in detail in the post-hearing initial brief shall be deemed abandoned or
withdrawn.”).
5. Claim 5
Dependent claim 5 of the ’053 patent reads:
5. The packaged LED of claim 1 wherein at least one electrode of the LED
is connected to one of the underlying electrical connection pads by an
electrical path including the metal base.
As illustrated below, LSG has shown that at least one electrode of the LED is connected to
one of the underlying electrical connection pads by an electrical path that includes the copper
structure LSG contends is the “base” recited in claim 1. See Tr. (Kuball) 228:5–18.
CDX-0005C.85.
Respondents do not dispute that this limitation is satisfied. See RRB at 1–43.
I therefore find LSG has demonstrated that the additional limitation recited in claim 5 has
been satisfied. Nevertheless, because there is no infringement of claim 1 from which claim 5
depends, there is no infringement of claim 5.
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6. Claims 6 and 21
As discussed above in Section I.A, LSG asserted claims 6 and 21 of the ’053 patent in its
Amended Complaint, and those claims remain at issue in this investigation. LSG did not argue
infringement of claims 6 and 21 in its post-hearing brief. See CIB at 4–39. Any allegations of
infringement of claims 6 and 21 of the ’053 patent are therefore deemed abandoned or withdrawn
pursuant to my Ground Rule 14.1. Order No. 2 at 26 (June 25, 2019) (“Any contentions for which
a party has the burden of proof that are not set forth in detail in the post-hearing initial brief shall
be deemed abandoned or withdrawn.”).
B. Technical Prong of the Domestic Industry Requirement
1. The ’053 Domestic Industry Product
LSG argues that the Series A+ PAR30 LED Gimbal Lamp, which includes a custom
Luminus SST-20-W40H-J4401-LS (“SST-20”) LED package, practices claims 1, 2, and 5 of the
’053 patent. CIB at 42 (citing Tr. (Maxik) 659:15–660:17); see also CIB at 42–59. For the reasons
discussed below, I find that LSG has not shown that the SST-20 practices the invention of any
claim of the ’053 patent.
A diagram of the Series A+ domestic industry product is shown below, with nine custom
Luminus SST-20 packages:
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Custom
Luminus SST-
_ 20 package
, mounted in A+
JX-0224C.
2. Claim 1
As set forth below, the evidence demonstrates that the SST-20 does not practice claim | of
the °053 patent.
a) “A packaged LED for high temperature operation comprising: ”
For reasons discussed in the infringement section above, the preamble limitation “for high
temperature operation” is not limiting. The SST-20 is “a packaged LED.” CX-0964.
b) “a metal base, ”
LSG argues that the “metal base” in in the SST-20 is a “three-piece copper metal base
which has plated and underlying thermal connection pad and electrical connection pads.” CIB at
43-44 (citing Tr. (Kuball) 242:21—243:4). LSG’s expert Dr. Kuball testified that these copper
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49
structures in the SST-20 are at least as thick as the copper structures identified as the “base” in the
accused Nichia 219B series of products. Tr. (Kuball) 243:5–21. An annotated side-view x-ray
image of the SST-20 is shown below, with the alleged “base” colored in brown:
CDX-0005C.110.
For reasons similar to those discussed in the infringement section above, I find that the
SST-20’s pads are not a “metal base.” The substrate of the SST-20 is made of ceramic; the thin,
separate copper pads identified by LSG are plated onto the ceramic substrate and do not provide a
supportive structure for the LED package. See Tr. (Schubert) 972:4–974:23, 240:12–21,
247:9–12; JX-0043C at 5 (claim chart for “Series A+™ PAR30 LED Gimbal Lamp” containing
“custom Luminus LED package”); CX-0964; JX-0119 at LSGITC_0749041 (“Luminus
SST-20-W Product Datasheet”).
c) “the metal base including an underlying thermal connection pad
and a pair of underlying electrical connection pads; ”
Similar to the infringement arguments put forth for the accused Nichia products, LSG
argues that the copper pads of the SST-20 have an underlying thermal connection pad and a pair
of underlying electrical connection pads. See CIB at 46. The bottom surfaces of the copper pads
are silver-plated, and LSG’s expert Dr. Kuball testified that the bottom surfaces constitute the
claimed underlying thermal and electrical connection pads. JX-0119 at 14; Tr. (Kuball)
242:15–243:2.
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Dr. Kuball used the demonstrative below to illustrate this argument:
CDX-0005C.109 (annotating CX-0964 with the alleged electrical connection pads in green and
alleged thermal connection pad in yellow).
Respondents do not dispute the three copper structures have “an underlying thermal
connection pad and a pair of underlying electrical connection pads” as recited in claim 1. See RRB
at 13–20.
I conclude that the SST-20 devices include “an underlying thermal connection pad and a
pair of underlying electrical connection pads.” The entire limitation is not satisfied, however,
because the underlying connection pads are not part of a metal base, as claim 1 requires.
d) “a layer of ceramic overlying the metal base; and ”
The evidence shows that the SST-20 has a layer of ceramic overlying the three copper
structures identified by LSG as the claimed “base.” See Tr. (Kuball) 227:5–12. The following
demonstrative exhibit provided by LSG’s expert Dr. Kuball identifies the ceramic layer in pink:
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CDX-0005C.113.
I conclude that that the SST-20 devices include “a layer of ceramic overlying” three copper
connection pads. The entire limitation is not satisfied, however, because the ceramic layer does
not overlie a metal base, as claim 1 requires. As noted above, the SST-20 devices have no metal
base.
e) “an LED mounted on the ceramic layer, ”
The undisputed evidence shows that the SST-20 comprises an LED mounted on the
ceramic layer. Tr. (Kuball) 247:13–19. The following demonstrative exhibit provided by LSG’s
expert Dr. Kuball identifies the LED in purple:
CDX-0005C.115.
f) “wherein the LED includes a pair of electrodes electrically
connected to respective underlying electrical connection pads, ”
The record evidence shows that the LED in the SST-20 includes “a pair of electrodes
electrically connected to respective underlying electrical connection pads.” Tr. (Kuball)
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247:24–248:5. This connection is illustrated in green in Dr. Kuball’s demonstrative exhibit
reproduced below:
CDX-0005C.117.
g) “and wherein the LED is thermally coupled to the metal base by
one or more thermal vias, ”
LSG argues that its SST-20 satisfies this claim limitation. CIB at 48–58. LSG’s corporate
witness Fredric Maxik testified that LSG specifically ordered the manufacture of a custom version
of the SST-20 package that includes a “thermal via.” Tr. (Maxik) 657:12–660:17. LSG argues
that the “thermal via” in the custom SST-20 package extends from directly below the LED die into
the top portion of the ceramic layer. CIB at 48. An annotated cross-section image of the custom
SST-20 package is shown below, with the alleged thermal via circled in red:
CX-0964 (Luminus SST-20 Images).
For reasons similar to those discussed in the infringement section, I find that the SST-20
does not have a “thermal via.”
As an initial matter, LSG’s alleged “thermal via” is not a via as that term is understood in
the art. The parties have agreed that “via” is an acronym for “vertical interconnect access.” See
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CC Order at 25 n.8. The alleged thermal via can be seen in the following figure from LSG’s claim
charts:
JX-0043C at LSGITC_1431495.
It is interesting to note that, of the many sample SST-20s reviewed by expert witnesses
Drs. Kuball and Schubert, only one sample contains the alleged thermal via structure. See Tr.
(Schubert) 976:4–977:8, 977:23–978:18; JX-0043C (LSG’s claim chart incorporating images from
CX-0964); RX-0086C (Respondents’ images of SST-20); RX-0080C (Declaration accompanying
Respondents’ images). Respondents speculate that the alleged via is in actually a “singular
manufacturing defect” because of its shape, the presence of a void therein, and its presence in only
one of the sample SST-20s. See RRB at 36–38. Indeed, many of LSG’s own x-ray images of the
SST-20 fail to show the alleged via. See CX-0964 at LSGITC_1434588 (showing Complainants’
images of DI product), LSGITC_1434590, LSGITC_1434589. The weight of the evidence thus
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indicates the alleged thermal via that LSG relied upon at the hearing is a singular manufacturing
defect, and I so find.
Defect or not, the alleged thermal via12 is not a via at all because it does not interconnect
elements through an intervening layer; it only extends one third of the way down into the ceramic
substrate and does not connect the LED die to anything else. See Tr. (Kuball) 500:24–503:1.
Named inventor Dr. Blonder also testified that a structure like the one present in the SST-20
would not be a “via” to a person of skill in the art:
Q. Would you agree that for something to be considered a via, it has to
interconnect two faces of a layer?
* * *
A. A via connects -- I don’t know, faces of a layer might be restrictive. A
via connects two things together, usually through an intermediate -- an
intermediate area, connects two things through an intermediate area. They
might be faces, they might not be faces.
* * *
A. Typically in a semiconductor context, a via would be connecting two
layers together and where it emerges into the upper and lower layer, it would
be, in general, planar.
Q. So if you had a layer of ceramic with a divot or indentation in the top
surface of the layer ceramic and the divot or indentation didn’t reach the
bottom surface of that layer of ceramic, would you consider that divot or
indentation to be a via?
* * *
A. It would be helpful if you could show me a drawing because I’m not sure
I understand what you’re describing. So if you could sketch that or show
me an example of what you’re discussing, I could help.
Q. Sure.
MR. LUCAS: You can mark this as Exhibit 9.
12 Respondents refer to the alleged via as a “divot.” See, e.g., RRB at 33.
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(Exhibit 9, Hand-drawn diagram, marked for identification.)
MR. LUCAS: My poor drawing.
Q. So if A is a layer of ceramic, and B would be that divot or indentation
that I was trying to describe in my hypothetical –
A. Right.
Q. -- is that a via, is B a via?
A. Is B a via? B would not be considered a via.
RX-0132C (Blonder Dep.) at 29:19–31:15 (objections omitted); RX-1256 (Blonder Dep. Ex. 9).
And not only is the accused structure not a via, it would not be a “thermal” via because the
structure does not enhance thermal conductivity. Specifically, a person of ordinary skill would
understand there would not be a thermal enhancement from the alleged via owing to the structure’s
location, diameter, and singular number. See Tr. (Kuball) 496:12–15; Tr. (Schubert) 974:24–
976:3, 978:25–979:6, 980:6–11; JX-0043C; RX-0080C; RX-0086C.
Furthermore, the evidence shows that the LED is not “thermally coupled to the metal base
by” the alleged thermal via. Although the accused structure is located below the LED, it does not
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abut the thermal connection pad. See Tr. (Schubert) 979:22–980:5. If this were a thermal coupling,
everything in the LED package is a thermal coupling, rendering the term meaningless.
For all of the reasons discussed above, I find that LSG has not demonstrated that the
SST-20 domestic industry products have the claimed “thermal via.”
h) “and thermally coupled through the metal base to the thermal
connection pad.”
The evidence indicates that the LED in the SST-20 is “thermally coupled” through the
underlying copper pads to the thermal connection pad. See Tr. (Kuball) 256:15–25.
3. Claim 2
As illustrated below, LSG has adduced evidence showing that the underlying connection
pads and the underlying thermal connection pad in the SST-20 are coplanar. See Tr. (Kuball)
257:1–11.
CDX-0005C.109
Respondents do not dispute that this claim limitation is satisfied. See RRB at 1–43.
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I therefore find LSG has demonstrated that the additional limitation recited in claim 2 has
been satisfied. Nevertheless, because the SST-20 does not practice claim 1, from which claim 2
depends, it also does not practice claim 2.
4. Claim 5
As illustrated below, LSG has shown that at least one electrode of the LED is connected to
one of the underlying electrical connection pads by an electrical path that includes the copper
structure LSG contends is the “base” recited in claim 1. See Tr. (Kuball) 257:24–258:9.
CDX-0005C.138.
Respondents do not dispute that this limitation is satisfied. See RRB at 1–43.
I therefore find LSG has demonstrated that the additional limitation recited in claim 5 has
been satisfied. Nevertheless, because the SST-20 does not practice claim 1, from which claim 5
depends, it also does not practice claim 5.
C. Validity
1. Obviousness: Harrah in view of Griffin
Respondents argue that claims 1, 2, and 5 of the ’053 patent are rendered invalid as obvious
in view of the prior art references Harrah and Griffin.13 RIB at 1–23. As discussed below, I find
13 U.S. Patent No. 6,498,355 to Harrah et al. (“Harrah”) (RX-0010) was filed October 9, 2001, and
issued December 24, 2002, and is prior art under 35 U.S.C. §§ 102(a), (e). International Patent
Application No. PCT/US00/12720 filed by Robert T. Griffin (“Griffin”) (RX-0016) was published
November 16, 2000, and is prior art under § 102(b).
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that Respondents have not met their burden to show, by clear and convincing evidence, that the
’053 patent claims are obvious in view of the prior art.
The preamble of claim 1 recites: “A packaged LED for high temperature operation
comprising . . . .” As discussed above, I have determined that the preamble limitation “for high
temperature operation” is not limiting. I therefore turn to whether the structure recited in claim 1
is disclosed in Harrah.
With respect to the “metal base” limitation of claim 1, Respondents argue:
[The metal pads accused by LSG] do not constitute a “metal base” because,
inter alia, they are too thin, are not a substrate or support board, are plated
onto the actual substrate (a ceramic substrate), and are explicitly excluded
by the ALJ’s claim construction. If such pads were found to constitute a
metal base, however, then Harrah, disclosing the same structures, discloses
the limitation, “a metal base, the metal base including an underlying thermal
connection pad and a pair of underlying electrical connection pads.”
With regard to this limitation, Dr. Lebby testified that, if the ALJ adopts
Dr. Kuball’s opinion and infringement theory as to the “metal base”
limitation, the limitation is met by Harrah’s contact pads 42, 44 and 46. The
structures to which Dr. Lebby referred, Bottom N-Contact 42, Bottom
P-Contact 44, and Thermal Contact 46, are shown in Harrah’s Figure 4
(above). Dr. Lebby further explained that Bottom N-Contact 42, Bottom
P-Contact 44, and Thermal Contact 46 are shown in a bottom side view of
LED assembly 58 in Harrah’s Figure 5 (below), and labeled N-Contact 60,
P-Contact 62, and Thermal Contact 64, respectively.
RIB at 4 (emphasis original).
As discussed previously in my infringement analysis, I rejected a factual finding that a
microscopically thin layer of metal electroplated onto a copper core constitutes a metal base. I
similarly find that the microscopically thin pads identified by Respondents in Harrah are not a
“metal base.”
Respondents present no argument or evidence that Griffin discloses a “packaged LED for
high temperature operation” or a “metal base.” See RIB at 2–3.
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Because Respondents have not shown every element of the claimed invention in the prior
art, I find that Respondents have failed to show, clearly and convincingly, that claim 1 of the ’053
patent is invalid as obvious based on Harrah in view of Griffin. See Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006) (stating that motivation to combine and reasonable
expectation of success is considered in an obviousness analysis only “if all the elements of an
invention are found in a combination of prior art references”); see also Proctor & Gamble Co. v.
Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (“A party seeking to invalidate a patent
based on obviousness must demonstrate “by clear and convincing evidence that a skilled artisan
would have been motivated to combine the teaching of the prior art references to achieve the
claimed invention . . . .”).
Claims 2 and 5 also require a “packaged LED for high temperature operation” or a “metal
base” by virtue of their dependency from claim 1. For the same reasons noted with respect to
claim 1, I find that Respondents have failed to show, clearly and convincingly, that claims 2 and
5 of the ’053 patent are invalid as obvious based on Harrah in view of Griffin. See Medichem, 437
F.3d at 1164; Proctor & Gamble, 566 F.3d at 994.
V. THE ’421 PATENT
A. Infringement
1. The Accused Products
As detailed below, LSG accuses two categories of products of infringing the ’421 patent:
(1) LED packages made by manufacturers Nichia, OSRAM, Cree, and Lumileds,14 and
14 LSG collectively refers to Nichia, OSRAM, Cree, and Lumileds as the “LED Manufacturers.”
See, e.g., CIB at 61.
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(2) luminaires which incorporate those LED packages or LED packages from manufacturers who
have not been named as respondents in this investigation.
a) The LED Manufacturers
LSG contends that the sale and importation of products from Nichia, OSRAM, Cree, and
Lumileds infringe claims 1 and 6 of the ’421 patent. CIB at 61–62, 120–54. LSG and its expert
Dr. Kuball focus their infringement analysis on the following products, which they assert are
representative of other products from the LED Manufacturers:
• Nichia NE2G757GT
• OSRAM OSLON Black Flat
• Cree JK2835AWT
• Lumileds LUXEON 3535L
See CIB at 61–62. LSG refers to these products collectively as the “LED Manufacturer
Representative ’421 Products.” See id. at 61-62.
Optical images of the top, side, and bottom of each of these products are reproduced
below:
CDX-0005C.143.
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X-ray cross-section views of each product are reproduced below:
CDX-0005C.144.
Additional accused products from Nichia, OSRAM, Cree, and Lumileds are discussed in
more detail in the sections below.
(1) Nichia
LSG focuses its infringement analysis on the Nichia NE2G757GT product, which it argues
is representative of the other accused Nichia products. See CIB at 61–62. The illustration below
is an excerpt from a demonstrative exhibit showing an exploded view of NE2G757GT, including
a detail of the metal layers in the lead on which the LED die is mounted.
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RDX-0005C.0036 (excerpt from animation, also shown on RDX-0005C.0043, 0050, 0063)
(showing, on left, exploded view of NE2G757GT, and on lower right, a magnified view of the
metallization layers of a portion of the lead marked with a red box in the exploded view on the
left); see also Tr. (Schubert) 979:6–980:5.
The illustration below shows the assembled NE2G757GT product from the top (left image)
and from a bottom perspective (right image):
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Td.
As for the other Nichia accused products, LSG’s expert Dr. Kuball testified that the Nichia
NE2G757GT is representative of all Nichia 757 series, 157 series, and 146 series products,
including those enumerated in the following table:
Nichia Accused Products Represented by Nichia NE2G757GT
(“Nichia Represented ’421 Products”)
Products Images
NE2B757G CX-0599
NE2G757G CX-0600
NE2G757GT CX-0601, CX-0831
NE2R757G-P6 CX-0602
NF2E757GR CX-0613
NF2E757GRT CX-0614, CX-0828
NF2L757G-F1 CX-0615
NF2L757GR-V1 CX-0616
NF2L757GR-V1U4 CX-0617
NF2W757G-F1 CX-0618
NF2W757GR-V1 CX-0619
NF2W757GR-V1U4 CX-0620
NF2W757GR-V3 CX-0621
NF2W757G-V3F1 CX-0622
NFSL757G CX-0623
NFSL757G-P5 CX-0624
NFSL757GT CX-0625, CX-0827
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Nichia Accused Products Represented by Nichia NE2G757GT
(“Nichia Represented ’421 Products”)
Products Images
NFSW757G CX-0628
NFSW757G-P5 CX-0629
NFSW757GT CX-0630
NFSW757G-V3 CX-0631
NFSW757H CX-0632
NFSY757G CX-0633
NT2L757DRT CX-0661
NF2L757GT CX-0825
NT2L757DRT CX-0826
NT2W757DRT CX-0830
NFSW757G CX-0832
NESB157A CX-0609, CX-0868
NFSW157J CX-0626
NFSW157J-HG CX-0627
NJSW157J CX-0651
NJSW157J-HG CX-0652
NESA146A CX-0603
NESB146A CX-0604
NESB146A-N8 CX-0606
NESB146A-NA CX-0607
NESB146A-ND CX-0608
NESG146A CX-0610
NESR146A CX-0611
NESW146A CX-0612
NHSAI146A CX-0634
NHSB146A CX-0635
NHSB146AH CX-0636
NHSB146AH-N3 CX-0637
NHSB146AH-NA CX-0638
NHSB146A-N3 CX-0639
NHSB146A-NA CX-0640
NHSB146A-ND CX-0641
NHSG146A CX-0642
NHSR146A CX-0643
NHSW146A CX-0644
NHSW146AH CX-0645
NHSW146AH-PA CX-0646
NHSW146A-Y1 CX-0647
NSSAI46A CX-0653
NSSB146A CX-0654
NSSB146A-N3 CX-0655
PUBLIC VERSION
Nichia Accused Products Represented by Nichia NE2G757GT
(“Nichia Represented ’421 Products”)
Products Images
NSSB146A-NA CX-0656
NSSC146A CX-0657
NSSG146A CX-0658
NSSR146A CX-0659
NSSW146A CX-0660
Tr. (Kuball) 382:12—383:2 (testifying as to Nichia 757 series products that “they all infringe”),
383:14—-385:6; see CIB at 121-24.
Based on the product images listed in the above table, Dr. Kuball testified that, “[for]
infringement purposes, they are identical.” Tr. (Kuball) 383:3—13 (discussing images gathered on
CDX-0005C.254). No evidence contradicted this assertion. I therefore find that the Nichia
NE2G757GT product is representative of the Nichia 757 series, 157 series, and 146 series products
listed in the table above for purposes of the infringement analysis of claims 1 and 6 of the ’421
patent.
(2) OSRAM
LSG focuses its infringement analysis on the OSRAM Black Flat LA H9PP (“Black Flat’’)
product, which it argues is representative of the other accused OSRAM products. See CIB at
61-62. The illustration below is an excerpt from a demonstrative exhibit showing top perspective
and exploded views of the Black Flat:
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OSRAM OSLON Black Flat LA H9PP (“Black Flat’)
Epoxy Mold
Lead Frame Copper
LED Die
Glue
TiO; Reflector = =
Silicone Cast
© 2020 DOAR RDX-0006C.0003
RDX-0006C.0003; see also Tr. (Bright) 1085:7—1086:11.
As for the other OSRAM accused products, LSG’s expert Dr. Kuball testified that the
Black Flat is representative of other OSRAM products, including those enumerated in the
following table:
OSRAM Accused Products Represented by OSRAM OSLON Black Flat
(“OSRAM Represented ’421 Products”)
Product Images
OSCONIQ P 3737 (2W version) CX-0301, CX-0703
OSLON Black CX-0302, CX-0308, CX-0708 to
OSLON Black Flat CX-0303, CX-0710
DURIS E 2835 CX-0681, CX-0682
DURIS E 3 CX-0683, CX-0684, CX-0834
DURIS E 5 CX-0685, CX-0686
DURIS S 10 CX-0687
DURIS S 5 CX-0688 to CX-0691
DURIS S 8 CX-0692
FIREFLY E1608 CX-0693
FIREFLY EE218 CX-0694 to CX-0696
OSCONIQ P 2226 CX-0697 to CX-0700
OSCONIQ P 3030 CX-0701 to CX-0702
OSCONIQ P 3737 (3W version) CX-0704
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OSRAM Accused Products Represented by OSRAM OSLON Black Flat
(“OSRAM Represented 421 Products”)
Product Images
OSCONIQ P 7070 CX-0705
OSCONIQ S 3030 CX-0706 to CX-0707
OSLON Black Flat S CX-0711 to CX-0712
OSTAR Projection Cube CX-0741 to CX-0742
SYNIOS E2314 CX-0743 to CX-0744
SYNIOS E4014 CX-0745 to CX-0746, CX-0837
SYNIOS P2720 CX-0747
Tr. (Kuball) 387:5—19 (discussing images gathered at CDX-0005C.264); see CIB at 131.
Based on the product images listed in the above table, Dr. Kuball testified that, “[for]
infringement purposes, they are identical.” See Tr. (Kuball) 387:20—-388:3. No evidence
contradicted this assertion. I therefore find that the OSRAM Black Flat product is representative
of the OSRAM products listed in the table above for purposes of the infringement analysis of
claims | and 6 of the ’421 patent.
(3) Cree
With regard to Cree, Dr. Kuball testified that the Cree JK2835AWT is representative of all
Cree J-Series accused products, including those enumerated in the following table:
Cree Accused Products Represented by Cree JK2835AWT
(“Cree Represented ’421 Accused Products”)
Products Images
Cree JB3030AWT CX-0413
Cree JK2835AWT CX-0415
Cree JK3030AWT CX-0416
Cree JQSOSOAWT CX-0417
Cree JRSOSOAWT CX-0418
Tr. (Kuball) 386:1—23 (discussing images gathered at CDX-0005C.261-262); see CIB at 149.
Based on the product images listed in the above table, Dr. Kuball testified that, “for
infringement purposes discussion, those products look identical.” See Tr. (Kuball) 386:24—387:4.
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No evidence contradicted this assertion. I therefore find that the Cree JK2835AWT product is
representative of the Cree products listed in the table above for purposes of the infringement
analysis of claims 1 and 6 of the 421 patent. Examples of the J-Series products are illustrated in
the below demonstrative exhibit:
Accused Cree Products
Accused Products
JE2Z835AWT/JK2835AWT
JK3030AWT/JB3030AWT
JR5050AWT/JQ5050AWT
| a &
RCD? (Series 203s) ~ Ax-2295 LW Series 3000) Rx-2205 ( Seriees 5050}
@ 2025 DUAR
See RRB at 46.
(4) Lumileds
LSG focuses its infringement analysis on the Lumileds LUXEON 3535L product, which it
argues is representative of the other accused Lumileds products. See CIB at 61-62. The accused
Lumileds products are lead-frame packages in which two metal leads are embedded within a
molded resin body. Tr. (Haque) 1211:6—1214:2; Tr. (Jiao) 1233:20—-1234:25.
Dr. Kuball testified that the Lumileds LUXEON 3535L is representative of all Lumileds
accused products, including those enumerated in the following table:
Lumileds Accused Products Represented by Lumileds LUXEON 3535L
(“Lumileds Represented 421 Products”)
Products Images
LUXEON 2835 CX-0538
LUXEON 2835 Color CX-0539
LUXEON 3014 LUXEON XF-3014 CX-0540
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Lumileds Accused Products Represented by Lumileds LUXEON 3535L
(“Lumileds Represented ’421 Products”)
Products Images
LUXEON 3020, LUXEON XR-3020 CX-0541
LUXEON 3030 2D CX-0542
LUXEON 3535L, LUXEON 3535L CX-0544
LUXEON 3535L Color CX-0545
LUXEON 5050 CX-0546
LUXEON SunPlus 2835 CX-0573
LUXEON SunPlus 35 CX-0574
LUXEON 3535L (MXA8-PW50- CX-0833
LUXEON SunPlus 2835 CX-0836
(L1SP-PNK 1002800000) CX-0622
Tr. (Kuball) 389:2—20; see CIB at 150.
Based on the product images listed in the above table, Dr. Kuball testified that “they look
the same in terms of infringement purposes.” See Tr. (Kuball) 389:21—390:2 (discussing images
gathered at CDX-0005C.268). No evidence contradicted this assertion. I therefore find that the
LUXEON 3535L product is representative of the Lumileds products listed in the table above for
purposes of the infringement analysis of claims 1 and 6 of the 421 patent. The components of the
LUXEON 3535L and LUXEON 5050 products are shown in the demonstratives below:
AE
RX-2008
Lumileds LUXEON 3535L
(_] Encapsulant
LD Gold Wire
GB LED Die
(Leads
[i Molded Resin Body
69
70
RDX-0015; RDX-0018.
b) The Luminaire Respondents
LSG accuses the Luminaire Respondents15 of infringing claims 1 and 6 of the ’421 patent
based on their use of the foregoing Nichia, OSRAM, Cree, and Lumileds products. LSG
additionally contends that the Luminaire Respondents infringe the same claims by importing and
selling luminaires incorporating LED packages supplied by third parties Samsung, Seoul
Semiconductor, BridgeLux, Everlight, APT, TD, and Lextar. See CIB at 154–67. LSG did not
present evidence at the evidentiary hearing showing that the third party LED packages met each
limitation of the asserted claims. Nevertheless, LSG included a generalization in its post-hearing
brief that “each Luminaire Respondent incorporates into its products certain specific LED
packages” that infringe the ’421 patent. See CIB at 154; see also CDX-0005C. With respect to
the accused third party LED packages, LSG argues that “those third-party packages are equivalent
to, and represented by, certain of the LED Manufacturer Representative ’421 Products for purposes
15 The “Luminaire Respondents” refers collectively to Acuity, Current, GE, LEDVANCE,
Leedarson, and Signify. See CIB at xix.
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of infringement.” See CIB at 163 (citing Tr. (Kuball) 416:23–420:12, CDX-0005C.291–296;
CX-4235 (indicating which packages are representative of other packages for purposes of
infringement)); see also Tr. (Kuball) 403:8–404:1; CDX-0005C.276 (discussing
representativeness and infringement for Acuity); Tr. (Kuball) 404:2–13; CDX-0005C.278
(discussing representativeness and infringement for Signify); Tr. (Kuball) 404:14–405:9;
CDX-0005C.280 (discussing representativeness and infringement for LEDVANCE); Tr. (Kuball)
407:20–24, 408:9–21; CDX-0005C.283 (discussing representativeness and infringement for GE);
Tr. (Kuball) 414:4–11; CDX-0005C.288 (discussing representativeness and infringement for
Current); Tr. (Kuball) 416:23–417:7; CDX-0005C.290 (discussing representativeness and
infringement for Leedarson).
2. Claim 1
As set forth below, the evidence shows that none of the LED Manufacturer Representative
’421 Products infringe claim 1 of the ’421 patent.
a) “A LED assembly adapted for surface mounting and high
temperature operation, the LED assembly comprising: ”
With respect to the preamble of claim 1, the parties disagree as to whether the phrase
“for . . . high temperature operation” recited in the preamble to claim 1 is limiting. LSG argues
that the preamble is not limiting; Respondents argue that it limits the invention to LED packages
capable of handling operational and die temperatures of up to 200° C and 250° C, respectively.
See CIB at 63–67; RRB at 48–51. As discussed below, I find that the preamble phrase “for . . .
high temperature operation” does not limit the scope of claim 1 of the ’421 patent.
The preamble phrase “for…high temperature operation” in claim 1 of the ’421 patent is
nearly identical to the preamble phrase “for high temperature operation” analyzed above in
connection with claim 1 of the ’053 patent. The ’421 patent incorporates the specification of the
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’053 patent and is directed to an LED packaged for “high temperature operation.” See, e.g., ’421
patent at 1:8–15. Thus, the same passages in the specification that support a non-limiting
construction of the preamble phrase in the ’053 patent equally support a conclusion that the same
phrase in claim 1 of the ’421 patent is not limiting.
Beyond the disclosure common to the ’053 patent, the ’421 patent contains additional
teachings that weigh against a conclusion that the preamble is limiting. Respondents admit that
the ’421 specification “provides several alternative embodiments” and at least one of those
embodiments does “not require such ‘high temperature operation.’” RRB at 50. Specifically, the
’421 patent specification describes an embodiment with silicone encapsulant, and Respondents do
not dispute that such an embodiment would degrade at temperatures below 200° C. See id. at
50–51. The limitation that Respondents advance does not represent “the full scope of the
embodiments in the specification,” which weighs against interpreting the preamble phrase in
question as limiting. See MEMS Tech. Berhad, 447 F. App’x at 151.
As with claim 1 of the ’053 patent, the body of claim 1 of the ’421 patent describes a
structurally complete LED package. See ’421 patent at 7:46–67. The phrase “for high temperature
operation” adds no further structural meaning to the claim; the structure described in claim 1 would
remain intact if the words “for high temperature operation” were deleted from the preamble. See
Catalina Mktg. Int’l, 289 F.3d at 809. The phrase “for high temperature operation” also does not
provide an antecedent basis for limitations in the body of the claim, which weighs in favor of a
conclusion that this preamble phrase is not limiting. See Arctic Cat Inc., 919 F.3d at 1329; Am.
Med. Sys., 618 F.3d at 1359.
After reviewing the entire ’421 patent, including the language of the claim, I conclude that
the preamble phrase “for high temperature operation” is “simply a ‘laudatory term’ that only sets
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forth the purpose of the claimed invention” and is not limiting. See Allen Eng’g, 299 F.3d at
1346–47.
With this understanding, the undisputed evidence shows the LED Manufacturer
Representative ’421 Products are LED assemblies adapted for surface mounting. See Tr. (Kuball)
261:16–262:10.
b) “a thermally conducting base, ”
LSG argues that each of the accused ’421 products contains the claimed “thermally
conducting base” in the form of “the copper core of the lead frame on which the LED die sits.”
See CIB at 68 (citing Tr. (Kuball) 270:3–7). The structures identified by LSG as the “thermally
conducting base” are highlighted in brown in the demonstrative exhibits below:
CDX-0005C.157.
The evidence shows that these structures are “thermally conducting.” Dr. Kuball testified
that the accused “thermally conducting base” in the accused products is made of copper, which is
a good thermal conductor, and “provides good heat dissipation” for the LED package. Tr. (Kuball)
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263:10–21. Whether or not these structures are a “base” as that term has been construed in the
context of the asserted patents is an issue contested by the parties.
The parties agreed that the term “base” should be construed the same for both asserted
patents. See CC Order at 22. As discussed above in connection with the ’053 patent, I interpret
the term “base” according to its ordinary meaning in the art, which encompasses terms like
“support board” and “substrate.” Id. at 24.
(1) Nichia
Nichia’s expert Dr. Schubert testified that the accused Nichia products are molded lead
frame products without a base, especially because the products do not have a support board or
substrate. Tr. (Schubert) 981:9–982:11, 988:17–989:13, 990:23–993:2; CX-0609; JX-0087;
CX-0614; CX-0622; JX-0088; CX-0625; CX-0631; JX-0085; JX-0086; CX-0661; CX-0603;
CX-0868; JX-0432C. He further testified, for the sake of argument, that if some portion of the
products were a “base,” it would be the white resin, which interlocks with and serves as a container
for the other portions of the package, including the metal pads LSG identifies as a base. Tr.
(Schubert) 989:14–25, 990:8–16, 990:23–993:2; CX-0609; JX-087; CX-0614; CX-0622;
JX-0088; CX-0625; CX-0631; JX-0085; JX-0086; CX-0661; CX-0603; CX-0868; JX-0432C.
Dr. Schubert testified that, without the white resin, all of the components, including the alleged
base, would simply fall out of the package. See Tr. (Schubert) 990:17–993:3; CX-0609; JX-0087;
CX-0614; CX-0622; JX-0088; CX-0625; CX-0631; JX-0085; JX-0086; CX-0661; CX-603;
CX-868; JX-0432C.
LSG argues Dr. Schubert’s testimony regarding Nichia’s accused products was
“impeached” by a Lumileds document that refers to the accused structure in the Lumileds products
as a metal “base.” See CIB at 72–73 (referring to RDX–0012C at 5, 10). Yet, Dr. Schubert and
Lumileds witness Dr. Haque both testified that the “base metal” description in the Lumileds
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document refers to the “core material for the metal pads,” and not to a supportive “base” as that
term is used in the ’421 patent. Tr. (Schubert) 1040:17–1041:16, 1213:17–24. The interpretation
of the Lumileds document given by Dr. Schubert and Dr. Haque was reasonable and consistent
with the document as a whole. Dr. Schubert’s testimony that the Nichia products lack the claimed
“base” is credible.
As I have determined to construe “base” in accordance with its ordinary meaning in the art,
I find that the copper structure identified by LSG in the Nichia products is not a “thermally
conducting base.” The copper structure does not provide a supportive substrate to the LED
package; instead it is the white resin in the LED package that provides structure to the package.
(2) OSRAM
Like the Nichia products, the evidence shows the OSRAM Black Flat is a molded lead
frame product with two leads and without a base. Tr. (Bright) 1088:6–1089:2. OSRAM’s expert
Dr. Bright testified that the Black Flat does not have a substrate or a support board. Id. As
illustrated in the demonstrative exhibit below, the molded body of the package holds the leads of
the lead frame together:
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RDX-0006C.0006 (showing 3D CAD drawing of the Black Flat, excerpted from RX-0740C).
For the same reasons set forth above with respect to the Nichia accused products, I find
that the structures accused by LSG in the OSRAM products are not a “thermally conducting base.”
(3) Cree and Lumileds
Neither Cree nor Lumileds offered an expert witness to testify as to whether its products
have the claimed “thermally conducting base.” See CIB at 69; RRB at 56–60. But LSG’s
infringement proofs rested on an argument that “each of the Nichia, OSRAM, Lumileds, and Cree
Representative ’421 Products . . . contain practically identical lead frame structures.” CIB at 71.
Therefore, for the same reasons set forth above with respect to the Nichia accused products, I find
that the structures accused by LSG in the Cree and Lumileds products are not a “thermally
conducting base.
c) “wherein at least a portion of the thermally conducting base is
substantially planar; ”
Claim 1 requires that “at least a portion of the thermally conducting base is substantially
planar.” The claim also requires that the same “substantially planar portion” be overlaid by “one
or more electrically insulating layers,” which together “defin[e] a surface cavity.” A subsequent
limitation further requires that the LED die “[be] in thermal contact with the [substantially] planar
portion of the thermally conducting base.” ’421 patent at 7:46–67.
The evidence shows that a portion of the structures identified by LSG as the “base” is
substantially planar. See, e.g., CX-0303 (OSLON Black Flat Images) at LSGITC_1434802,
LSGITC_1434805; CX-0415 (Cree JK2835AWT Images) at LSGITC_1436699–
LSGITC_1436700; CX-0544 (Lumileds LUXEON 3535L Images) at LSGITC_1438632–
LSGITC_1438633. For example, the dashed blue line in the illustration below shows that a portion
of the lead frame in the Nichia product is substantially planar:
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CDX-0005C.169 (annotating CX-0832).
d) “one or more electrically insulating layers overlying at least a
portion of the planar portion of the thermally conducting base and
defining a surface cavity, ”
LSG argues that each aspect of this limitation, and the limitation as a whole, is met because
the resin molding in the LED Manufacturer Representative ’421 Products is the claimed
“insulating layer.” See CIB at 79–96. The accused electrically insulating layers are identified with
yellow arrows in the below top views of the LED Manufacturer Representative ’421 Products:
CDX-0005C.169 (annotating CX-0832).
The accused layers are annotated in yellow in the below x-ray views from the side of the
LED Manufacturer Representative ’421 Products:
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CDX-0005C.177.
As an initial matter, the evidence proves that the resin molding of the LED Manufacturer
Representative ’421 Products is “electrically insulating.” See, e.g., Tr. (Jokerst) Tr. 1134:3–11
(“[T]he molding component is typically some type of resin . . . [which] provides an insulating layer
between the anode and the cathode of the lead frame, which is very important.”).
The parties dispute whether the resin molding can be a “layer” as that term is used in the
’421 patent. See CIB at 80–86; RRB at 60–64. Respondents argue that “layer” in the context of
the patent means “a material having a substantially uniform thickness and a generally wide aspect
ratio” and that a person of ordinary skill “would not have understood a layer to cover a complex,
three-dimensional, molded structure.” RRB at 60–61. I find Respondents’ argument unpersuasive
and contradicted by the intrinsic evidence.
Specifically, Figure 1A of the ’053 patent depicts electrically insulating layer 12, which is
annotated in red below:
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RDX-0013C at 7. Layer 12 has a substantially uniform thickness and a generally wide aspect
ratio, which comports with the core of Respondents’ proposed construction. But layer 12 is also
illustrated and described in the ’421 patent as a complex, three-dimensional shape that wraps
around metal base 11. ’421 patent at 2:65–3:1. Accordingly, I reject Respondents’ attempt to
unduly narrow the construction of “layer” to exclude materials that reside only in a single plane.
I hereby construe “layer” according to its ordinary meaning in the art, which encompasses
structures such as those depicted as element 12 in Figure 1 of the ’421 patent.
The resin molding in the LED Manufacturer Representative ’421 Products satisfies the
“electrically insulating layer” limitation recited in claim 1. See also Tr. (Kuball) 272:20–277:16,
454:7–455:14. The insulating material in the LED Manufacturer Representative ’421 Products
has a generally wide aspect ratio, as can be seen from the top views in CDX-0005C.169. The
insulating material also has a substantially uniform thickness, as can be seen in the symmetry of
the left and right sides of the layer illustrated in the cross-sectional views in CDX-0005C.177.
I next consider whether or not the “electrically insulating layer” of resin is “overlying at
least a portion of the planar portion of the thermally conducting base.” I previously construed the
term “overlying” in my claim construction order: “Having considered the arguments of the parties,
I adopt the plain and ordinary meaning of ‘overlying,’ which is not limited to ‘positioned only
above.’” CC Order at 20; see also id. at 17–20. I further stated in a footnote: “My construction
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of ‘overlying’ does not include instances of embedding or enveloping as described by the
Respondents at the claim construction hearing.” Id. at 20 n.5.
Having reviewed the full record of the investigation, including the evidentiary hearing, I
now have a greater appreciation of the context for the claim construction dispute presented by the
parties. See Jang v. Boston Sci. Corp., 532 F.3d 1330, 1337 (Fed. Cir. 2008) (“We have previously
emphasized the importance of the context provided by an analysis of the accused device when
ruling on claim construction and the problems presented by construing claims in the absence of
such context.”). It is evident that the parties’ dispute requires construing the term “layer[]
overlying,” and not merely the term “overlying” in a vacuum. As illustrated at least in Figure 1A
of the ’421 patent, a layer overlying a structure is not limited to being positioned only above that
structure. Accordingly, I will construe “layer[] overlying” to mean a layer that is not limited to
being “positioned only above” another object.16, 17
Consistent with this construction, the evidence shows that the resin molding in the LED
Manufacturer Representative ’421 Products is “overlying at least a portion of the planar portion
of” the structures LSG identifies as the thermally conducting base.” The below illustrations show
16 I hereby incorporate the analysis presented in pages 17–20 of the claim construction order into
this initial determination. I decline, however, to adopt the statement in footnote 5 on page 20 that
the “construction of ‘overlying’ does not include instances of embedding or enveloping.” Such a
construction is in tension with other words in the claim and the teachings of the specification. See
Jang, 532 F.3d at 1337.
17 At the evidentiary hearing, I brought the Jang opinion to the parties’ attention in connection
with the “overlying” claim limitation and informed them they were free to press for a more
favorable claim construction in their post-hearing briefs. See Tr. 1439:8–1440:22. I also informed
the parties it was “possible that I will adjust or change my constructions from the [claim
construction] order.” Tr. 1440:14–15. All parties briefed the possible revision of the construction
of “overlying,” and no party argued an adjusted construction would result in undue prejudice. See
CIB at 86-91; RRB at 64–69.
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the resin molding layer in yellow and the (substantially) planar portion of the accused base in blue
dashes.
CDX-0005C.181; see also Tr. (Kuball) 324:24–331:5.
The evidence also shows that the resin molding layer in the LED Manufacturer
Representative ’421 Products defines a surface cavity. The surface cavity is shown in pink in the
demonstrative exhibits below:
CDX-0005C.182; see also Tr. (Kuball) 331:6–22.
e) “wherein the electrically insulating layers include one or more
terminals; ”
Evidence adduced at the hearing establishes that the molded resin layer in the LED
Manufacturer Representative ’421 Products include one or more terminals because the layer
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touches at least one terminal of the LED package and thus includes the terminal. See Tr. (Kuball)
336:2–338:1, 340:11–342:25.
f) “one or more LED die disposed at least partially within the
surface cavity, ”
The evidence shows that each LED Manufacturer Representative ’421 Product includes at
least one or more LED die disposed at least partially within the surface cavity. See Tr. (Kuball)
344:20–345:9. The illustrations below show the LEDs colored in dark purple:
CDX-0005C.210.
g) “wherein the one or more LED die are in thermal contact with
the planar portion of the thermally conducting base, ”
The evidence also shows that each LED Manufacturer Representative ’421 Product has at
least one LED die “in thermal contact with the planar portion of the [accused] thermally conducting
base.” See Tr. (Kuball) 345:10–349:6. Images of LED Manufacturer Representative ’421
Products show the LED(s) annotated in purple and the planar portion of accused base annotated in
blue:
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CX-0832 (Nichia NE2G757GT); CDX-0005C at 214.
CDX-0005C.216.
CDX-0005C.212.
Id.
Nichia takes the position that its 757 Series products do not have an “LED die [ ] in thermal
contact with the planar portion of the thermally conducting base” because the “top surface [of the
accused lead] is divided by a substantial groove into two separate planar portions.” See RRB at
100–04. Using the figures below to illustrate its argument with respect to the NE2G757GT
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product, Nichia argues that “the LED die is mounted onto one planar portion (shown in blue),
which is not the planar portion (shown in green) that—according to Complainants—is overlaid by
(a portion of) the electrically insulating layer (i.e., the white resin).” See RRB at
101–2 .
RX-0501.0001, 0003 (images at CX-0601); see also JX-0432C.
Nichia’s argument is based on a reading of the claim requiring that the planar portion of
the base overlaid by the electrically insulating layer be the same planar portion of the base that is
in thermal contact with the LED. See RRB at 100–04. Yet, the claim language requires no such
identity. Claim 1 is reproduced below with the relevant language identified in italicized bold
typeface:
1. A LED assembly adapted for surface mounting and high temperature
operation, the LED assembly comprising:
a thermally conducting base, wherein at least a portion of the
thermally conducting base is substantially planar;
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one or more electrically insulating layers overlying at least a portion
of the planar portion of the thermally conducting base and defining
a surface cavity, wherein the electrically insulating layers include
one or more terminals;
one or more LED die disposed at least partially within the surface
cavity, wherein the one or more LED die are in thermal contact with
the planar portion of the thermally conducting base, and electrically
connected to the one or more terminals of the one or more insulating
layers,
wherein a bottom surface of the LED assembly includes a thermally
conductive region in solderable thermal contact with the thermally
conducting base, for spreading heat transmitted to the base from the
one or more LED die; and
further comprising an LED assembly mount selected from the group
consisting of an electrically insulated fastener and a solderable
bonding pad.
’053 patent at 7:46–67 (emphasis added).
The claim merely requires that a “planar portion” of the base be in contact with the LED
die and “a portion of the planar portion” underlie the electrically insulating layer. The portion in
contact with the LED die and the portion underlying the insulating layer need not be identical. The
Nichia 757 Series products have both claimed portions. I therefore find the Nichia 757 Series
products satisfy the limitation “one or more LED die [ ] in thermal contact with the planar portion
of the thermally conducting base.”
h) “and electrically connected to the one or more terminals of the
one or more insulating layers, ”
The evidence shows that the LED Manufacturer Representative ’421 Products satisfy this
claim limitation. As depicted below, a first LED electrode on the LED die is connected to the
larger lead frame portion either by a wire bond (in the case of the Nichia NE2G757GT, Cree
JK2835AWT, and Lumileds LUXEON 3535L) or by a direct connection on the bottom of the die
(in the case of the OSRAM OSLON Black Flat). CX-0601 (Nichia NE2G757GT); CX-0303
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(OSRAM OSLON Black Flat); CX-0544 (Lumileds LUXEON 3535L); CX-0415 (Cree
JK2835AWT). A second LED electrode on the LED die is connected to the smaller portion of the
lead frame by a wire bond. See Tr. (Kuball) 260:5–15. Because the lead frame is made of copper,
and is therefore electrically conductive, the top surfaces of the lead frame electrically connect to
the terminals plated onto the bottom surfaces. See Tr. (Kuball) 349:18–350:4.
CDX-0005C.220.
i) “wherein a bottom surface of the LED assembly includes a
thermally conductive region in solderable thermal contact with the
thermally conducting base, ”
As discussed in more detail below, the evidence shows that, in the LED Manufacturer
Representative ’421 Products, the bottom surface of the LED assembly includes a “thermally
conductive region.” The question remains whether or not this “thermally conductive region” is in
“solderable” thermal contact with the copper of the alleged “base,” a position with which
Respondents disagree. See CIB at 106–16; RRB at 86–100.18 At the evidentiary hearing, LSG
asserted solderability is merely a “materials consideration,” i.e., a question of whether or not the
material constituting the “region” could (in the abstract) be soldered to the material constituting
18 In my claim construction order, I determined that Respondents did not carry their burden on
indefiniteness with respect to the term “solderable.” CC Order at 29–30.
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the “base.” See Tr. (Kuball) 362:19–24, 365:11–16, 367:18–23, 464:12–20, 556:22–557:4.
Respondents instead focused on the structure of the claimed invention, taking the position that a
person of ordinary skill would understand that one must consider not only the type of material, but
also the amount of material, the configuration of the structure, and whether there is sufficient
access to “wet” the respective “region” and “base” surfaces with solder in order to determine
whether they are “solderable.” See Tr. (Schubert) 1005:4–1009:9; Tr. (Jokerst) 1193:13–1194:8;
Tr. (Katona) 1263:23–1264:24. In other words, Respondents argue that two structures—the
“region” and the “base” in the context of the ’421 patent—are in “solderable . . . contact” only if
those two structures could actually be soldered to each other.
The parties’ arguments are a mix of legal and factual positions. I begin with the legal
interpretation of the phrase “in solderable thermal contact.” In post-grant proceedings, LSG
distinguished certain asserted prior art by arguing to the Patent Office that a unitary structure
shown in the asserted art could not be soldered to itself. See Notice of New Evidence (EDIS Doc.
ID 66505) at 2–3 and Ex. A at 16, 19, 22–23. The Patent Office accepted LSG’s argument, noting
that the prior art reference discloses a “unitary” structure, and the alleged region and base in that
structure “cannot be ‘solderable’ to one another, i.e., at no point in time could they be soldered to
each other because they are simply one singular piece.” Id. The Patent Office further noted that
solderability is a property of the wettability of a “surface,” and not only a property of a “material”:
That assertion is consistent with a technical dictionary’s definition of
“solderability” as “[t]hat property of a metal surface to be readily wetted by
molten solder.” See Ex. 3001 (definition by The Authoritative Dictionary of
IEEE Standards Terms).
Id. at 16 (original emphasis omitted). Accordingly, I conclude that a region “in solderable thermal
contact” with the base means something more than the region is made of a kind of material that
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can be soldered to the kind of material in the base. The invention requires at least that the region
actually can be soldered to the base.
Having resolved the proper construction of the “solderable” limitation, I turn to comparing
that limitation to the accused products. For each of the accused products, LSG asserts that the lead
to which an LED die is mounted includes the claimed “region” and “base.” Specifically, LSG
argues that the copper core of the lead is the “base” and, collectively, that the layers plated thereon
constitute the “region.” See CIB at 106-07; Tr. (Kuball) 350:5—23, 440:3-23, 461:8-12:;
CDX-0005C.222, 335, 336.
The following chart prepared by Respondents identifies the alleged “regions” (plating
layers) in the accused Nichia products:
Nichia Product Plating Layers (starting Thicknesses
from copper surface)
NE2G757GT, NF2E757GRT, | Nickel
NFSL757GT, NF2W757G- Palladium
V3F1, NFSW757G-V3, Gold
NT2L757DRT Silver
NESB157A Silver
NESA146A Nickel
Palladium
Gold
RRB at 90 (citmg Tr. (Schubert) 1010:5—1011:22, 1012:2—1013:9; RX-0399C.0008;
RX-0398C.0008; RX-0401C.0009; RX-0400C.0008; RX-0396C.0003; Tr. (Bright)
1094:6-1095:7; RX-0739C; Tr. (Jokerst) 1181:2-14, 1244:9-1245:24; RDX-13.14; RX-2009C;
RX-2004C; RX-2009C; RX-1969C; RX-1971C; RX-1982C; RX-1986C; RX-1993C; RX-2012C).
In the OSRAM Black Flat, the alleged “region” includes the nickel plated onto the copper
core of the central pad of the lead frame, as highlighted in yellow below. Tr. (Bnght)
88
89
1091:19–1092:10. The copper is plated with nickel with a thickness of , as well as
palladium of in thickness and gold of in thickness. Id.; RX-0739C.
RDX.0006C-00011 (showing a bottom schematic view (RX-0737C) and a demonstrative of the
plating layers of the Black Flat).
In the accused Cree products, including the representative JK2835AWT, the only material
underneath the copper is electroplated silver of thick. Tr. (Katona) 1260:20–24,
1263:25–1264:5. LSG argues that the silver layer is the claimed “region.” CIB at 107.
In the accused Lumileds products, including the LUXEON 3535L, LSG identifies a layer
of electroplated silver or nickel ranging from in thickness as the claimed “region”
allegedly solderable to the copper-lead-portions. See Tr. (Jiao) 1239:9–1242:22, 1244:9–1246:13;
RDX-0013C.0014-0015; RX-2009C; RX-2004C; RX-1969C; RX-1971C; RX-1982C;
RX-1986C; RX-1993C; RX-2012C.
As discussed in more detail below, I find that these microscopically thin plating layers have
no region in solderable thermal contact with a base.
The evidence shows that, as manufactured, imported, and sold, no accused product has a
region soldered or solderable to a base. Instead, each alleged “region” in the accused products is
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part of microscopically thin, electroplated layer added to the copper lead for reflectivity and to
prevent corrosion; it cannot (or could not) have been soldered to the copper. See, e.g., Tr. (Jokerst)
1133:3–22, 1179:6–19. Expert witness testimony establishes that all of the products have “full
surface plating” such that there are no exposed surfaces available to be wetted with solder and no
way to access the interface of the copper and a plating layer. Tr. (Schubert) 1005:4–1009:9,
1010:22–1013:9; Tr. (Jokerst) 1133:3–22, 1179:6–19; RX-0768.0006; RX-0399C.0008;
RX-0398C.0008; RX-0401C.0009; RX-0400C.0008; RX-0396C.0003. As Respondents’ experts
explained, because the plating region and copper base are atomically bonded to one another at the
time the plating region comes into existence, it is impossible to solder them to one another.
Tr. (Bright) 1097:7–12; Tr. (Jokerst), 1188:22–1189:15; Tr. (Jiao) 1241:1–6; Tr. (Katona)
1264:12–15.
In addition, the evidence shows that the alleged “region” would not be solderable to the
alleged “base” even during the manufacturing process because the alleged “region” never exists
as a separate, solid region. Rather, the metal layers are applied to the “base” through electroplating,
and the metal only exists in an aqueous solution before being permanently affixed to the “base.”
Tr. (Schubert) 1011:23–1013:9, 1075:3–14; Tr. (Bright) 1096:17–1097:2; Tr. (Jokerst)
1178:19–1179:5, 1144:5–18, 1188:12–1189:15; Tr. (Jiao) 1241:23–1242:16.
Once affixed to the alleged “base,” the plated layers of the alleged “region” cannot be
removed such that they would survive to be “soldered” onto the copper lead. Tr. (Schubert)
1005:4–1009:9, 1010:5–21, 1012:2–1013:9; Tr. (Bright) 1096:4–1097:22; Tr. (Jokerst)
1189:16–1190:7; Tr. (Jiao) 1241:1–8; RX-0399C.0008; RX-0398C.0008; RX-0401C.0009;
RX-0400C.0008; RX-0396C.0003. OSRAM’s expert Dr. Bright testified that nickel plating is
added as a diffusion barrier to prevent diffusion of copper ions into the nickel/palladium layers
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(and into any solder that is applied to secure the package to an external printed circuit board). Tr. (Bright) 1092:15-22; see also CX-4179C (Tanaka Dep.) at 49:22-51:18. As a result of the plating process-and the additional impact of diffusion at the copper/nickel interface-there is a "metallurgical attachment" between the nickel and copper, and the two metals thereafter cannot be separated without destruction. Tr. (Bright) 1096:4-1097:15. Dr. Bright illustrated the metallurgical attachment using the left-side of the demonstrative below, which shows the intermixing of orange and grey dots.
Red Blood Cell
~2 um
...........
Copper
Nickel
Palladium
Gold
RDX-0006C.00014.
This irreversible metallurgical attachment occurs in all of the accused products; removal of the "region" would result in destruction of the interface between the "region" and the "base." See, e.g., Tr. (Bright) 1189:16-1190:7.
Further, even if the layer of metal composing the region existed separately from the copper base in some non-liquid form, the layer would be so thin that there would be insufficient structural stability to solder it to the copper base. See Tr. (Schubert) 1010:22-1011:17, 1012:2-1013:9; Tr. (Bright) 1097:16-1098:2; Tr. (Jokerst) 1190:8-22; Tr. (Jiao) 1241:9-23, 1245:3-8; Tr. (Katona)
91
92
1264:16–24; RX-0399C.0008; RX-0398C.0008; RX-0401C.0009; RX-0400C.0008;
RX-0396C.0003; RX-2004C; RX-1969C; RX-1971C; RX-1982C; RX-1986C; RX-1993C;
RX-2009C; RX-2012C; RX-0739C.
For these reasons, I find the LED Manufacturer Representative ’421 Products do not have
a “thermally conductive region” that is in “solderable” thermal contact with the copper of the
alleged “base.”
j) “for spreading heat transmitted to the base from the one or more
LED die; and ”
The evidence shows that the accused “thermally conductive region” in the LED
Manufacturer Representative ’421 Products is “for spreading heat transmitted to the base from the
one or more LED die.” See CX-4179C (Tanaka Dep.) at 44:15–21; Tr. (Kuball) 351:2–25;
352:6–354:22.
k) “further comprising an LED assembly mount selected from the
group consisting of an electrically insulated fastener and a solderable
bonding pad.”
As illustrated below, the evidence shows that the LED Manufacturer Representative ’421
Products practice this limitation19 because they include solderable bonding pads on their lower
surface for mounting the packages to an external system:
19 The parties have agreed that this term should be construed as “further comprising an LED
assembly mount that is either an electrically insulated fastener or a solderable bonding pad.” See
CIB at 117 (citing RPB at 441).
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CDX-0005C.241; see also Tr. (Kuball) 378:6–23.
3. Claim 6
Dependent claim 6 of the ’421 patent reads:
6. The LED assembly of claim 1, wherein the thermally conducting base
includes a metal base.
The evidence shows that the LED Manufacturer Representative ’421 Products satisfy this
additional limitation. The alleged base in each product is made of copper, a metal. See, e.g., Tr.
(Kuball) 379:22–380:17.
Nevertheless, because there is no infringement of claim 1 from which claim 6 depends,
there is no infringement of claim 6.
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4. Infringement Conclusion
a) The LED Manufacturers
As discussed above, the LED Manufacturer Representative ’421 Products lack “a thermally
conducting base” and “a thermally conductive region in solderable thermal contact with the
thermally conducting base” as recited in claims 1 and 6. Accordingly, I find that LSG has failed
to prove infringement of claims 1 and 6 of the ’421 patent.
b) The Luminaire Respondents
As discussed above, LSG’s infringement argument as to the Luminaire Respondents
accused products relies on a general assertion in its post-hearing brief that “each Luminaire
Respondent incorporates into its products certain specific LED packages” alleged to infringe the
’421 patent. See CIB at 154. LSG argues that all Luminaire Respondent accused products, those
that incorporate LED packages from the LED Manufacturers and those that incorporate LED
packaged from third party suppliers, “are equivalent to, and represented by, certain of the LED
Manufacturer Representative ’421 Products for purposes of infringement.” See id. at 163.
The LED Manufacturer Representative ’421 Products lack “a thermally conducting base”
and “a thermally conductive region in solderable thermal contact with the thermally conducting
base” as recited in claims 1 and 6. Accordingly, I find that LSG has failed to prove infringement
of claims 1 and 6 of the ’421 patent as to the accused products of the Luminaire Respondents.
B. Technical Prong of the Domestic Industry Requirement
To prove satisfaction of the technical prong of the domestic industry requirement for the
’421 patent, LSG argues that claims 1 and 6 are practiced by two groups of products. See CIB at
167–89. The first group incorporates the custom Luminus MP-2835-21C1 LED package
(“Luminus MP-2835”). See Tr. (Maxik) 638:24–639:12; Tr. (Kuball) 428:14–429:3. This group
of products includes LSG’s Journi™ Mobile LED Task Light, Good Day&Night® LED
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Downlight, Good Day&Night® LED Troffer, GoodDay® A19 LED Bulb, GoodDay® LBAR™
LED Tube, GoodDay® T8 LED Tube, SunTrac™ A19 LED Bulb, AZUL™ Troffer, AZUL™
Linear Luminaire, and the 480® Series Products. See Tr. (Maxik) 638:24–639:12; Tr. (Kuball)
428:14–429:3. The second group incorporates the Edison 2835 1W 6V CR195 HL LED package
(“Edison 2835”). See Tr. (Maxik) 638:24–639:12; Tr. (Kuball) 428:14–429:3. This group
includes LSG’s GoodNight® A19 LED Bulb and Sleepy Baby® P15 LED Bulb. See Tr. (Maxik)
638:24–639:12; Tr. (Kuball) 428:14–429:3.
LSG’s expert Dr. Kuball testified that, with respect to claims 1 and 6, there are no material
differences between the Luminus MP-2835, the Edison 2835, and the LED Manufacturer
Representative ’421 Products analyzed above. Tr. (Kuball) 429:13–17 (“[T]hey are actually very
similar in terms of infringement purposes, in terms of claim purposes compared to the other
products we discussed.”), 433:17–22 (“[T]hey look very similar.”). As shown in the images below,
both the Luminus MP-2835 and the Edison 2835 are lead frame packages with nearly
indistinguishable designs compared to the Nichia and Lumileds Representative ’421 Products:
CDX-0005C.299; CX-0807.
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CDX-0005C.299; CX-0528.
CDX-0005C.300; CX-0807.
CDX-0005C.300; CX-0528.
Therefore, for the same reasons set forth above with respect to the LED Manufacturer
Representative ’421 Products, I find that the Luminus MP-2835 and Edison 2835 products do not
practice claims 1 and 6 of the ’421 patent. Those products lack the claimed “thermally conducting
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base” and “thermally conductive region in solderable thermal contact with the thermally
conducting base” as recited in claims 1 and 6.
C. Validity
1. Priority Date
Respondents contend that LSG’s own BL-3000 light engine product embodies every
element of the asserted claims and was on sale more than one year before the application for the
’421 patent was filed. See RX-0047 at 27–28 (responses to Request for Admission Nos. 76 and
77). Respondents have therefore established a prima facie case of invalidity under the pre-America
Invents Act version of 35 U.S.C. § 102(b). The burden of production now shifts to LSG to show
that the application to which the ’421 patent claims priority provides “adequate support” for claims
1 and 6, thereby entitling those claims to the earlier priority date. See Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1324 (Fed. Cir. 2008). The phrase “burden of production” means
“both producing additional evidence and presenting persuasive argument based on new evidence
or evidence already of record.” Id. at 1327.
The sufficiency of the disclosure in a patent application is evaluated on a claim-by-claim
basis. Specifically, a “patent is only entitled to claim the benefit of the filing date of its provisional
application if the disclosure of the provisional application provides support for the claims” of the
patent. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).
It is the patentee’s burden to prove that each and every element of the challenged claim is located
in the priority document. See id.
For a patent to be entitled “to the filing date of an earlier application in the chain of
applications of which it is a part, there must also have been a continuing disclosure through the
chain of applications, without hiatus.” Eiselstein v. Frank, 52 F.3d 1035, 1038 n.4 (Fed. Cir.
1995). In other words, a patent will only be entitled to the priority date of a grandparent application
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if there is sufficient disclosure in both the parent and the grandparent application. If there is
sufficient disclosure in the grandparent application, but insufficient disclosure in the parent
application, the patent will not be entitled to the filing date of the grandparent application.
The °421 patent is a continuation-in-part (“CIP”) of the application that led to the ’053
patent and claims priority to Provisional Application No. 60/467,857 (CX-1036), as shown below:
Application Number Patent Number Filing Date Notes
60/467,857 N/A May 5, 2003 Provisional
(’857 provisional”) Application
10/638,579 7,095,053 August 11, 2003 Parent Application
(“’579 application”) (“’053 patent”)
11/179,863 7,528,421 July 12, 2005 CIP of ’579
(°421 patent”) application
See °421 patent at cover page; ’053 patent at cover page.
The undisputed evidence establishes that both the ’857 provisional and the ’579 application
provide support for the majority of the limitations in claims 1 and 6. See CIB at 213-21 (citing to
testimony from Dr. Kuball and the ’857 provisional); RIB at 23-38. Respondents argue only that
LSG has failed to show that the *857 provisional and the °579 application disclose three separate
limitations:
e “one or more electrically insulating layers overlying at least a portion of the planar
portion of the thermally conducting base and defining a surface cavity, wherein the
electrically insulating layers include one or more terminals”
e “a thermally conductive region in solderable thermal contact with the thermally
conducting base”
98
99
• “an LED assembly mount selected from a group consisting of an electrically
insulated fastener and a solderable bonding pad”
RIB at 24. These three limitations are discussed in further detail below.
a) “one or more electrically insulating layers overlying at least a
portion of the planar portion of the thermally conducting base and
defining a surface cavity, wherein the electrically insulating layers
include one or more terminals”
The evidence shows that the ’857 provisional and the ’579 application provide sufficient
disclosure to support this claim element.20 Figure 1 of the ’857 provisional shows a nickel oxide
insulating layer 12 and LTCC layer 17 overlying the thermally conductive
copper/molybdenum/copper (“CMC”) base 11, which corresponds to the claimed “one or more
electrically insulating layers overlying at least a portion of the planar portion of the thermally
conducting base.” See ’857 provisional at 3:14–19, 3:23–27. An annotated version of Figure 1
below shows in orange how portions of nickel oxide layer 12 and LTCC 17 stretching from the
left via 14 to the right via 14 overlies a planar portion of the thermally conducting base.
20 In their post-hearing brief, Respondents argue that the ’857 provisional does not support this
claim limitation, but they failed to raise this argument in their pre-hearing brief. Compare RIB
34–37 with RPB at 619–40. I therefore deem this argument abandoned according to my Ground
Rule 11.2. See Order No. 2 at 18 (June 25, 2019) (“Any contentions not set forth in detail in the
pre-hearing brief shall be deemed abandoned or withdrawn.”).
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CDX-0011C.34 (annotating ’857 provisional at Fig. 1).
Figure 1 of the ’857 provisional also illustrates that “[t]he ceramic layers on the base 11
form a cavity 18 around the LED 10,” which corresponds to the claimed “one or more electrically
insulating layers . . . defining a surface cavity.” ’857 provisional at 3:15; see also ’053 patent at
4:14–17 (“The formed metal base 51 can be provided with underlying ceramic supports 58A, 58B
so that underlying bonding pads 15A, 15B are coplanar with thermal base connector 16.”), 3:2–3
(“The ceramic layers on the base 11 form a cavity 18 around the LED 10.”). This cavity is
illustrated in red in the demonstrative below:
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CDX-0011C.35 (annotating ’857 provisional at Fig. 1).
I therefore find that the limitation “one or more electrically insulating layers overlying at
least a portion of the planar portion of the thermally conducting base and defining a surface cavity,
wherein the electrically insulating layers include one or more terminals” recited in claim 1 (and
incorporated into dependent claim 6) of the ’421 patent is entitled to the priority date of the ’857
provisional application.
b) “a thermally conductive region in solderable thermal contact
with the thermally conducting base”
Claims 1 and 6 require “a bottom surface of the LED assembly [that] includes a thermally
conductive region in solderable thermal contact with the thermally conducting base.” LSG argues
that Figure 1 of the ’857 provisional provides support for this limitation. CIB at 195–96. Using
the annotated demonstrative exhibit below, LSG’s expert Dr. Kuball testified that Figure 1 teaches
a platinum/silver “solderable base for heat sinking” (depicted below in purple), which corresponds
to the “thermally conductive region” of claim 1, and also teaches a copper/molybdenum/copper
base 11 (depicted below in green), which corresponds to the “thermally conducting base.” Tr.
(Kuball) 1381:14–18.
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CDX-0011C (annotating ’857 provisional at Fig. 1).
LSG relies on Dr. Kuball’s testimony to support its position, but Dr. Kuball failed to
demonstrate that Figure 1 teaches that element 16 is solderable to element 11. Rather, he testified
that the kind of material from which element 16 is constructed (i.e., platinum) is solderable to the
kind of material from which element 11 is constructed (i.e., copper). See Tr. (Kuball) 1381:2–13,
1382:1–8. As discussed above with respect to the infringement analysis of the ’421 patent, the
relevant question is not whether platinum is solderable to copper in the abstract, but rather whether
the “base” is in solderable contact with the “region.” The ’857 provisional fails to demonstrate
that the “base” to which Dr. Kuball points in Figure 1 is solderable to the “region.”
Although Figure 1 of ’857 provisional uses the word “solderable” to describe element 16,
Respondents’ expert Dr. Lebby provided persuasive testimony showing that a person of skill in
the art would have understood that word to mean that element 16 is solderable to an external
component, like a heat sink, and not that element 16 is solderable to element 11. Tr. (Lebby)
1277:18–1280:18. Dr. Lebby’s testimony is consistent with corresponding language in the ’857
provisional describing Figure 1, which states: “Solderable electrical connection pads 15A and 15C
[also labeled as 16 in Figure 1] may be deposited on the underside of metal base 11 to permit
surface mounting of the base 11 on a printed circuit board (not shown).” ’857 provisional at
3:7–8.
The evidence also supports Respondents’ argument that the concept of a “solderable
thermal contact” is new matter added during the prosecution of the ’421 patent to overcome the
Sugimoto prior art reference. See RIB at 32 (citing JX-0007 (’421 patent file history) at
LSGITC_0000577–578, 587; ’421 patent at Fig. 10). In particular, Dr. Kuball testified that,
outside of the language of claim 1, the ’421 patent does not teach that thermal connection 106 is
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solderable to metal base 101. Tr. (Kuball) 460:12–461:2 (“Q. So outside of the claim, it doesn’t
say 106 is solderable to 101; right? A. No.”); see also ’421 patent at Fig. 10.
I therefore find that the limitation “a thermally conductive region in solderable thermal
contact with the thermally conducting base” recited in claim 1 (and incorporated into dependent
claim 6) of the ’421 patent is not entitled to the priority date of either the ’857 provisional or the
’059 application that matured into the ’053 patent.
c) “an LED assembly mount selected from a group consisting of an
electrically insulated fastener and a solderable bonding pad”
The final disputed limitation of claim 1 recites an “LED assembly mount” selected from a
Markush group consisting of “an electrically insulated fastener” and “a solderable bonding pad.”
All members of a Markush family must be disclosed in a preceding disclosure in order to claim
priority to that disclosure. See, e.g., In re Gosteli, 872 F.2d 1008, 1009–10, 1012 (Fed. Cir. 1989)
(affirming that a later-filed application containing a Markush claim to a genus cannot claim priority
to an earlier-filed application disclosing only a subgenus).
The parties dispute whether or not the ’857 provisional discloses an “LED assembly
mount” consisting of an “electrically insulated fastener.” See, e.g., RIB at 25–32; CIB at
201–13.21
As shown in the demonstrative exhibit below, Figure 9 of the ’857 provisional teaches
screws 95, which hold down or “mount” an LED assembly comprising multiple LEDs.
21 That the ’857 provisional discloses an “LED assembly mount” consisting of “a solderable
bonding pad” is not in dispute. See CIB at 199–200.
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CDX-0011C.50 (annotating ’857 provisional at Fig. 9).
LSG’s expert Dr. Kuball testified that the screws used to mount the structure in Figure 9
are an “LED assembly mount” as recited by the claim. See Tr. (Kuball) 1383:1–16, 1384:2–5.
Dr. Kuball further testified that the ’857 provisional teaches that the screws 95 “press [the
assembly] down to the heat sink” to promote “thermal contact.” Tr. (Kuball) 1384:8–19; see also
’857 provisional at 5:29–6:3. Accordingly, I find that disclosure of the screws 95 in Figure 9 of
the ’857 provisional provide sufficient disclosure of at least a generic “LED assembly mount.”
But the disputed claim language requires more than just a generic LED assembly mount; it
requires “an LED assembly mount . . . consisting of an electrically insulated fastener.” LSG
argues:
[T]he law does not require that the Provisional ever state (1) that screws 95
are an “electrically insulated fastener,” (2) that screws 95 are made of
electrically insulating material, or (3) that screws 95 can be made of
electrically insulating material.
Rather, when a genus covers a limited and well-known set of species,
disclosure of the genus is adequate disclosure of specific members of the
species.
CIB at 204–05 (citing ICN Photonics, Ltd. v. Cynosure, Inc., 73 F. App’x 425, 431 (Fed. Cir.
2003)) (emphasis original).
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Dr. Kuball testified that the that screws 95 disclose a genus—LED mounting screws—that
contain only two options: “[S]crews have to be made of something, and they are either insulator
or metal. . . . These are two options, no thoughts needed.” Tr. (Kuball) 1396:10–18; see also Tr.
(Kuball) 1383:7–19. LSG argues that Dr. Kuball’s testimony proves the ’857 provisional discloses
both species of the genus comprising electrically insulated screws and metal screws. CIB at 207
(citing ICN Photonics, 73 F. App’x at 431; Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d
1336, 1352-53 (Fed. Cir. 2011); VirnetX Inc. v. Apple Inc., 665 F. App’x 880, 888 (Fed. Cir. 2016);
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001); In re
Petering, 301 F.2d 676, 682 (C.C.P.A. 1962); In re Schaumann, 572 F.2d 312, 314–17 (C.C.P.A.
1978)).
Respondents argue that the ’857 provisional does not disclose an electrically insulated
fastener because it does not explicitly state that the hold-down screws are made of insulating
material. Quoting Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998), Respondents contend
that if the written description in a priority application does not explicitly disclose a limitation, “it
must be shown that a person of ordinary skill would have understood, at the time the patent
application was filed, that the description requires that limitation.’” RIB at 30–31 (emphasis
original).
First, LSG forfeited any genus-species argument by failing to include it in its pre-hearing
brief. See CPB at 1042–50; Order No. 2 at Ground Rule 11.2. Even if I were to consider that
argument, it lacks merit because it is built on a false premise. The genus of LED mounting screws
is not limited to two species; the world of screws includes many kinds of screws beyond metal
screws and insulating screws. For example, a screw could be made of a semiconductor material
that is both conducting and insulating depending on the voltage applied. A metal screw could also
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have an insulating coating on different portions of its head or shank so that the screw is insulating
as it passes through one layer but is conductive to connections in another layer.
More to the point, there is absolutely no evidence in the ’857 provisional that the inventors
considered the conductive or insulating properties of the screw at all. To benefit from the priority
date of the ’857 provisional, that application must “convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, [the inventor] was in possession of the invention.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis in original).
Nothing in the ’857 provisional teaches a person of skill in the art that the screws are electrically
insulating. I therefore find that the limitation “an LED assembly mount . . . consisting of an
electrically insulated fastener” recited in claim 1 (and incorporated into dependent claim 6) of the
’421 patent is not entitled to the priority date of the ’857 provisional.
2. Anticipation: BL-3000 On-Sale Bar
In response to Requests for Admission, LSG admitted that if claims 1 and 6 of the ’421
patent are entitled only to the ’421 patent’s filing date of July 12, 2005, the claims would be invalid
due to an anticipating sale of an LSG product. RX-0047 at 27–28 (responses to Request for
Admission Nos. 76 and 77). Specifically, LSG admitted its BL-3000 light engine product was
offered for sale and sold more than one year before the ’421 application was filed, and the BL-3000
light engine practices every limitation of claims 1 and 6 of the ’421 patent. See id.
As discussed above, I have found that the ’857 provisional does not provide written
description support for “a thermally conductive region in solderable thermal contact with the
thermally conducting base” and “an LED assembly mount . . . consisting of an electrically
insulated fastener,” limitations required by claims 1 and 6 of the ’421 patent. These claims are
therefore only entitled to the patent’s filing date of July 12, 2005. Accordingly, claims 1 and 6 of
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the ’421 patent are invalid under 35 U.S.C. § 102(b) based on the offer and sale of the BL-3000
light engine product more than one year before July 12, 2005.
3. Obviousness: Hammond
Respondents argue that claims 1 and 6 of the ’421 patent are rendered invalid as obvious
in view of the Hammond prior art reference.22 RIB at 40–58. The evidence shows that Hammond
teaches all limitations of claims 1 and 6 except for the preamble phrase “[an] LED assembly
adapted for surface mounting and high temperature operation.” See Hammond at Fig. 4, Abstract,
¶¶ 1, 7, 9, 29, 36; Tr. (Lebby) 1281:1–1292:10. Hammond teaches a gallium arsenide die adapted
for surface mounting and high temperature operation, but Hammond does not expressly disclose
that the gallium arsenide die is an LED. Hammond at Fig. 4, ¶ 1. LSG does not dispute that
Hammond discloses every other limitation of claims 1 and 6 except an LED assembly. See CRB
at 11–12.23
As described below, evidence adduced at the hearing establishes that it would have been
obvious for a person of ordinary skill in the art to select an LED as the particular gallium arsenide
die to be used with the Hammond package.
Hammond discloses a “package for an electronic component [that] includes a metal support
substrate having a pattern of openings therethrough and a body of an insulating material, such as
glass or ceramic, on and bonded to the surface of the support substrate.” Hammond at Abstract.
Hammond further discloses that its “invention relates to multilayer ceramic circuit boards mounted
22 U.S. Patent Application Publication No. US 2002/0166684 A1 to Hammond et al. (“Hammond”)
(RX-0018) was filed May 10, 2001, published on November 14, 2002, and is prior art under 35
U.S.C. § 102(b) (if claims 1 and 6 claim priority to the ’421 patent’s filing date) or 35 U.S.C.
§§ 102(a) and 102(e) (if claims 1 and 6 claim priority to the ’857 provisional).
23 LSG also failed to establish the existence of secondary indicia of non-obviousness as to claims
1 and 6 of the ’421 patent. See RIB at 41.
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on a patterned conductive substrate support . . . [and] relates to mounting modules of high power
amplifiers and oscillators onto the patterned substrate support to remove excess thermal energy
from these devices.” Id. ¶ 1. Hammond also discloses that its semiconductor die 52 is a “gallium
arsenide die.” Id. at Fig. 4.
Hammond’s package utilizes low temperature co-fired ceramic circuit boards with metal
support substrates, or LTCC-M technology, which is referenced in the preferred embodiments of
the asserted ’053 and ’421 patents. See Tr. (Lebby) 1282:5–15; Hammond ¶ 7; ’053 patent at
2:33–38, 7:29–38; ’421 patent at 2:54–60, 5:50–53, 6:32–41. Hammond teaches that the
advantages of such packages includes heat dissipation. See Hammond ¶¶ 1, 7, 36; Tr. (Lebby)
1282:1–4.
Figure 4 from Hammond is reproduced with color annotations below. The handwriting is
original to the disclosure:
RDX-0008.0013.
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Figure 4 depicts a semiconductor package containing a power amplifier formed on a
“Gallium Arsenide Die” 52 (shown above in yellow) mounted on a “Heat Sink/Ground Plane 40,”
which is also referred to as the “metal support substrate 40” (shown above in orange). Hammond
¶ 29 and Fig. 4. Hammond discloses that its electronic component package assembly is “adapted
for surface mounting” (e.g., it has a solder connection to the surface of a motherboard) and is
adapted for “high temperature operation. ” See Hammond ¶ 9; Tr. (Lebby) 1286:11–1287:2.
Dr. Lebby testified that a person of ordinary skill would have understood Hammond to
teach that a power amplifier formed on a gallium arsenide die is a semiconductor chip that
consumes current and generates heat that would be dissipated by Hammond’s heat sinking metal
support substrate. See Tr. (Lebby) 1283:2–6.
The evidence, including persuasive testimony from Dr. Lebby, establishes that it would
have been obvious, in view of the knowledge of a person of ordinary skill in the art, to mount an
LED die in the LTCC-M assembly disclosed by Hammond in place of Hammond’s power-
amplifier gallium arsenide die. See Tr. (Lebby) 1283:18–1285:16. As the disclosure of ’421 patent
admits, LEDs made from semiconductor material and with LTCC-M technology were known prior
to the alleged invention. ’421 patent at 6:29-42. Dr. Lebby confirmed that a person of ordinary
skill would have understood that the semiconductor material of an LED can be gallium arsenide
based. Tr. (Lebby) 1283:7–13, 1284:7–16.
The need to dissipate heat from such LEDs was also known the art at the time of the alleged
invention. Id. One design for dissipating heat from LTCC-M gallium arsenide semiconductor
devices known at the time of the invention was the device in Hammond. Hammond ¶ 0005 (“The
metal substrate support of the above-described LTCC-M technology can serve also as a heat
spreader, or heat sink . . . .”).
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When considering how to dissipate heat from an LED die, a person of ordinary skill in the
art would have been motivated to use the configuration in Hammond, which provides for improved
heat dissipation. See Tr. (Lebby) 1283:7–13, 1284:6–16; Hammond ¶ 0005 (“The metal substrate
support of the above-described LTCC-M technology can serve also as a heat spreader, or heat
sink . . . .”). Hammond is also for use with “high power components,” further suggesting that it
would be suitable for use with LEDs that draw a high current and generate heat. See Tr. (Lebby)
1283:2–13; Hammond ¶ 0005. Moreover, Hammond teaches that the configuration of its
LTCC-M technology would “improve reliability and reduce manufacturing costs,” which are
additional considerations that would motivate a person of skill in the art to combine Hammond
with an LED device. See Hammond ¶ 0006.
The evidence also shows that a person of ordinary skill in the art would not have had any
difficulty using an LED die in the Hammond package. Figure 4 of Hammond depicts a
semiconductor package with an open top suitable for use with a light-emitting semiconductor
device such as an LED. See Tr. (Lebby) 1284:6–1285:6. Dr. Lebby testified that Hammond
teaches “a very simple package” and that “it’s a very simple way to implement [a] gallium arsenide
semiconductor chip into a heat extraction package.” Tr. (Lebby) 1285:25–1286:6.
Based on the record evidence, I find Respondents have shown, clearly and convincingly,
that claims 1 and 6 of the ’421 patent are rendered invalid as obvious in view of the Hammond
reference.
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4. Anticipation: Yoganandan
Respondents argue that claims 1 and 6 of the ’421 patent are invalid as anticipated by the
Yoganandan prior art reference.24 RIB at 58–70. As discussed below, I find that Respondents
have not met their burden to show, by clear and convincing evidence, that Yoganandan teaches all
elements of the ’421 patent claims.
In general, Respondents present anticipation by Yoganandan as a fallback position in the
event that the’421 patent claims are interpreted as broadly as LSG asserts or in the event that the
theories underlying LSG’s proposed factual findings on infringement are adopted. I have rejected
several of LGS’s constructions and factual theories in my infringement analysis above, and when
consistent reasoning is applied to an evaluation of the Yoganandan reference, Respondents’
showing does not demonstrate anticipation.
One claim limitation is sufficient to illustrate this point. The claims require a “thermally
conductive region in solderable thermal contact with the thermally conducting base.” Respondents
argue that, if LSG’s construction and factual theories are adopted, Yoganandan teaches this
limitation. See RIB at 67–68. Respondents elaborate: “[T]he core of pad/platform 270 is copper
410B, and its lower plating layers are an additional layer of copper 800, a layer of nickel 810, and
a layer of gold 820. If, consistent with Complainants’ infringement allegations, the copper core
and additional copper plating on its bottom surface are together considered the ‘thermally
conducting base,’ and the nickel and gold plating layers thereunder are considered the ‘thermally
conductive region,’ then this limitation is met, because copper—in the abstract and without
24 U.S. Patent Application Publication No. US 2002/0163006 A1 to Yoganandan et al.
(“Yoganandan”) (RX-0017) was filed April 23, 2002, published on November 7, 2002, and is prior
art under 35 U.S.C. §§ 102(a), (b) and/or (e) (depending on the priority date of the ’421 patent).
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consideration of the actual physical construction of the package being analyzed—can be soldered
to nickel. Id. at 68 (citing Yoganandan ¶¶ 0023, 0031–32, 0048–51).
As discussed previously in my infringement analysis, I rejected a factual finding that a
microscopically thin layer of metal electroplated onto a copper core constitutes a thermally
conductive region in solderable thermal contact with a thermally conducting base. I further
rejected a factual finding that two structures were in solderable thermal contact simply by virtue
of the fact that each structure was made of a material that could be soldered in the abstract. With
respect to anticipation, I similarly decline to make such factual findings about the disclosures in
Yoganandan. The microscopically thin layer of nickel plating identified by Respondents in
Yoganandan is not in solderable thermal contact with the copper base identified by Respondents.
Respondents do not offer any arguments explaining how Yoganandan would anticipate absent such
a finding. It was Respondents’ burden to show every element of the claimed invention of the
claimed invention within the four corners of Yoganandan, which they have failed to do. See
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). For at least
this reason, I find that Respondents have failed to show, clearly and convincingly, that the asserted
claims of the ’421 patent are anticipated by Yoganandan.
5. Anticipation: Seko
Respondents argue that claims 1 and 6 of the ’421 patent are invalid due to anticipation by
the Seko prior art reference.25 RIB at 70–83. As with the Yoganandan reference, Respondents
argue anticipation by the Seko reference as a fallback position in the event that other arguments
advanced by LSG are adopted. Id. at 79–82. And as with the Yoganandan reference, the dispute
25 Japanese Patent Application No. 2001-217650 to Seko (“Seko”) (RX-0011) was published on
January 31, 2003, and is prior art under 35 U.S.C. §§ 102(a), (b) and/or (e) (depending on the
priority date of the ’421 patent).
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over Seko can be resolved by examining whether Respondents have shown “a thermally
conductive region in solderable thermal contact with the thermally conducting base” within Seko.
Seko discloses a LED for use in outdoor display panels. Seko teaches application of “nickel
plating” on sides of the device “where the copper is exposed” prior to deposition of resist film 16.
Seko ¶ 0029; see also id. ¶ 0022. Respondents argue the nickel plating on the bottom of the copper
layer in Seko is in solderable thermal contact with the thermally conducting base “under
Complainants’ infringement theory, because copper—in the abstract and without consideration of
the actual physical construction of the package being analyzed—can be soldered to nickel.” RIB
at 80–81.
As discussed previously in my infringement analysis, I rejected a factual finding that a
microscopically thin layer of metal electroplated onto a copper core constitutes a thermally
conductive region in solderable thermal contact with a thermally conducting base. I further
rejected a factual finding that two structures were in solderable thermal contact simply by virtue
of the fact that each structure was made of a material that could be soldered in the abstract. With
respect to anticipation, I similarly decline to make such factual findings about the disclosures in
Seko. Respondents do not offer any arguments explaining how Seko would anticipate absent such
a finding. It was Respondents’ burden to show every element of the claimed invention of the
claimed invention within the four corners of Seko, which they have failed to do. See Advanced
Display Sys., 212 F.3d at 1282. For at least this reason, I find that Respondents have failed to
show, clearly and convincingly, that the asserted claims of the ’421 patent are anticipated by Seko.
6. Written Description
Respondents argue that under LSG’s interpretation, claims 1 and 6 of the ’421 patent are
invalid for lack of written description of an invention with “a bottom surface . . . [that] includes a
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thermally conductive region in solderable thermal contact with [a] thermally conducting base.”
RIB at 83–86 (emphasis original). Specifically, Respondents argue:
The requirement that the “thermal contact” be “solderable thermal contact”
was not part of the originally filed claims or specification. Rather, as
originally filed, application claim 1 required only, “a bottom surface of the
LED assembly includ[ing] a thermally conductive region in thermal
contact with the thermally conducting base, for spreading heat transmitted
to the base from the one or more LED die.” [’421 patent file history at
LSGITC_0000462.] The “solderable” requirement is new matter added by
amendment to the claims during prosecution.
The specification, too, discloses only “thermal contact,” not “solderable
thermal contact.” Regarding Figure 4, the specification states:
The bottom surface of the LED assembly 40, shown in FIG. 4,
includes a thermally conductive central region 42 adapted to be
placed in thermal contact with a thermally conducting base (not
shown in FIG. 4), or that is part of the base. Preferably, the thermally
conductive central region 42 is composed of the same material as
the base. [’421 patent at 4:31-44, Fig. 4].
Absent from this disclosure is any discussion of “soldering” the “region” to
the “base,” or that the “region” and the “base” are in “solderable” thermal
contact.
RIB at 84–5 (emphasis original).
Respondents state that the only reference to a region being “solderable” is in Figure 10, an
annotated version of which is reproduced below:
See RIB at 85.
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I have already determined that the provisional application to which the ’421 patent claims
priority does not disclose “a bottom surface . . . [that] includes a thermally conductive region in
solderable thermal contact with [a] thermally conducting base.” The additional text and figures
appearing in the application that led to the ’421 patent do not cure that deficiency. See JX-0007
(’421 patent file history). The “solderable” thermal connection 106 shown in Figure 10 allows the
LED assembly to be soldered to an external component such as an external “circuit, heat sink, and
the like.” ’421 patent at 7:1–8. The written description does not disclose that connection 106 is
solderable to the part of the device designated as base 101. See RX-0134C (Mazzochette Dep.) at
139:20–140:8, 141:6–23, 142:3–143:23, 144:5–11, 144:13–18; Tr. (Lebby) 1273:18–1276:18.
Indeed, LSG’s own expert Dr. Kuball testified that, outside of the language of claim 1, the ’421
patent does not teach that thermal connection 106 is solderable to metal base 101. Tr. (Kuball)
460:12–461:2 (“Q. So outside of the claim, it doesn’t say 106 is solderable to 101; right? A. No.”).
Solderable bonding pads 105 in Figure 10 also do not provide the necessary written description.
Pads 105 are not in contact—solderable or otherwise—with base 101. Similarly, the solderable
terminals 23 in Figure 2 are not disclosed to be in solderable thermal contact with a base.
The application that led to the ’421 patent did not disclose a region on the bottom surface
of the LED assembly in solderable thermal contact with the base at the time of filing, as required
by independent claim 1 and dependent claim 6. Those claims are invalid for failure to satisfy the
written description requirement of 35 U.S.C. § 112. Ariad Pharm., 598 F.3d at 1351 (“[T]he test
for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject matter as of the filing
date.”).
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7. Indefiniteness
Respondents argue that the claim 1 phrase “thermally conductive region in solderable
thermal contact with the thermally conducting base” is indefinite in view of the language of
dependent claim 2. RIB at 86–87. This argument is a renewal of the argument Respondents raised
at the Markman claim construction hearing. See, e.g., Order No. 31 at 29–31. Respondents’
indefiniteness argument is denied at least for the same reasons set forth in my claim construction
order. Additionally, the evidence adduced at the hearing shows this claim language would inform,
with reasonable certainty, those skilled in the art about the scope of the invention. See Tr. (Kuball)
354:23–355:11, 357:25–361:6. Accordingly, Respondents have not shown the claim to be
indefinite. Nautilus, 134 S. Ct. at 2129.
VI. ECONOMIC PRONG OF THE DOMESTIC INDUSTRY REQUIREMENT
A. The Relevant Industry
To prove satisfaction of the economic prong of the domestic industry requirement, LSG
relies on the nineteen luminaire products previously discussed in my technical prong analysis for
the ’053 and the ’421 patents (collectively, the “DI Products”). CIB at xviii. The DI Products
incorporate the Luminus SST-20-W40H-J4401-LS LED package (alleged to practice the ’053
patent) and the Luminus MP-2835-21C1 and Edison 2835 1W 6V CR195 HL LED packages
(alleged to practice the ’421 patent).
Respondents argue that LSG has identified the incorrect articles of commerce for purposes
of the economic prong analysis, and that LSG has therefore failed to show a domestic industry.
See RRB at 117–24. Specifically, Respondents argue that the domestic industry should be
analyzed in the context of the three LED packages alleged to practice the asserted patents, and not
in the context of downstream luminaire products that incorporate the three Luminus- and
Edison-brand LED packages. See id. Respondents further argue that, because LSG has not
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quantified investments with respect to the three allegedly protected LED packages, it has failed to
demonstrate a domestic industry in those packages. Id. at 17.
The Commission adheres to a “long-standing principle that domestic industry (including
the definition of the article protected by the patent under section 337(a)(3), 19 U.S.C. 1337(a)(3))
is not determined by a rigid formula, but by an examination of the facts in each investigation, the
article of commerce, and realities of the marketplace.” Certain Batteries & Electrochemical
Devices Containing Composite Separators, Components Thereof, & Prods. Containing Same
(“Batteries & Electrochemical Devices”), Inv. No. 337-TA-1087, Comm’n Notice at 2 (Sept. 7,
2018). Commission precedent “illustrate[s] that where the imported product is a component of a
complete downstream product, the relevant domestic industry under the economic prong may,
under appropriate circumstance depending on the realities of the marketplace, be defined in terms
of a downstream product.” Certain Video Game Sys. & Wireless Controllers & Components
Thereof (“Video Game Systems”), Inv. No. 337-TA-770, Comm’n Op. at 67 (Oct. 28, 2013).
“Factors to consider regarding the realities of the marketplace analysis include whether the
patented technology is sold as a separate entity or article of commerce; whether it is an essential
component of the downstream product; and whether the domestic industry activities have a direct
relationship to exploitation of the patented technology.” Certain Magnetic Tape Cartridges &
Components Thereof (“Magnetic Tape”), Inv. No. 337-TA-1058, Comm’n Op. at 48 (Apr. 9,
2019).
Here, the Commission determined to institute an investigation into an industry that includes
luminaires. The Notice of Investigation for this matter defines the scope of investigation as
“(1) LED packages and assemblies; (2) LED luminaires; and (3) connected ‘smart’ LED lighting
systems and components thereof.” 84 Fed. Reg. 29877 (June 25, 2019). Arguably, then, the
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Commission has already answered the question of the relevant industry in this investigation. See
Certain Air Mattress Sys., Components Thereof, and Methods of Using the Same, Inv. No.
337-TA-971, Comm’n Op. at 42 (June 20, 2017) (“The articles sold by Complainant are air
mattress systems [as opposed to the patented air control components], which are reflected in the
title of this particular investigation.”).
To the extent the question remains open, the realities of the marketplace do not constrain
the relevant domestic industry to LED packages used in luminaires; the luminaries themselves are
also a material part of the industry. For example, while it is undisputed that LED packages are
sold as a separate article of commerce by some companies, testimony from the chief technology
officer of Lighting Science and Healthe26 demonstrated that such sales are primarily an input into
downstream articles such as the DI Products. Tr. (Maxik) 647:5–14, 757:10–759:2. The evidence
also shows that the LED packages at issue here are necessary for the DI Products to function as
intended. See Tr. (Maxik) 644:25–645:12, 651:20–652:11; Tr. (Prowse) 759:3–761:19;
RX-0144C (Maxik Dep.) at 260:4–261:9; RX-0131C (Zhou Dep.) at 137:1–14, 161:6–162:8,
240:3–20.
The evidence further shows that the domestic activities of LSG/Healthe have a direct
relationship to exploitation of the patented technology. The inventors contemplated that the
technology covered by the asserted patent claims would be used in light sources. See, e.g., ’421
patent at 1:27–30. That is an indication that luminaires are part of the relevant industry. See
Magnetic Tape, Comm’n Op. at 54 (recognizing investments in tape drives where “the Media
Patent specifications make clear that Sony’s claimed inventions are intended to improve the
26 LSG relies only on domestic expenditures by Lighting Science and Healthe to prove satisfaction
of the economic prong of the domestic industry requirement. See Tr. (Maxik) 621:8–12. Lighting
Science and Healthe are hereinafter collectively referred to as “LSG/Healthe.”
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performance of [patented] tape media when they are used in conjunction with [unpatented] tape
drives”). Additionally, Mr. Maxik testified that the only way LSG exploits the asserted patents is
by incorporating the three Luminus and Edison LED models into the DI Products. Tr. (Maxik)
647:20—25 (describing how LSG’s LED package development became “commercially unviable’),
758:2-17. This evidence also supports a conclusion that luminaires are part of the relevant
industry. Magnetic Tape, Comm’n Op. at 53 (“investments necessary to bring to market the
patented technology” are appropriately considered in a domestic industry analysis).
In sum, I conclude that the nineteen luminaire products LSG includes in its definition of
DI Products are appropriately considered to be part of the domestic industry.
B. LSG/Healthe’s Domestic Expenditures
LSG argues it has demonstrated the existence of a domestic industry under section
337(a)(3)(B), which requires a showing of “significant employment of labor or capital.” See CIB
at 221-22. LSG provides the following table summarizing its alleged domestic investments:
DI-Table 1: U.S. Expenditures on LSG/Healthe’s DI Products
?053 DI Product °421 DI Products
(2015-May 2019) (2014-May 2019)
Section 337(a)(3)(B)
Labor or Capital | | pe |
Total
Id. at 222 (citmg Tr. (Prowse) 785:18-22; CDX-0007C.35; CDX-0008C.0067—.0068;
CDX-0008C.0066—.0159; CX-4236).
1. Labor Activities and Expenditures
The evidence shows that Lighting Science and Healthe are U.S. companies using domestic
employees and contractors to conduct the majority of research and development (“R&D”) on the
DI Products at LSG/Healthe’s U.S. facilities or elsewhere in the United States. See Tr. (Maxik)
Tr. 637:17—638:23, 643. Messrs. Maxik and Lee provided testimony to establish that LSG/Healthe
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120
used either an inside-out or an outside-in approach to bring the DI Products to market. See Tr.
(Maxik) 641–642; RX-0130C (Lee Dep.) at 173:22–178:2. With the inside-out approach,
LSG/Healthe employees conducted R&D to introduce technology into the market before designing
and developing products that implemented that technology. See Tr. (Maxik) 641. With the
outside-in approach, LSG/Healthe product development employees went into the market and
conducted research to bring back to the company; they then worked together with the R&D team
to develop products to address needs in the market. See Tr. (Maxik) 641–42; RX-0130C (Lee
Dep.) at 173:22–178:2.
Mr. Maxik and other LSG/Healthe employees testified that to create, develop, test, and
bring the DI Products to market, they performed at least the following R&D activities within the
United States: LED package criteria evaluation and selection; LED package selection, evaluation,
specification, and customization; LED package testing, such as performance, suitability, and
photometric testing (e.g., sphere, life, and goniometric, and material compatibility testing); LED
package design optimization; LED package spectrum design; LED die selection and specification
(e.g., die characteristics and phosphor/encapsulant customization); LED and printed circuit board
layout design and prototyping; LED package efficiency improvements based on current and
voltage; system electronics implementation; thermal management research, design, modeling,
simulations, and testing; materials research and case studies for spectrum filtering and heat sink
material; light spectrum development; LED color mixing and incorporation into product design;
optical design, testing, evaluation, validation, and optimization; light guide optical structure
design; research and implementation of improvements to photometric and spectrum output; lumen
output and bulb efficacy improvements; mechanical design and prototyping; research and
implementation of improvements to mechanical and optical design; power supply design,
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prototyping, and improvement research and implementation; product specification defining;
product structural, industrial, and outward finish design; product prototyping. See Tr. (Maxik)
686:23–687:16, 689–692, 740:7–741:25; CX-1226C; CX-1213C; CX-1149C; RX-0144C (Maxik
Dep.) at 544–45; RX-0131C (Zhou Dep.) at 20–21, 42–47, 51–52, 54–58, 60–63, 68–69,
80:18–81:20, 83–84, 86–90, 93:5–94:21, 101–108, 111:10–121:9, 128–130, 149:17–152:4,
240:10–20; RX-0136C (Palé Dep.) at 31–32, 41–42, 93–94; RX-0130C (Lee Dep.) at 75–78,
173:22–180:25, 183:11–193:13, 202:17–204:18; RX-0140C (Widjaja Dep.) at 7–9, 12–13;
RX-0139C (Regan Dep.) at 6, 8:16–9:19, 15:15–16:22, 19–30, 31:7–11, 49:4–51:16, 54:7–55:8;
RX-0141C (Bartine Dep.) at 6, 8:8–26:4, 31:16–32:3, 37:1–6.
LSG/Healthe does not track employee hours or the number of hours employees spend
working on individual products in the regular course of business. See Tr. (Maxik) 681:20–22. In
order to allocate labor expenses related to employees who contributed some portion of their time
to the design, engineering, and R&D of the DI Products, Fred Maxik (LSG/Healthe’s chief
technology officer), Ran Zhou (head of R&D), Khim Lee (Healthe’s CEO and LSG’s president),
and Jonathan Palé (Healthe’s former vice-president of engineering and operations) compiled
hourly time estimates for these employees.27 Tr. (Maxik) 681–82, 684; RX-0131C (Zhou Dep.)
at 176, 178–80; RX-0136C (Palé Dep.) at 15–17; CX-1219C.
Respondents argue that the hourly estimates in evidence are unreliable because the persons
making the estimates failed to “consult any documents that actually reflected time worked, nor did
they break the alleged labor down by tasks or projects.” See RRB at 138–39. I am not persuaded
by Respondents’ argument. The evidence shows that Messrs. Maxik, Zhou, Lee, and Palé are the
27 LSG refers to LSG/Healthe employees that worked on one or more of the DI Products as the
“DI Employees.” CIB at xviii. I will adopt that convention for purposes of the economic prong
discussion.
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most knowledgeable about LSG/Healthe’s R&D operations and have been heavily involved in the
oversight and general management of the R&D efforts for the DI Products. See Tr. (Maxik)
622:21–623:16, 629:4–20, 648:10–21, 665:20–666:23, 681:11–682:23, 684–685, 742:5–11;
RX-0130C (Lee Dep.) at 27, 90, 188; RX-0136C (Palé Dep.) at 6, 40–41; RX-0131C (Zhou Dep.)
at 10–17. They compiled the labor hour estimates based on their first-hand knowledge of the DI
Employees, the R&D work on the DI Products, LSG/Healthe’s R&D process, and the DI Products
themselves. See Tr. (Maxik) 622:21–623:16, 629:4–20, 648:10–21, 665:20–666:23,
681:11–682:23, 684–685, 742:5–11; RX-0130C (Lee Dep.) at 27, 90, 188; RX-0136C (Palé Dep.)
at 6, 40–41; RX-0131C (Zhou Dep.) at 10–17. Additionally, they corroborated their estimates
with documents from employees, expenditure documents, calendar entries, project documentation,
and discussions with current employees regarding their work on the DI Products. See Tr. (Maxik)
675:4–676:4, 681–682, 684–685, 742–743; RX-0144C (Maxik Dep.) at 257:9–258:4,
345:12–346:2; RX-0130C (Lee Dep.) at 194, 197–198, 234; RX-0131C (Zhou Dep.) at 178-186;
see also JX-0235C; JX-0327C; JX-0284C–JX-0285C; JX-0288C–JX-0289C; JX-0293C;
JX-0297C–JX-0298C; JX-0166C; CX-1112C; CX-1131C; CX-1151C–CX-11157C;
CX-1160C–CX-1162C; CX-1164C–CX-1170C; CX-1172C–CX-1183C; CX-1204C–CX-1210C;
CX-1223C–CX-1226C. I find that the labor hours estimates submitted by LSG based on work
performed by Messrs. Maxik, Zhou, Lee, and Palé are reliable for purposes of the economic prong
analysis.
In more granular arguments, Respondents contend that LSG counted work on the
GoodNight A19, SleepBaby P15, Series A+ Gimbal Lamp, and GoodDay A19 luminaire products
before LSG determined to utilize one of the allegedly protected packages in those products. RRB
at 125 (citing Tr. (Prowse) 775:9–776:8, 801:25–802:8), 128–32. I do not find Respondents’
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arguments persuasive. The disputed expenditures were made during development of final versions
of the products in question, and those final versions contain the LED packages at issue. Thus, the
disputed investment are part of an industry “relating to [ ] articles protected by the patent.” See
19 U.S.C. 1337(a)(2); see also CIB at 237–39 (citing, inter alia, Tr. (Maxik) 660:18–661:21; Tr.
(Prowse) 775, 800:12–20, 801:25–803:9, 806:7, 807:21–808:5; RX-0144C (Maxik Dep.) at
428:5–434:6, 471:3–18, 473:8–15, 476:14–20). Moreover, LSG offered credible testimony from
its employees to demonstrate that the DI Products contain the relevant LED packages. See CIB at
238–39 n.754 (citing to testimony from Messrs. Maxik and Zhou).
Respondents also argue that LSG’s labor figures should be discounted because they
“include an indeterminable amount of sales and marketing expenditures.” RRB at 135–38. “While
marketing and sales activity, alone, may not be sufficient to meet the domestic industry test, those
activities may be considered as part of the overall evaluation of whether or not a Complainant
meets the economic prong.” See Certain Printing & Imaging Devices & Components Thereof
(“Printing & Imaging Devices”), Inv. No. 337-TA-690, Order No. 24 at 34 (Apr. 21, 2010), rev’d
on other grounds, Comm’n Op. at 30–31; see also Certain Mobile Devices & Related Software,
Inv. No. 337-TA-750, Initial Determination at 6 (Sept. 15, 2011) (“The Commission has embraced
a flexible, market-oriented approach to domestic industry, favoring case-by-case determination ‘in
light of the realities of the marketplace’ that encompass ‘not only the manufacturing operations’
but may also include ‘distribution, [R&D] and sales.’”). To the extent any of LSG/Healthe’s labor
expenditures are related to sale and marketing activities, I find that they are appropriate domestic
industry expenditures under the facts of this case. LSG/Healthe is not a mere importer relying
solely on marketing expenditures for its domestic industry. Cf. Schaper Mfg. Co. v. U.S. Int’l
Trade Comm’n, 717 F.2d 1368, 1373 (Fed. Cir. 1983) (“large expenditures for advertising and
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promotion” alone do not transform the activities of a “normal importer” into a domestic industry).
LSG designed and developed the DI Products in the United States, and its marketing expenses are
reasonably included in an industry related to the allegedly protected articles. See Certain Loom
Kits, Inv. No. 337-TA-923, Comm’n Op. at 5–8 (June 26, 2015) (crediting several forms of
marketing as contributing to the domestic industry where other domestic activities, including
domestic design activities, distinguished the complainant from a mere importer).
LSG adduced evidence showing that LSG/Healthe designed, researched, developed,
planned, evaluated, and commercialized each of the DI Products in the United States, expending
approximately R&D labor hours on the ’053 DI Product and over R&D labor hours
on the ’421 DI Products. See Tr. (Maxik) 643, 664. The evidence shows that LSG/Healthe has
employed over U.S. employees, and all of LSG/Healthe’s employees have been located in the
United States since 2015. See Tr. (Maxik) 664:14–21; CX-1131C. From 2015 through May 2019,
at least LSG/Healthe employees performed R&D activities for the ’053 DI Product and,
from 2014 through May 2019, at least LSG/Healthe employees performed R&D activities
for the ’421 DI Products. See CX-1219C; JX-0144C. LSG/Healthe also employed external
consultants and vendors within the United States to assist with certain R&D efforts related to the
DI Products. See Tr. (Maxik) 643:16–20, 667:23–668:25, 691:12–692:2; Tr. (Prowse)
781:9–782:3.
LSG/Healthe’s domestic labor expenditures for the relevant period include salaries,
benefits, employee insurance, and other expenses for the DI Employees, as well as payments made
to external consultants and vendors. See Tr. (Prowse) 769:15-781:4; CX-1147C;
CX-1156C–CX-1157C; CX-1166C; CX-1168C; CX-1170C; CX-1186C; CX-1188C;
CX-1207C–CX-1209C; CX-1219C; CX-1228C; JX-0144C; JX-0150C; JX-0151C.
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Based on the record evidence, I find LSG/Healthe spent from 2015 through May
2019 on labor for an industry relating to the ’053 DI Product, and spent from 2014
through May 2019 on labor for an industry relating to the ’421 DI Products. See Tr. (Prowse)
776:13–781:8 (referring to CDX-0007C.23, .26; CDX-0008C.0070, .0092).
2. Capital Expenditures
The evidence shows that LSG/Healthe has made investments in its domestic facilities in
Cocoa Beach, Melbourne, Cape Canaveral, and West Warwick, where its employees performed
R&D on the DI Products. See Tr. (Maxik) 637:17–638:23, 669:1–772:3; CX-1115C–CX-1116C,
CX-1118C; CX-1123C; CX-1125C; CX-1133C; CX-1219C; JX-0131C–JX-0138C; JX-0145C;
JX-0156C. These expenditures include rent, utilities, building maintenance, and property
insurance. See Tr. (Prowse) 782:8–21; CX-1134C–CX-1140C; CX-1147C; CX-1192C–
CX-1195C; JX-0146C; JX-0152C. Based on information gathered by LSG, Dr. Prowse calculated
that, from 2015 through May 2019, LSG/Healthe spent for facilities where R&D for the
’053 DI Product took place and for the facilities where R&D for the ’421 DI Products
took place. See Tr. (Maxik) 669:1–672:3; Tr. (Prowse) 782:8–784:9; CX-1135C–CX-1139C;
CX-1192C–CX-1196C.
The evidence also shows that LSG/Healthe has purchased, maintained, and leased
equipment to perform R&D activities for the DI Products. See Tr. 672:5–674:13 (Maxik);
JX-0158C; CX-1202C. Based on information provided by LSG, Dr. Prowse calculated that
LSG/Healthe spent on equipment used on the ’053 DI Product from 2015 through May
2019, and spent on equipment used on the ’421 DI Products from 2014 through May 2019.
See Tr. (Prowse) 784:10–785:3; JX-0158C; CX-1202C.
Based on the record evidence, I find LSG/Healthe made capital investments of
from 2015 through May 2019 in an industry relating to the ’053 DI Product, and made capital
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investments of from 2014 through May 2019 in an industry relating to the ’421 DI
Products. See Tr. (Prowse) 781:5–785:22 (referring to CDX-0007C.23, .26, .30–.35;
CDX-0008C.0066–.0159); CX-1219C.28
C. Significance
LSG’s expert Dr. Prowse testified that the domestic investments by LSG/Healthe are
qualitatively significant at least because the R&D efforts gave rise to the DI Products and those
products have enabled LSG to pioneer new markets. Tr. (Prowse) 789–791. The evidence
demonstrates that LSG/Healthe is an American company whose domestic R&D investments form
the foundation of every product it sells. See Tr. (Maxik) 654:24–655:6; Tr. (Prowse) 755:10–20.
Moreover, LSG/Healthe employees within the United States conceptualized, developed,
prototyped, tested, sourced, and designed for manufacturing every DI Product at its domestic
facilities, and the DI Products would not exist without the domestic investments summarized
above. See Tr. (Maxik) 641–642, 643:6–644:12, 686:24–687:20; Tr. (Prowse) 755, 789–790.
Respondents argue that the domestic expenditures by LSG/Healthe are not qualitatively
significant because LSG/Healthe is not successful as a company. See RRB at 139–40. I am not
persuaded by this argument. Although commercial success may be relevant to the domestic
industry analysis in some contexts, it is not a threshold requirement for a domestic industry.
28 LSG/Healthe also alleges it incurred domestic expenditures for “product inputs” for developing
prototypes, product design, and R&D activities for the DI Products. See Tr. (Maxik) 666:24–
667:22; CX-1112C; CX-1151C–CX-1157C; CX-1160C–CX-1162C; CX-1164C–CX-1170C;
CX-1172C–CX-1183C; CX-1204C–CX-1210C. Based on a subset of invoices produced by LSG
in this investigation, Dr. Prowse calculated that LSG/Healthe spent at least on R&D
product inputs for the ’421 DI Products from 2015 through May 2019. See Tr. (Prowse)
785:4–14; CX-1112C.0096, .2368, .2452, .2718; CX-1151C; CX-1153C. In its post-hearing brief,
LSG did not describe what these “product inputs” are or how they are related to an industry in
allegedly protected articles. I therefore decline to consider these expenditures further in my
domestic industry analysis.
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Compare Motiva, LLC v. Int’l Trade Comm’n, 716 F.3d 596, 601 (Fed. Cir. 2013) (affirming no
domestic industry where the market had no interest in exploiting the patented technology) with
Certain Television Sets, Television Receivers, Television Tuners, & Components Thereof, Inv. No.
337-TA-910, Comm’n Op. at 69 (Oct. 30, 2015) (“Commission precedent indicates that where
production, development or sales of protected articles have declined or even ceased entirely, a
domestic industry may nevertheless be established based on past significant or substantial
investments relating to the protected articles provided that complainant continues to maintain
ongoing qualifying activities under section 337(a)(3) at the time the complaint is filed.”) and
Certain Non-Volatile Memory Devices, Inv. No. 337-TA-1046, Comm’n Op. at 40–45 (Oct. 26,
2018) (the text of the statute, the legislative history, and past Commission practice demonstrate
that the term “article” in section 337(a)(2) “is sufficiently capacious to embrace pre-commercial
or non-commercial items”).
Here, there is ample evidence that LSG/Health is a going concern and that it continues to
pay U.S. employees and make other domestic investments to exploit the patented technology.
LSG/Healthe continues to incorporate the LED packages at issue into new products. See Tr.
(Maxik) 696:7–697:7; RX-0130C (Lee Dep.) at 33–36, 39–40, 243–250, 252:24–254:6;
RX-0131C (Zhou Dep.) at 47:15–22, 49:8–51:17. LSG/Healthe continues to seek out new
business opportunities related to the DI Products, and additional customers have requested
customizations to the DI Products. See RX-0130C (Lee Dep.) at 33–36, 39–40. LSG also
presented evidence showing that none of the DI Products have been discontinued and all remain
available for purchase. See Tr. (Maxik) 629:21–630:1; RX-0130C (Zhou Dep.) at 94:21–25;
RX-0144C (Maxik Dep.) at 59:16–60:22, 352:16–353:12, 426:5–8; see also Tr. (Maxik)
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629:21–630:1 (testifying that Good Day&Night Downlight and Troffer have been renamed to
SunTrac™ Downlight and Troffer).
As for whether LSG/Healthe’s domestic expenditures are quantitatively significant, LSG
argues that the total labor and capital investments related to LSG/Healthe’s R&D activities “are
significant when compared to LSG/Healthe’s comparable activities domestically and abroad.”
CIB at 248. Specifically, LSG argues:
LSG/Healthe has no employees performing R&D on the DI Products
overseas, meaning that all of LSG/Healthe’s employment of labor for R&D
of the DI Products is domestic.
CIB at 248 (citing Tr. (Maxik) 664–665; Tr. (Prowse) 792; CDX-0007C.0039).
The vast majority of all R&D investments made by LSG/Healthe in the DI
Products were incurred entirely within the United States.
CIB at 248 (emphasis original) (citing Tr. (Maxik) 643–644; Tr. (Prowse) 792–793).
From 2015 through 2018, LSG/Healthe’s domestic investments in R&D
labor and capital associated with the ’053 DI Product represented
approximately of LSG/Healthe’s total R&D expenses, and from 2014
through 2018, domestic investments in the ’421 DI Products represented
approximately of LSG/Healthe’s total R&D expenses.
CIB at 248–49 (citing Tr. (Prowse) 786; CDX-0007C.0040; CDX-0008C.0067-.0068; JX-0155C;
JX-0143).
The number of LSG/Healthe employees who worked on the DI Products is
significant compared to the company’s total employees. From 2015 to 2019,
approximately to of LSG/Healthe employees with an average
of worked on the ’053 DI Products. From 2014 to 2019,
approximately to of LSG/Healthe employees with an average
worked on the ’421 DI Products.
CIB at 249 (citing Tr. (Prowse) 787–88; CDX-0008C.0121).
From 2015 through May 17, 2019, the R&D hours worked by the DI
Employees represented for the ’053 DI Product and for the
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’421 DI Products of total labor hours for all of LSG/Healthe’s R&D
employees.
CIB at 249 (citing Tr. (Prowse) 787; CDX-0008C.0138).
LSG/Healthe’s labor and capital expenditures related to the technology in both patents total
. This includes labor expenditures of from 2015 through May 2019 for the
’053 DI Product, labor expenditures of from 2014 through May 2019 for the ’421 DI
Products, capital investments of from 2015 through May 2019 for the ’053 DI Product,
and capital investments of from 2014 through May 2019 for the ’421 DI Products. See
Tr. (Prowse) 776:13–785:22 (referring to CDX-0007C.23, .26, .30–.35; CDX-0008C.0066–
.0159). I find that total to be significant in view of the facts of this investigation, the articles of
commerce at issue, and the realities of the marketplace. The size of the R&D investment over the
relevant period is particularly substantial for a small company like LSG/Healthe. For all of the
reasons explained above, I find that LSG has shown satisfaction of the economic prong of the
domestic industry requirement under 19 U.S.C. § 1337(a)(3)(B).
VII. CONCLUSIONS OF LAW
1. The importation requirement has not been satisfied with respect to respondents
OSRAM GMbH, OSRAM Licht AG, and Lumileds Holding B.V.
2. The importation requirement has been satisfied with respect to the other named
respondents in this investigation.
3 The Commission has subject matter, personal, and in rem jurisdiction in this
investigation.
4. Claims 1, 2, and 5 of the ’053 patent have not been infringed.
5. Claims 1 and 6 of the ’421 patent have not been infringed.
PUBLIC VERSION
130
6. The technical prong of the domestic industry requirement has not been satisfied
with respect to either the ’053 patent or the ’421 patent.
7. The economic prong of the domestic industry requirement has been satisfied.
8. Claims 1, 2, and 5 of the ’053 patent have not been shown invalid by clear and
convincing evidence.
9. Claims 1 and 6 of the ’421 patent have been shown invalid as anticipated and
obvious in view of the prior art.
10. Claims 1 and 6 of the ’421 patent have been shown invalid as failing to satisfy the
written description requirement of 35 U.S.C. § 112.
VIII. RECOMMENDED DETERMINATION ON REMEDY & BOND
The Commission’s Rules provide that the administrative law judge shall issue a
recommended determination concerning the appropriate remedy in the event that the Commission
finds a violation of section 337, and the amount of bond to be posted by respondents during
Presidential review of the Commission action under section 337(j). See 19 C.F.R.
§ 210.42(a)(l)(ii).
A. Findings of Fact Relevant to Remedy and Bond
The Commission did not ask me to take public interest evidence or to provide findings and
recommendations concerning the public interest. 84 Fed. Reg. 29877 (June 25, 2019). Thus, in
accordance with the usual Commission practice and the applicable Commission Rule, the
Commission will determine the role that public interest factors may play in this investigation. See
19 C.F.R. § 210.50(b)(1).
B. Limited Exclusion Order
The Commission has broad discretion in selecting the form, scope, and extent of the
remedy in a section 337 proceeding. Viscofan, S.A. v. U.S. Int’l Trade Comm’n, 787 F.2d 544,
PUBLIC VERSION
131
548 (Fed. Cir. 1986). A limited exclusion order directed to a respondent’s infringing products is
among the remedies that the Commission may impose. See 19 U.S.C. § 1337(d).
LSG argues that, in the event a violation of section 337 is found, “the Commission should
issue LEOs directed to each Respondent, as well as its affiliated companies, parents, subsidiaries,
or other related business entities, or their successors or assigns, prohibiting entry of products and
components thereof that infringe the Asserted Patents that were manufactured or imported by or
on behalf of Respondents, or any of their affiliated companies, parents, subsidiaries, successors,
assigns, or other related business entities, for the remaining term of the Asserted Patents, except
under license of the patents’ owner or as provided by law.” See CIB at 256.
Respondents argue that, in the event a limited exclusion order issues, “it should not cover
products of non-named parties, including their downstream products.” RIB at 144 (citing Kyocera
Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356 (Fed. Cir. 2008)). Respondents
also argue that “ any limited exclusion order should, as is customary, include a provision whereby
Respondents can certify that their imported products are not subject to exclusion.” Id.
Because I do not find a violation of section 337, I do not recommend that a limited
exclusion order should issue. However, if the Commission determines that a violation of section
337 has occurred and if consideration of the statutory public interest factors does not require that
remedies be set aside or modified, I recommend that the Commission issue a limited exclusion
order barring entry of products that infringe the asserted patents. Consistent with Kyocera Wireless
Corp., the entities named in the limited exclusion order should be the named Respondents found
in violation of section 337. 545 F.3d at 1356. Any limited exclusion order should include a
PUBLIC VERSION
132
provision whereby Respondents can certify that their imported products are not subject to
exclusion.29
C. Cease and Desist Order
Section 337 provides that in addition to, or in lieu of, the issuance of an exclusion order,
the Commission may issue a cease and desist order as a remedy for a violation of section 337.
19 U.S.C. § 1337(f)(1). The Commission may issue a cease and desist order when it has personal
jurisdiction over the party against whom the order is directed. Gamut Trading Co. v. U.S. Int’l
Trade Comm’n, 200 F.3d 775, 784 (Fed. Cir. 1999).
Because I do not find a violation of section 337, I do not recommend that cease and desist
orders should issue against the Respondents. For the benefit of the Commission, however, I
evaluate the hypothetical scenario in which the Commission determines that a violation of section
337 has occurred and consideration of the statutory public interest factors does not require that
remedies be set aside or modified.
Under Commission precedent, “[c]ease and desist orders are generally issued when, with
respect to the imported infringing products, respondents maintain commercially significant
inventories in the United States or have significant domestic operations that could undercut the
remedy provided by an exclusion order.” Certain Air Mattress Systems, Components Thereof, and
Methods of Using the Same, Inv. No. 337-TA-971, Comm’n Op. at 49 (May 17, 2017) (citations
and footnote omitted). “A complainant seeking a [cease and desist order] must demonstrate, based
29 This certification provision would allow Acuity, for instance, to certify that none of its products
incorporate the Nichia 219B series of LED packages alleged to infringe the ’053 patent. See supra
Section IV.A.1.b.
PUBLIC VERSION
133
on the record, that this remedy is necessary to address the violation found in the investigation so
as to not undercut the relief provided by the exclusion order.” Id. at 50.
LSG argues that the Commission should issue cease and desist orders against all
Respondents except Cree.30 CIB at 257. Specifically, LSG argues:
[Cease and desist orders] directed at these Respondents are necessary in
view of the commercially significant inventories of Accused Products they
either stipulated to holding in the U.S. or were determined to hold in the
U.S. based on their responses to the Complaint and discovery responses,
which demonstrate their respective abilities to promptly fill customer
orders. [The] non-Cree Respondents still hold commercially significant
inventories of the Accused Products in the U.S. [Cease and desist orders]
will ensure that these inventoried Accused Products are not disseminated in
the United States. These [cease and desist orders] should prohibit
Respondents from importing, selling for importation, marketing,
distributing, offering for sale, selling, transferring, advertising, soliciting
U.S. agents or distributors, or aiding and abetting others in the importation,
sale for importation, sale after importation, transfer, or distribution of
products that infringe the Asserted Patents.
Id.
Respondents contend that LSG’s argument for cease and desist orders “suffers from several
critical flaws.” RRB at 145. In particular, Respondents argue that LSG has failed to show that
any inventory of accused products held by Respondents in the United States is commercially
significant. See id. at 145–49 (including specific arguments for OSRAM, Nichia, Lumileds,
Acuity, LEDVANCE). Respondents also point out that LSG’s request for cease and desist orders
improperly extends to all non-Cree Respondents, even those that do not hold inventories in the
United States. Id. at 145–46.
The Commission has found inventories to be “commercially significant” based on a
comparison between the quantity and the volume of product at issue sold or imported over time.
30 LSG concedes that Cree does not hold relevant inventories of accused products in the United
States. See Tr. (Malkiewicz) 821:8–14.
PUBLIC VERSION
134
Certain Optoelectronic Devices for Fiber Optic Commc’ns, Components Thereof & Prods.
Containing Same, Inv. No. 337-TA-860, Comm’n Op. at 36–37 (May 9, 2014); Certain Abrasive
Prods. Made Using a Process for Powder Preforms, & Prods. Containing Same, Inv. No.
337-TA-449, Comm’n Op., USITC Pub. No. 3530 (Aug. 2002).
To assess the commercial significance of OSRAM’s domestic inventory, LSG compared
the number of units in OSRAM’s inventory with the number of units sold by LSG
in a month See CDX-0009C.0093. LSG argues that OSRAM’s inventory is
commercially significant because comprises more than of LSG’s monthly
sales. See id. Yet, the fact that LSG does not sell many units in a month does not necessarily mean
that OSRAM’s inventory is commercially significant. When compared with OSRAM’s monthly
sales average of OSRAM’s inventory of units is less than a
worth of sales (assuming a See id. I find that OSRAM’s domestic inventory is de
minimis and is not commercially significant. See Optoelectronic Devices, Comm’n Op. at 36–37
(evaluating significance by comparing the respondent’s imports with its inventory, not with the
complainant’s market share).
Nichia argues that a cease and desist order should not issue as to Nichia Corporation
because all domestic inventories are held by Nichia America Corporation (“NAC”). See RRB at
147. The domestic inventories held by NAC total . See CDX-0009C.0086. When
compared with Nichia’s monthly sales average of , the inventory equals
approximately worth of sales. See id. I find that this amount of inventory is commercially
significant.
Lumileds holds in its domestic inventory and sells on average
units per month. See CDX-0009C.0074. Its domestic inventory thus equals approximately
PUBLIC VERSION
135
worth of sales. I find that Lumileds’s domestic inventory is de minimis and is not
commercially significant.
Acuity’s domestic inventories are valued at See CDX-0009C.0042. When
compared with Acuity’s monthly sales, this inventory comprises
See RRB at
148 n.566, 149 n.567 (citing CDX-0010C Exs. 2.0 and 2.1). I find that this amount of inventory
is commercially significant.
LEDVANCE’s policy is to maintain a domestic inventory of 1 to 1.5 months’ worth of
sales. See Tr. (Fetten) 1124:3–11. I find that this amount of inventory is commercially significant.
Current’s domestic inventories are valued at See CDX-0009C.0054. I find
that Current’s domestic inventory is commercially significant.
GE holds units in its domestic inventory and sells on average units
per month. See CDX-0009C.0060. Its domestic inventory thus equals approximately
worth of sales. I find that GE’s domestic inventory is commercially significant.
Leedarson has stipulated that its domestic inventory of products is commercially significant
for purposes of this investigation. JX-0010C ¶ 4.
Signify holds units in its domestic inventory and sells on average units per
month. See CDX-0009C.0099. Its domestic inventory thus equals more than 4 years’ worth of
sales. I find that Signify’s domestic inventory is commercially significant.
I next consider whether LSG’s showing of commercially significant domestic inventories
held by Nichia, Acuity, LEDVANCE, Current, GE, Leedarson, and Signify automatically entitles
LSG to cease and desist orders against those entities. As noted above, the Commission has stated
that a complainant has an affirmative burden to show that a cease and desist order “is necessary to
PUBLIC VERSION
136
address the violation found in the investigation so as to not undercut the relief provided by the
exclusion order.” See, e.g., Certain Air Mattress Systems, Comm’n Op. at 49–50 (emphasis
added). Here, LSG has offered no argument or evidence as to why a limited exclusion order
against any violating respondent would not afford it complete relief, making cease and desist
orders necessary. See CIB at 257. On this record, it is not clear LSG has met the burden the
Commission has articulated in many past determinations.
Nevertheless, the Commission has “broad discretion” in determining whether to issue a
cease and desist order in a contested case. Viscofan, S.A. v. U.S. Int’l Trade Comm’n, 787 F.2d
544, 548 (Fed. Cir. 1986). The exercise of that discretion is highly fact-specific. For example, in
one opinion the Commission speculated that in some circumstances even two weeks’ worth of
inventory could have an “adverse effect upon the complainant” and justify cease and desist orders:
[A]s a practical matter, a complainant will not be afforded complete relief
so long as a respondent is allowed to sell without bond any commercially
significant level of product in its inventory. If a respondent is permitted to
sell without bond a “customary” inventory equal to, for example, two
weeks’ worth of sales, then the complainant still will be confronted with
that amount of unfair import competition after issuance of an exclusion
order. The adverse effect upon the complainant may be less than if the
respondent had inventory equal to four weeks’ worth of sales, but it is not
insignificant or non-existent.
Certain Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, Comm’n Op. at 38, USITC
Pub. No. 2391 (June 1991) (emphasis added). In disposing of that same investigation, the
Commission noted it had required the complainant to identify “specific information . . . necessary
to justify the issuance of permanent cease and desist orders.” Id.
Thus, even if two weeks of domestic inventory could justify cease and desist orders in
some cases, LSG is not relieved of its the burden to show here that a cease and desist order “is
necessary to address the violation found in the investigation so as to not undercut the relief
provided by the exclusion order.” See, e.g., Certain Air Mattress Systems, Comm’n Op. at 49-50
PUBLIC VERSION
137
(emphasis added). LSG has failed to meet that burden. Although some of the Respondents do
hold commercially significant domestic inventories of accused products, LSG’s scant briefing
failed to show that cease and desist orders are necessary to prevent those respondents from
undercutting the remedy provided by a limited exclusion order. On the facts of this record, it is
my recommendation that no cease and desist orders issue if a violation is found.
D. Bond During Presidential Review
Pursuant to section 337(j)(3), the administrative law judge and the Commission must
determine the amount of bond to be required of a respondent, during the 60-day Presidential review
period following the issuance of permanent relief, in the event that the Commission determines to
issue a remedy. The purpose of the bond is to protect the complainant from any injury. 19 U.S.C.
§ 1337(j)(3); 19 C.F.R. §§ 210.42(a)(1)(ii), 210.50(a)(3).
When reliable price information is available, the Commission has often set the bond by
eliminating the differential in sales prices between the domestic product and the imported,
infringing product. Certain Microsphere Adhesives, Process for Making Same, and Products
Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op.
at 24, USITC Pub. No. 2949 (1995). In other cases, the Commission has turned to alternative
approaches, especially when the level of a reasonable royalty rate could be ascertained. See
Certain Integrated Circuit Telecommunication Chips and Products Containing Same, Including
Dialing Apparatus, Inv. No. 337-TA-337, Comm’n Op. at 41-43, USITC Pub. No. 2670 (1995).
A 100-percent bond has been required when no effective alternative existed. Certain Flash
Memory Circuits and Products Containing Same, Inv. No. 337-TA-382, USITC Pub. No. 3046,
Comm’n Op. at 26-27 (July 1997) (a 100-bond imposed when price comparison was not practical
because the parties sold products at different levels of commerce, and the proposed royalty rate
appeared to be de minimis and without adequate support in the record).
PUBLIC VERSION
138
With respect to bond, LSG argues that bond should be set “based on the royalty rate that
LSG has previously entered into with other manufacturers of LED products.” CIB at 259. LSG’s
expert Mr. Malkiewicz testified that the royalties found in LSG’s license agreements provide
information to determine a specified royalty rate ranging from percent, or to derive an
implied or effective royalty rate ranging from approximately percent. See Tr. (Malkiewicz)
851, 867; JX-0171C–JX-0191C; CX-1728C. Based on this information, LSG argues that the bond
should be set at 5 percent. CIB at 259 (citing Tr. (Malkiewicz) 820, 853, 867, 870).
Respondents take the position that “LSG failed to meet its burden of establishing that a
bond is warranted during the Presidential review period.” RRB at 151; see also Certain Cases for
Portable Elec. Devices, Inv. No. 337-TA-867, Comm’n Op. at 21 (July 10, 2014) (“Complainant
bears the burden of establishing the need for a bond amount in the first place.”). Specifically,
Respondents argue that LSG “failed to analyze what injury LSG would suffer during the
Presidential review period if a bond is not issued” and therefore the bond rate should be set at zero
percent. Id. (citing Certain X-Ray Breast Imaging Devices & Components Thereof, Inv. No.
337-TA-1063, Initial Determination at 280 (Sept. 26, 2018) (setting the bond at zero percent even
though complainants offered a price differential calculation because complainants failed to
“conduct an injury analysis and could only speculate as to whether [respondents’] sales would
injure [complainant]”)).
Having considered the arguments of the parties and the evidence of record, I find that LSG
has failed to demonstrate that a bond is warranted under the circumstances of this investigation.
Specifically, LSG has not argued that a bond is needed to protect it from injury during the 60-day
Presidential review period in the event the Commission finds a violation of section 337. See CIB
at 258–59. Therefore, it is my recommendation that the Commission, in the event it finds a
PUBLIC VERSION
139
violation of section 337 has occurred, set a zero percent bond for any importations of infringing
products during the Presidential review period.
IX. INITIAL DETERMINATION ON VIOLATION
For the reasons set forth above, it is my initial determination that a violation of section 337
of the Tariff Act, as amended, has not occurred in the importation into the United States, the sale
for importation, or the sale within the United States after importation, of certain light-emitting
diode products, systems, and components thereof based on allegations of infringement of U.S.
Patent No. 7,095,053 and U.S. Patent No. 7,528,421.
I hereby certify to the Commission this Initial Determination and the Recommended
Determination.
The Secretary shall serve the confidential version of this Initial Determination upon
counsel who are signatories to the Protective Order (Order No. 1) issued in this investigation. A
public version will be served at a later date upon all parties of record.
Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the
determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R.
§ 210.43(a) or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review
of the Initial Determination or certain issues therein.
X. ORDER
Within seven days of the date of this document, the parties shall jointly submit a single
proposed public version with any proposed redactions indicated in red. If the parties submit
excessive redactions, they may be required to provide declarations from individuals with personal
knowledge, justifying each proposed redaction and specifically explaining why the information
sought to be redacted meets the definition for confidential business information set forth in
19 C.F.R. § 201.6(a). To the extent possible, the proposed redactions should be made
PUBLIC VERSION
140
electronically, in a single PDF file using the “Redact Tool” within Adobe Acrobat. The proposed
redactions should be submitted as “marked” but not yet “applied.” The proposed redactions should
be submitted via email to Cheney337@usitc.gov and not filed on EDIS.
SO ORDERED.
PUBLIC VERSION
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS,
AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has
been served to the following parties as indicated, on July 24, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Lighting Science Group
Corporation, Healthe, Inc.:
Kayvan B. Noroozi, Esq.
NOROOZI PC
11601 Wilshire Blvd., Suite 2170
Los Angeles, CA 90025
Email: kayvan@noroozipc.com
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☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Complainant Global Value Lighting, LLC:
Kenneth G. Parker
HAYNES AND BOONE, LLP
600 Anton Boulevard, Suite 700
Costa Mesa, CA 92626
Email: kenneth.parker@haynesboone.com
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of Availability for Download
On Behalf of Respondent General Electric Company and
Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC):
Eric S. Namrow. Esq.
MORGAN, LEWIS & BOCKIUS LLP
1111 Pennsylvania Ave, N.W.
Washington, D.C. 20004
Email: eric.namrow@morganlewis.com
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CERTAIN LIGT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
Certificate of Service – Page 2
On Behalf of Respondents OSRAM GmbH, OSRAM Licht
AG, OSRAM Opto Semiconductors GmbH, and OSRAM
Opto Semiconductors, Inc.:
Paul M. Bartkowski, Esq.
ADDUCI, MASTRIANI & SCHAUMBERG, LLP
1133 Connecticut Avenue, NW, 12th Floor
Washington, DC 20036
Email: bartkowski@adduci.com
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On Behalf of Respondents Signify N.V. (f/k/a Philips Lighting
N.V.) and Signify North America Corporation (f/k/a Philips
Lighting North America Corporation):
Adam D. Swain, Esq.
ALSTON & BIRD LLP
950 F Street NW
Washington, DC 20004
Email: adam.swain@alston.com
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On Behalf of Respondents Nichia Corporation and Nichia
America Corporation:
Thomas R. Makin, Esq.
SHEARMAN & STERLING LLP
599 Lexington Avenue
New York, NY 10022
Email: thomas.makin@shearman.com
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On Behalf of Respondents Cree Inc., Cree Hong Kong,
Limited, and Cree Huizhou Solid State Lighting Co. Ltd.:
S. Alex Lasher, Esq.
QUINN EMANUEL URQUHART & SULLIVAN, LLP
1300 I Street, NW, Suite 900
Washington, DC 20005
Email: alexlasher@quinnemanuel.com
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CERTAIN LIGT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
Certificate of Service – Page 3
On Behalf of Respondents Lumileds Holding B.V. and
Lumileds, LLC:
Bryan A. Kohm, Esq.
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Email: bkohm@fenwick.com
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On Behalf of Respondents Leedarson Lighting Co., Ltd. and
Leedarson America, Inc.:
John M. Caracappa, Esq.
STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, N.W.
Washington, D.C. 20036
Email: jcaracappa@steptoe.com
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On Behalf of Respondents Acuity Brands, Inc. and Acuity
Brands Lighting, Inc.:
Matthew S. Yungwirth, Esq.
DUANE MORRIS LLP
1075 Peachtree Street NE, Suite 2000
Atlanta, Georgia 30309
Email: MSYungwirth@duanemorris.com
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On Behalf of Respondent Current Lighting Solutions, LLC:
Steven E. Adkins, Esq.
MCGUIREWOODS LLP
2001 K Street N.W., Suite 400
Washington, D.C. 20006
Email: seadkins@mcguirewoods.com
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On Behalf of Respondent LEDVANCE LLC:
Edwin Wheeler, Esq.
INTELINK LAW GROUP, PC
One Market Street
Spear Tower, 36th Floor
San Francisco, CA 94105
Email: ewheeler@intelinklaw.com
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UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN LIGHT-EMITTING DIODE
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (III)
Investigation No. 337-TA-1168
NOTICE OF COMMISSION DECISION NOT TO REVIEW AN
INITIAL DETERMINATION GRANTING IN PART RESPONDENTS’ MOTION FOR
SUMMARY DETERMINATION OF NON-INFRINGEMENT AND THAT THE
TECHNICAL PRONG OF THE DOMESTIC INDUSTRY REQUIREMENT IS NOT
SATISFIED AS TO CERTAIN ASSERTED CLAIMS
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
determined not to review an initial determination (“ID”) (Order No. 32) granting in part
respondents’ motion for summary determination of non-infringement and that the technical
prong of the domestic industry requirement is not satisfied as to certain asserted claims.
FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the General
Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, D.C. 20436,
telephone (202) 708-2310. Copies of non-confidential documents filed in connection with this
investigation may be viewed on the Commission’s electronic docket (EDIS) at
https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General
information concerning the Commission may also be obtained by accessing its Internet server at
https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter
can be obtained by contacting the Commission’s TDD terminal, telephone 202-205-1810.
SUPPLEMENTARY INFORMATION: On June 25, 2019, the Commission instituted
Certain Light-Emitting Diode Products, Systems, and Components Thereof (I), Inv. No. 337-TA-
1163 (“Certain LED Products (I)”), based on a complaint filed by Lighting Science Group
Corporation and Health Inc., both of Cocoa Beach, Florida; and Global Value Lighting, LLC of
West Warwick, Rhode Island (collectively, “LSG”). 84 FR 29877-79 (June 25, 2019). The
complaint, as amended and supplemented, alleges violations of section 337 of the Tariff Act of
1930, as amended, 19 U.S.C. 1337, based upon the importation into the United States, the sale
for importation, and the sale within the United States after importation of certain light-emitting
diode products, systems, and components thereof by reason of infringement of certain claims of
2
U.S. Patent Nos. 7,528,421 (“the ’421 patent”); 7,095,053 (“the ’053 patent”); 7,098,483 (“the
’483 patent”); 8,506,118 (“the ’118 patent); 8,674,608 (“the ’608 patent”); 8,201,968 (“the ’968
patent”); and 8,967,844 (“the ’844 patent”). The complaint further alleges the existence of a
domestic industry. The Commission’s notice of investigation named 23 respondents: Nichia
Corp. of Tokushima, Japan; Nichia America Corp. of Wixom, Michigan; Cree, Inc. of Durham,
North Carolina; Cree Hong Kong, Ltd. of Shatin, Hong Kong; Cree Huizhou Solid State
Lighting Co. Ltd. of Guangdong, China; OSRAM GmbH and OSRAM Licht AG, both of
Munich, Germany; OSRAM Opto Semiconductors GmbH of Regensburg, Germany; OSRAM
Opto Semiconductors, Inc. of Sunnyvale, California; Lumileds Holding B.V. of Schipol,
Netherlands; Lumileds LLC of San Jose, California; Signify N.V. (f/k/a Phillips Lighting N.V.)
of Eindhoven, Netherlands; and Signify North America Corporation of Somerset, New Jersey;
MLS Co., Ltd. of Zhongshan City, China; LEDVANCE GmbH of Garching, Germany;
LEDVANCE LLC of Wilmington, Massachusetts; General Electric Company of Boston,
Massachusetts; Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC) and Current Lighting
Solutions, LLC, both of Cleveland, Ohio; Acuity Brands, Inc. of Atlanta, Georgia; Acuity
Brands Lighting, Inc. of Conyers, Georgia; Leedarson Lighting Co., Ltd. of Xiamen, China;
Leedarson America, Inc. of Smyrna, Georgia (all collectively, “Respondents”). The Office of
Unfair Import Investigations is not participating in the investigation.
On July 10, 2019, the ALJ, pursuant to Commission Rule 210.14(h), 19 CFR 210.14(h),
severed Certain LED Products (I) into two investigations. See Certain LED Products (I), Order
No. 5 (July 10, 2019). The ALJ specified that all issues relating to whether there is a violation
of section 337 based on the allegations of infringement of the ’118 and ’608 patents would be
addressed in Certain LED Products (I) (the 1163 investigation). Id. The ALJ also specified
that all issues relating to whether there is a violation of section 337 based on the allegations of
infringement of the ’421, ’053, and ’483 patents would be addressed in Certain Light-Emitting
Diode Products, Systems, and Components Thereof (III), Inv. No. 337-TA-1168 (“Certain LED
Products (III)”). Id.; see also Certain LED Products (III), Order No. 5 (July 10, 2019).
On November 26, 2019, Respondents moved for summary determination of non-
infringement and that the technical prong of the domestic industry requirement is not satisfied
with respect to all asserted claims. On February 14, 2020, three days after the ALJ issued a
Markman Order (Order No. 31) construing certain claims in dispute, LSG filed a notice
stipulating that neither infringement nor satisfaction of the technical prong could be shown with
respect to claims 11 and 14-16 of the ’483 patent and claims 7 and 11-15 of the ’053 patent.
On the same date, the ALJ issued the subject ID (Order No. 32) granting in part
Respondents’ motion for summary determination of non-infringement and that the technical
prong of the domestic industry requirement is not satisfied with respect to asserted claims 11 and
14-16 of the ’483 patent and claims 7 and 11-15 of the ՚053 patent.
3
On March 3, 2020, LSG petitioned for review of the subject ID. On March 17, 2020,
Respondents filed a joint response in opposition to the petition for review.
Having reviewed the record including the parties’ briefing, the Commission has
determined not to review the subject ID (including the underlying Markman Order with respect
to the claim terms that are the subject of LSG’s petition).
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in part 210 of the Commission’s Rules of
Practice and Procedure, 19 CFR part 210.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: April 7, 2020
CERTAIN LIGT-EMITTING DIODE PRODUCTS, SYSTEMS,
AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served to the
following parties as indicated, on April 7, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Lighting Science Group
Corporation, Healthe, Inc.:
Kayvan B. Noroozi, Esq.
NOROOZI PC
11601 Wilshire Blvd., Suite 2170
Los Angeles, CA 90025
Email: kayvan@noroozipc.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Complainant Global Value Lighting, LLC:
Kenneth G. Parker
HAYNES AND BOONE, LLP
600 Anton Boulevard, Suite 700
Costa Mesa, CA 92626
Email: kenneth.parker@haynesboone.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent General Electric Company and
Consumer Lighting (U.S.), LLC (d/b/a GE Lighting, LLC):
Eric S. Namrow. Esq.
MORGAN, LEWIS & BOCKIUS LLP
1111 Pennsylvania Ave, N.W.
Washington, D.C. 20004
Email: eric.namrow@morganlewis.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents OSRAM GmbH, OSRAM Licht
AG, OSRAM Opto Semiconductors GmbH, and OSRAM
Opto Semiconductors, Inc.:
CERTAIN LIGT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
Certificate of Service – Page 2
Paul M. Bartkowski, Esq.
ADDUCI, MASTRIANI & SCHAUMBERG, LLP
1133 Connecticut Avenue, NW, 12th Floor
Washington, DC 20036
Email: bartkowski@adduci.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Signify N.V. (f/k/a Philips Lighting
N.V.) and Signify North America Corporation (f/k/a Philips
Lighting North America Corporation):
Adam D. Swain, Esq.
ALSTON & BIRD LLP
950 F Street NW
Washington, DC 20004
Email: adam.swain@alston.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Nichia Corporation and Nichia
America Corporation:
Thomas R. Makin, Esq.
SHEARMAN & STERLING LLP
599 Lexington Avenue
New York, NY 10022
Email: thomas.makin@shearman.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Cree Inc., Cree Hong Kong,
Limited, and Cree Huizhou Solid State Lighting Co. Ltd.:
S. Alex Lasher, Esq.
QUINN EMANUEL URQUHART & SULLIVAN, LLP
1300 I Street, NW, Suite 900
Washington, DC 20005
Email: alexlasher@quinnemanuel.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Lumileds Holding B.V. and
Lumileds, LLC:
Bryan A. Kohm, Esq.
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Email: bkohm@fenwick.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
CERTAIN LIGT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
Inv. No. 337-TA-1168
Certificate of Service – Page 3
On Behalf of Respondents Leedarson Lighting Co., Ltd. and
Leedarson America, Inc.:
John M. Caracappa, Esq.
STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, N.W.
Washington, D.C. 20036
Email: jcaracap@steptoe.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Acuity Brands, Inc. and Acuity
Brands Lighting, Inc.:
Matthew S. Yungwirth, Esq.
DUANE MORRIS LLP
1075 Peachtree Street NE, Suite 2000
Atlanta, Georgia 30309
Email: MSYungwirth@duanemorris.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Current Lighting Solutions, LLC:
Steven E. Adkins, Esq.
MCGUIREWOODS LLP
2001 K Street N.W., Suite 400
Washington, D.C. 20006
Email: seadkins@mcguirewoods.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LEDVANCE LLC:
Edwin Wheeler, Esq.
INTELINK LAW GROUP, PC
One Market Street
Spear Tower, 36th Floor
San Francisco, CA 94105
Email: ewheeler@intelinklaw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION
- Washington, D.C.
In _theMatter of
1 .
CERTAIN LIGHT-EMITTING DIODE IllV-N0- 337-TA-1168
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (III) '
ORDER NO. 32: INITIAL DETERMINATION GRANTING IN PART
RESPONDENTS’ MOTION FOR SUMMARY DETERMINATION
OF NONINFRINGEMENT AND THAT THE TECHNICAL PRONG
OF THE DOMESTIC INDUSTRY REQUIREMENT IS NOT
SATISFIED
(Februaxy 14, 2020)
TABLE OF CONTENTS
Introduction .................................................................................................................. ..
Legal Standards .........,.................................................................................................. ..
A. Summary Determination .................................................................................. ..
B. Infringement ..................................................................................................... ..
C. Technical Prong of the Domestic Industry Requirement ................................. ..
Undisputed Facts .......................................................................................................... ..
Initial Determination ................................................................. ..
Page
.... ..1
.... ..2
.... ..2
.... ..3
.... ..3
.... ..4
.... ..5
R
I. INTRODUCTION . .
On November 26, 2019, Respondents] filed a motion and supporting memorandum seeking
summary determination that complainant LSG2 does not satisfy the technical prong of the domestic
industry requirement for any claim of the patents asserted in this investigati0n.3 Motion Docket
No. 1168-004. LSG filed an opposition to the motion on December 11, 2019.4
On February 11, 2020, I issued Order No. 31, which construed certain claim terms
identified by the parties as needing construction. Two of the claim tenns I construed are pertinent
to this initial determination. They are “decoder/driver electronics” and “an electrical path
including an insulating conducting via through the metal base.” See Order No. 31, at 7-16.
On February 13, 2020, I convened a telephone conference at the parties’ request to discuss
logistical consequences of my claim construction order. See Notice Regarding Hearing and
' “Respondents” refers collectively to Lumileds Holding B.V.; Lurnileds LLC; Cree, Inc.; Cree
Hong Kong Ltd.; Cree Huizhou Solid State Lighting Co. Ltd.; Acuity Brands, Inc.; Acuity Brands
Lighting, Inc.; Current Lighting Solutions, LLC; General Electric Company; Consumer Lighting
(U.S.), LLC; LEDVANCE LLC; Leedarson Co., Ltd.; Leedarson America, Inc.; Nichia C0rp.;
Nichia America Corp.; OSRAM GmbH; OSRAM Licht AG; OSRAM Opto Semiconductors
GmbH; OSRAM Opto Semiconductors, Inc.; Signify N.V.; and Signify North America
Corporation.
2“LSG” refers collectively to Lighting Science Group Corporation, Healthe Inc., and Global Value
Lighting, LLC.
3The patents and claims asserted in this investigation are claims 1-3, 5-7, 11-15, and 21 of U.S.
Patent No. 7,095,053-(“the ’053 patent”); claims 11 and 14-16 of U.S. Patent No. 7,098,483 (“the
’483 patent”); and claims 1 and 6 of U.S. Patent No. 7,528,421 (“the ’421 patent’_’). See 84 Fed.
Reg. 29877 (June 25, 2019) (“Notice of Investigation”); Order No. 18: Initial Determination
Terminating the Investigation as to Claim 7 of U.S. Patent No. 7,528,421 (Dec. 30, 2019), afl’d,
Comrn’n Notice (EDIS Doc. ID 700609) (Jan. 29, 2020); Order No. 26: Initial Determination
Tenninating the Investigation as to Certain Claims (Jan. 29, 2020) (pending Commission review).
4 LSG subsequently filed a motion seeking leave to supplement its response to the pending motion
for summary determination. Motion Docket No. 1168-007. Respondents filed a response stating
they do not oppose LSG’s motion for leave. Motion No. 1168-007 is granted.
Respondents’ Motion for Summary Determination (EDIS Doc. ID 702579) (Feb. 14, 2020)
(“Notice”). Following the conference, the parties filed the following joint statement:
Under Judge Cheney’s claim constructions of “decoder/driver electronics”
and “an electrical path including an insulating conducting via through the
metal base,” Complainants will notbe able to demonstrate infiingement or
technical domestic industry as to the asserted claims of the ’483 patent and
as to claim 7 of the ’O53patent and its dependents based on the products at .
issue in this investigation. '
Notice at 1‘-2. I F
I hereby deem this joint statement and the oral arguments presented during the conference
to be a supplement to the pending motion for summary detemminationsuch that, in addition to the
domestic industry teclmical prong arguments briefed previously, Respondents now also seek
summary determination of noninfringement as to the asserted claims of the ’483 patent and claim
7 of the ’O53 patent and its _dependents.5 I
II. LEGAL STANDARDS
A. Summary Determination
Summary determination is appropriate when there is no genuine issue as to any material
fact and the moving party is entitled to a determination as a matter of law. See 19 C.F.R. § 210.18.
In detennining whether there is a genuine issue of material fact, “the evidence must be viewed in
the light most favorable to the party opposing the motion with doubts resolved in favor of the non
n1ovant;” Crown Operations Int’l, Ltd v. Solutia, Ina, 289 F.3d 1367, 1375 (Fed. Cir. 2002)
(citations omitted).
5Asserted claims 11-15 of the ’053 patent depend from claim 7.
. 2 V
B. Infringement
A determination of patent infringement generally encompasses a two-part process. See
Cybor Corp. v. FAS Techs., 1nc., 138 F.3d 1448, 1454 (Fed. Cir. 1998). First, the language of the
claims must be construed todetermine the proper scope and meaning of the terms, which is a
question of law. Deering Precision Instrument, L.L.C. v. Vector Distribution -Sys.,Inc., 347 F.3d
1314, 1322 (Fed. Cir. 2003). Second, a factual determination must be made as to whether the
claims, as construed, cover the accused products. Id.
“Since the ultimate burden of proving infringement rests with the patentee, an accused
infringer seeking summary judgment of noninfringement may meet its initial responsibility either
by providing evidence that would preclude a finding of infringement, or by showing that the
evidence on file fails to establish amaterial issue of fact essential to the patentee’s case.” Novartis
Corp. v. Ben Venue Labs., 1nc., 271 F.3d 1043, 1046 (Fed. Cir. 2001).
C. Technical Prong of the Domestic Industry Requirement
>
For a patent-based complaint, a violation of section 337 can be found “only if an industry
in the United States, relating to the articles protected by the patent . . . concerned, exists or is in
the process of being established.” 19 U.S.C. § 1337(a)(2). The complainant bears the burden of
establishing that the domestic industry requirement is satisfied. See Certain Set-Top Boxes and
Components Thereof, Inv. No. 337-TA-454, ID at 294, 2002 WL 31556392 (June 21, 2002)
(Lmreviewedby Commission in relevant part). The domestic industry requirement of section 337
is often described as having an economic prong and a technical prong. InterDigital Commc’ns,
LLC v. Int'l Trade Comm ’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013); Certain Stringed Musical
Instruments and Components Thereoj’,Inv. No. 337-TA-586, Cornrn’n Op. at 12-14, USITC Pub.
No. 4120, 2009 WL 5134139 (Dec. 2009).
3
\
The technical prong of the domestic industry requirement is satisfied when the complainant
in a patent-based section 337 investigation establishes that is practicing or exploiting the patents
at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain iMicr0sphere Adhesives, Process for Making
Same .and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No.
337-TA-366, C0mm’n Op., 1996 WL 1056095, at *4 (Jan. 16, 1996). “The test for satisfying the
‘technical prong‘ of the industry requirement is essentially [the] same as that for infringement, i.e.,
a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int ‘ITrade Comm ’n,342
F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of
the evidence that the domestic product practices one or more claims of the patent. It is sufficient
to show that the products practice any claim of that patent, not necessarily an asserted claim of that
patent. See Certain Male Prophylactic Devices, Inv. No. 337-TA-546, Comm’n Op. at 38
(Aug. 1, 2007). 9
HI. UNDISPUTED FACTS
As discussed above, no party disputes the following facts:
Under Judge Cheney’s claim‘constructions of “decoder/driver electronics”
and “_anelectrical path including an insulating conducting via through the
metal base,” Complainants [camiot] demonstrate infringement or technical
domestic industry as to the asserted claims of the ’483 patent and as to claim
7 of the ’O53patent and its dependents based on the products at issue in this
investigation. .
See Notice at 1-2.
I hereby adopt the undisputed facts above as part of this initial determination. I hereby also
incorporate the discussion of the terms “decoder/driver electronics” and “an electrical path
including an insulating conducting via through the metal base” on pages 7-16 of Order No. 31 as
part of this initial determination.
4
IV. INITIAL DETERMINATION '
In view of my construction of the terms “decoder/driver electronics” and “an electrical path
including an insulating conducting via through the metal base” and the undisputed facts above, I
find that none of the accused products in this investigation infringe asserted claims 11, 15, 14, and
16 ofthe ’483 patent or asserted claims 7, 11, 12, 13, 14, and 15 ofthe ’053 patent. I also find that
LSG does not satisfy the technical prong of the domestic industry requirement with respect to
asserted claims 11, 15, 14, and 16 ofthe ’483 patent or asserted claims 7, 11, 12, 13, 14',and 15 of
the ’053 patent.
It is therefore my initial determination that there has not been a violation of section 337 of
the Tariff Act, as amended, due to the importation into the United States, the sale for importation,
or the sale within the United States afier importation of certain light-emitting diode products,
systems, and components thereof with respect to these claims.
Accordingly, Motion No. 1168-004 is granted in part.° '
; This initial determination is hereby certified to the Commission. Pursuant to 19 C.F.R.
§ 210.42(h), this initial determination shall become the determination of the Commission unless a
party files a petition for review pursuant to § 210.43(a) or the Commission, pursuant to § 210.44,
orders on its own motion a review of the initial determination or certain issues herein.
i j §Clark s. Cheney
. Administrative Law Judge
SO ORDERED
6The portions of the pending motion for summary determination that I have not addressed in this
initial determination shall be held in abeyance pending further proceedings at the evidentiary
hearing scheduled to begin on February 18, 2020. See Order N0. 10: Modifying Procedural
Schedule (Nov. 19, 2019).
5
In the Matter of
CERTAIN LIGHT-EMITTING DIODE PRODUCTS,
SYSTEMS, AND COMPONENTS THEREOF (III)
INV. NO. 337-TA-1168
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER NO. 32 has been served by
hand upon thefollowing parties asindicated, on.
‘R
/,_ 2/
Lisa R. Barton, Secretary ’ '
U.S. Intemational Trade Commission
500 E Street, SW, Room 112
' Washington, DC 20436
On Behalf of Complainants Lighting ScienceGroup Corporation and Healthe, Inc.:
\
Kayvan B. Noroozi, Esq.
NOROOZI PC
11601 Wilshire Blvd.
Suite 2170
‘L05 Angeles, CA 90025
On Behalf of Complainant Global Value Lighting, LLC:
Kenneth G. Parker, Esq.
HAYNES AND BOONE, LLP
600 Anton Boulevard
Suite 700
Costa Mesa, CA 92626
III Via Hand Delivery
E/Via'Express Delivery
|:l Via First Class Mail
El Other:
III Via Hand Delivery
@’Via Express Delivery
l:l Via First Class Mail
El Other:
On Behalf of Respondents Nichia Corporation and Nichia America Corporation:
Thomas R. Makin, Esq.
SHEARMAN & STERLING LLP
599 Lexington Avenue
New York, NY 10022-6069
El Via Hand Delivery
E’Via Express Delivery
U Via First Class Mail
Cl Other:
In the Matter of
CERTAIN LIGHT-EMITTING DIODE PRODUCTS, INV. NO. 337-TA-1168
SYSTEMS, AND CQMPONENTS THEREOF (III)
I PUBLIC CERTIFICATE OF SERVICE
On Behalf of Respondents Cree, Inc., Cree Hong Kong, Limited, and Cree Huizhou Solid
State Lighting Co., Ltd.:
S. Alex Lasher, Esq. U Via Hand Delivery
QUINN EMANUEL URQUHART & SULLIVAN, LLP Efvia Express Delivery
1300 I street’ NW Cl Via First Class Mail
Suite 900 Cl Other: '
Washington, DC20005 L
On Behalf of Respondents OSRAM GmbH, OSRAM Licht AG, OSRAM Opto
Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.:
Paul M. Bartkowski, Esq. III Via Hand Delivery
l 133 Connecticut Avenue, NW ' |:| Via First class Mail
12th Floor U Other,
Washington, DC20036 W
On Behalf of Respondents Signifv N.V. and Signify North America Corporation: _
Adam D. Swain, Esq. II] Via Hand Delivery
ALSTON & BIRD LLP 13/Via Express Delivery
950 F Street, NW El Via First Class Mail
Washington, DC 20004 El Other: ' '
On Behalf of Respondents General Electric Companv and Consumer Lighting_(U.S.),LLC
jd/b/a GE Lighting, LLC}: _
Eric S. Namrow, Esq. El Via Hand Delivery
MORGAN, LEWIS & BOCKIUS LLP EiVia Express Delivery
1111 Pennsylvania Avenue, NW ‘ E Via First Class Mail '
Washington, DC 20004-2541 I] Other:
2
In the Matter of
CERTAIN LIGHT-EMITTING DIODE PRODUCTS, INV. NO. 337-TA
SYSTEMS, AND COMPONENTS THEREOF (III)
PUBLIC CERTIFICATE OF SERVICE
On Behalf of Respondents Lumileds Holding B.V. and Lumileds, LLC
Bryan A. Kohm, Esq.
FENWICK & WEST LLP
555 California Street
12th Floor
San Fransico, CA 94'104
E] Via Hand Delivery
|ZfVia Express Delivery
I1 Via First Class Mail
II] Other:
-1168
On Behalf of Respondents Leedarson Lighting C0..,Ltd. and Leedarson America, Inc.
John M. Caracappa, Esq.
STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, NW '
Washington, DC 20036
On Behalf of Respondent Current Lighting Solutions. LLC:
Steven E. Adkins, Esq.
McGUIREWOODS LLP
2001 K Street, NW
Suite 400
Washington, DC 20006-1040 '
II! Via Hand Delivery
E/Via Express Delivery
El Via First Class Mail
El Other:
El Via Hand Delivery
EfVia Express Delivery
U .Via First Class Mail
El Other:
On Behalf of Respondents Acuity Brands, Inc. and Acuitv Brands Lighting, Inc.:
Matthew S. Yungwirth, Esq.
DUANE MORRIS LLP
1075 Peachtree Street, NE
Suite 2000
Atlanta, GA 30309
On Behalf of Respondent Ledvance LLC
Edwin Wheeler, Esq. 4
INTERLINK LAW GROUP, PC
One Market Street
Spear Tower, 36th Floor
San Francisco, CA 94105
C] Via Hand Delivery
Q]/Via Express Delivery
El Via First Class Mail
U Other:
III Via Hand Delivery
E/Via Express Delivery
El Via First Class Mail
\I| Other:
\,
¥
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C. ’
In the Matter of n
CERTAIN LIGHT-EMITTING DIODE IIlV-N0- 337-TA-1168
PRODUCTS, SYSTEMS, AND
COMPONENTS THEREOF (III)
ORDER NO. 31: CONSTRUING CERTAIN CLAIMS .
(February 11, 2020)
TABLE OF CONTENTS
' Page
Introduction ........................................................................................................................ ..1
Relevant Law ............................. ........................................................................................ ..3
Level of Ordinary Skill in the Art ...................................................................................... ..5
The Asserted Patents .......................................................................................................... ..6
A.‘ U.S. Patent No. 7,095,053 ...................................................................................... ..6
B. U.S. Patent No. 7,098,483...................................................................................... ..7
C. U.S. Patent No. 7,528,421 ...................................................................................... ..7
Construction of Disputed Claim Terms ............................................................................. ..7
A. “decoder/driver electronics that control the LED electrodes, wherein the
A electronics are mounted within the assembly” (’483 patent) ................................. ..7
B. “an electrical path including an insulated conducting via through the metal
base” (’053 patent) .................................................................................................ll
C. “one or more isolated terminals formed on the metal base” (’483 patent) ............l 6
D. “overlying” (’053, ’483, and ’421 patents) .......................................................... ..17
E. “wherein the electrically insulating layers include one or more terminals”
(’42l patent) ......................................................................................................... ..20
F. “base” (’053, ’483, and ’42l patents) .................................................................. ..22
G. “one or more thermal vias” (’053 patent) ............................................................ ..25
H. “wherein the layer of electrically insulating material includes at least one
opening to house the LED die” (’483 patent) ......................................... ...............25
I. “a thennally conductive region in solderable thennal contact with the
thermally conducting base” (’421 patent) ............................................................ ..29
J. “A light emitting diode (LED) assembly” (’483 patent) ..................................... ..31
I. INTRODUCTION
The Commission instituted this investigation to determine whether certain light-emitting
diode (“LED”) products, systems, and components thereof infringe U.S. Patent Nos. 7,098,483
(“the ’483 patent”), 7,095,053 (“the ’053 patent”), and 7,528,421 (“the ’421 patent”) (collectively,
“the asserted patents”). See 84 Fed. Reg. 29877 (June 25, 2019) (“Notice of Investigation”);
Certain LED Products, Sys., and Components Thereof (I), Inv. No. 337-TA-1163, Order No. 5
(July l0, 2019) (severing this investigation from the 1163 investigation). The asserted patents are
generally directed to designing light-emitting diode assemblies and packages that can operate more
reliably at higher temperatures. See, e.g., ’483 patent at 1:20-22. As set forth in the Notice of
Investigation, the plain language description of the accused products or category of accused
products, which defines the scope of the investigation, is “(l) LED packages andassemblies;
(2) LED luminaires; and (3) connected ‘smart’ LED lighting systemsand components thereof.”
Notice of Investigation at 29878. p ~
The complainants are Lighting Science Group Corporation, Hea1theInc., and Global Value
Lighting, LLC (collectively, “LSG”). Id. The respondents are Lumileds Holding B.V., Lumileds
LLC, Cree, Inc., Cree Hong Kong Ltd., Cree Huizhou Solid State Lighting Co. Ltd., Acuity
Brands, Inc., Acuity Brands Lighting, Inc., Current Lighting Solutions, LLC, General Electric
Company, Consumer Lighting (U.S.), LLC, LEDVANCE LLC, Leedarson Co., Ltd., Leedarson
America, Inc., Nichia'C0rp., Nichia America Corp., OSRAM GmbH, OSRAM Licht AG, OSRAM
Opto Semiconductors GmbH, OSRAM Opto Semiconductors, Inc., Signify N.V., and Signify
North America Corporation (collectively, “Respondents”). Id.; Order No. 24: Initial
Determination Tenrrinating the Investigation as to Respondents MLS and Ledvance (Jan. 14,
2020), afi"d, Comrn’n Notice (EDIS Doc. ID 701830) (Feb. 7, 2020).
In accordance with the‘procedural schedule issued as Order No. 7 on July 22, 2019, the
parties submitted ajoint chart of proposed claim constructions on September 12, 2019. The parties
also submitted opening claim construction briefs on September 20, 2019, and responsive claim
construction briefs on October 4, 2019.1 On October 17, 2019, I convened a claim construction
hearing? 1
After the claim construction hearing, Respondents subsequently submitted aNotice of New
Evidence of Prosecution History Disclaimer (“Notice”) that brought attention to a recent decision
by the Patent Trial and Appeal Board (“PTAB”) involving the same claims of the ’42l patent as
are asserted here. EDIS Doc. ID 699505 (Jan. 16, 2020). LSG also submitted comments about
the PTAB decision. EDIS Doc. ID 699518 (Jan. 17, 2020).
The PTAB decision focuses on LSG’s arguments as to whether certain prior art references
disclose a “thennally conductive region in solderable thermal contact with the thermally
conducting base,” a disputed claim term discussed below. I have considered LSG’s arguments
‘ For convenience, the materials submitted by the parties shall be referred to as:
CIMB Complainants’ Corrected Opening Claim
Construction Brief
CRMB Complainants’ Responsive Claim Construction
Brief ’
1 RIMB Respondents’ Opening Claim Construction Brief
RRMB Respondents’ Responsive Claim Construction
Brief _ . .
JC Joint Disclosure of Proposed Claim
Constructions
2 The transcript of the claim construction hearing is available as EDIS Doc. ID 691542 and is
hereinafter referred to as “Tr.”
' 2
before the PTAB and I find they are not inconsistent with arguments LSG presented here. LSG’s
positions will be discussed further in conjunction with my order addressing Respondents’ pending
Motion for Summary Determination of N0 Domestic Industry (Teclmical Prong) (Mot. Docket No.
1168-004).
This order addresses claim terms in dispute between the parties that were identified in
briefing and discussed during oral argument.
ll. RELEVANT LAW = \
“An infringement analysis entails two steps. The first step is determining the meaning and
scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the device accused of infringing.” Markman v. WestviewInstruments, 1nc.,
52 F.3d 967, 976 (Fed. Cir. 1995) (en bane) (internal citations omitted), afi”d, 517 U.S. 370 (1996).
Claim construction resolves legal disputes between the parties regarding claim scope. See Eon
Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016).
Evidence intrinsic to the application, prosecution, and issuance of a patent is the most
significant source of the legally operative meaning of disputed claim language. See Bell Atl.
Network Servs., Inc. v. Covad C0mmc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The
intrinsic evidence includes the claims themselves, the specification, and the prosecution history.
See Phillips v. AWH C0rp., 415 F.3d'1303, 1314 (Fed. Cir. 2005) (en banc); see also
Markman, 52 F.3d at 979. As the Federal Circuit explained in Phillips, courts examine the
intrinsic evidence to determine the “ordinary and customary meaning of a claim term” as
understood by a person of ordinary skill in the art at the time of the invention. 415 F.3d at 1313.
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.”’ Phillips, 415 F.3d at 1312 (quoting
3
Iimova/Pure Water, Inc. v. Safari Water Filtration Sys., Ina, 381 F.3d 1111, 1115 (Fed. Cir.
2004)). “Quite apart from the written description and the prosecution history, the claims
themselves provide substantial guidance as to the meaning of particular claims terms.” Id at 1314;
. / »
see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In
construing claims, the analytical focus must begin and remain centered on the language of the
claims themselves, for it is that language that the patentee chose to use to ‘particularly point[ ] out
and distinctly claim[ ] the subject matter which the patentee regards as his invention.”’). The
‘contextin which a term is used in an asserted claim can be “highly instmctive.” Phillips, 415 F.3d
at 1314. Additionally, other claims in the same patent, asserted or un-asserted, may also provide
guidance as to the meaning of a claim term. Id.
The specification “is always highly relevant to the claim construction analysis. Usually, it
is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
1315 (quoting Vilronics Corp. v. Conceplronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). ‘-‘[T]he
specification may reveal a special definition given to a claim term by the patentee that differs from
the meaning it would otherwise possess. In such cases, the inventor’s lexicography govems.” Id.
at 1316. “In other cases, the specification may reveal an intentional disclaimer, or disavowal, of
claim scope by the inventor.” Id. As a general rule, however, the particular examples or
embodiments discussed in the specification are not to be read into the claims as limitations. Id. at
1323. In the end, “[t]he construction that stays true to the claim language and most naturally aligns
with the patent’s description of the invention will be . . . the correct construction.” Id. at 1316
(quoting Renishaw PLC v. Marposs Societa ’per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
Only when the intrinsic evidence does not establish the meaning of a claim may extrinsic
evidence (i.e., all evidence external to the patent and the prosecution history, including
4
dictionaries, inventor testimony, expert testimony, and learned treatises) be considered. Phillips,
415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent itself and
its prosecution history in determining how to define claim tenns. Id. “The court may receive
extrinsic evidence to educate itself about the invention and the relevant technology, but the court
may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the
construction mandated by the intrinsic evidence.” Elkay Mfg. C0. v. Ebco Mfg. C0., 192 F.3d 973,
977 (Fed. Cir. 1999).
A claim must also be definite. Specifically, “[t]he specification shall conclude with one or
more claims particularly pointing out and distinctly claiming the subject matter which the applicant
regards as his invention.” 35 U.S.C. § 112, 112. The Supreme Court has held that § 112, 1 2
requires “that a patent’s claims, viewed in light of the specification and prosecution history inform
those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc.
v. Biosig Instruments, Inc., 134 S. Ct. 2120 at 2129 (2014). A claim is required to “provide
objective boundaries for those of skill in the art,” and a claim tenn is indefinite if it “might mean
several different things and no informed and confident choice is among the contending
definitions.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). A patent
claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A).
lll. LEVEL OF ORDINARY SKILL IN THE ART
Although LSG did not propose a level of ordinary skill in the art in its opening brief, its
expert, Dr. Martin Kuball, opined that “a person of ordinary skill in the art . . . of the asserted
patents at the time of the invention would have had a bachelor’s degree in electrical engineering,
materials science, or physics, or at least 5 years’ experience in manufacturing or engineering, with
significant exposure to the lighting and/or semiconductor packaging industries." CIMB Ex. 1
5 .
(Declaration of Dr. Martin Kuball in Support of Complainants’ Opening Claim Construction Brief)
1]‘5 (hereinafter “Kuball Decl.”). ’
Respondents take the position that a person of ordinary skill in the art at the time of the
inventions of the asserted patents would “have had at least a B.S. in mechanical or electrical
engineering or a related field, and four years’ experience designing or developing semiconductor
including LED—packages,” and that “a higher level of education or skill might make up for less
experience, and vice-versa.” RIMB at 2.
, To the extent the parties’ proposals are not substantially the same, no party argues that the
claim construction analysis differs under either proposal. I accordingly decline to make a finding
on this issue at this time. See Genzyme Therapeutic Prod. Ltd. P ’ship v. Biomarin Pharm. Inc.,
825 F.3d 1360, 1372 (Fed. Cir. 2016) (failure to make a specific finding about the required level
of skill in the art is not reversable error where the record did not show any meaningful differences
in proposed definitions or that the outcome of the case would have been different based on which
definition was selected).
IV. THE ASSERTED PATENTS
‘A. U.S. Patent No. 7,095,053
» The ’053 patent is titled, “Light Emitting Diodes Packaged for High Temperature
Operation.” The ’053 patent issuedon August 22, 2006, and the named inventors are Joseph
Mazzochette and Greg Blonder. LSG asserts claims 1-3, 5-7, 11-15, and 21 of the ’053 patent;
claims 1 and 7 are independent claims. See Notice of Investigation; Order No. 26: Initial
Determination Terminating the Investigation as to Certain Claims (Jan. 29, 2020);3 ’053 patent.
3 Order No. 26 is pending Commission review.
’ 6
I
B. U.S. Patent N0. 7,098,483 V
The ’483 patent is titled, “Light Emitting Diodes Packaged for High Temperature
Operation.” The ’483 patent issued on August 29, 2006, and the named inventors are Joseph
Mazzochette and Greg_Blonder. LSG asserts claims ll and 14-16 of the ’483 patent; claim 11 is
an independent claim. See Notice of Investigation; ’483 patent.
The ’483 patent is a division of the application that resulted in the ’053 patent; the ’053
and ’483 patents share a common specification. See ’053 patent; ’483 patent.
C. U.S. Patent N0. 7,528,421 p
The ’421 patent is titled, “Surface Mountable Light Emitting Diode Assemblies Packaged
for High Temperature Operation.” The ’421 patent issued on May 5, 2009, and .»thenamed
inventors are Joseph Mazzochette and Greg Blonder. LSG asserts claims 1 and 6 of the ’42l
patent; claim 1' is an independent claim. See Notice of Investigation; Order No. 18: Initial
Determination Terminating the Investigation as to Claim 7 of U.S. Patent N0. 7,528,421 (Dec. 30,
2019), afl’d, Comm’n Notice (EDIS Doc. ID 700609) (Jan. 29, 2020); Order N0. 26; ’42l patent.
The ’42l patent is a continuation-in-part of the application that resulted in the ’053 patent.
See ’42l patent. , _
V. CONSTRUCTION OF DISPUTED CLAIM TERMS
A. “dec0der/driver electronics that control the LED electrodes, wherein the
electronics are mounted within the assembly” (’483 patent)
The disputed phrase “decoder/driver electronics that control the LED electrodes, wherein
the electronics are mounted within the assembly” is recited in asserted claim 11 of the ’483 patent,
which reads, in relevant part:
- 11. A light emitting diode (LED) assembly for high temperature operation
comprising:
. 7
. . . one or more isolated terminals formed on the metal base, the one or
more isolated terminals electrically connected to decoder/driver
electronics that control the LED electrodes, wherein the electronics are
mounted within the assembly.
’483 patent at 10:3-4, 10:20-24.
The parties’ proposed constructions are as follows: .
Complainants’ Construction i Respondents’ Construction
“one or more ‘electroniccomponents of a “electronic circuitry, mounted within the LED
decoder or driver that can impact electricity package, that receives data as input, decodes
flow to the LED electrodes mounted within that input, and drives the at least one LED die
the assembly” in response thereto”
JCatl. _
The patent specification provides scant guidance as to the construction of this term. In
describing the benefits of the low temperature co-fired ceramic on metal (“LTCC-M”) technique
taught by the patent, colmnn 7 states: “Densely packed micro—circuitry,and devices such as
decoder/drivers, amplifiers, oscillators and the like which generate large amounts of heat, can also
use LTCC-M techniques advantageously.” ’483 patent at 7:60-63. In addition, column 5 teaches
that, “[i]n another version of this embodiment, decoding/driver electronics can be embedded
directly in the layers of the card and can control individual LED die or groups of die.” Id. at
5:25-27. .
1 .
Respondents take the position that the claimed “decoder/driver electronics . . .” means a
complete decoder/driver device component of the type that would have been known to a person of
ordinary skill around the time of the ’483 patent’s filing date. See RIMB at 3-4. In support of this
proposal, Respondents submitted a declaration from their expert, Dr. Jianzhong Jiao. Dr. Jiao
opined that, around the ’483 patent’s filing date, a decoder/driver was a known component that
8
(i) accepted encoded data as input, (ii) decoded that input, and (iii) output a signal that controlled
the driving of the current to one or more LEDs. RIMB Ex. 5 (Declaration of Jianzhong Jiao, Ph.D.
in -Support of Respondents’ Opening Claim Construction Brief) W 24-25 (hereinafter “Jiao
Decl.”).
By contrast, LSG argues that a person of ordinary skill would understand the forward slash
in the term “decoder/driver electronics . . .” to mean “or” such that the claim term requires only
decoder circuitry or driver circuitry, but not both. See CIMB at 27-28. LSG further argues that
the phrase “driver electronics that control the LED electrodes” should be construed to mean “any
electronic component of a driver that can impact electricity flow to the LED electrode, such as an
electrostatic protection device.” Id. at 28-29.
Having considered the intrinsic evidence in conjunction with the arguments and extrinsic
evidence provided by the parties, it is my determination that the plain and ordinary meaning of
“decoder/driver electronics . . .” is neither a complete decoder/driver device (as argued by
Respondents) nor mere electronics of a decoder or driver (as argued by LSG), but rather electronics
that perform the function of, at least, either decoding or driving.‘ This interpretation is supported
by the patent specification, which reads: “In another version of this embodiment, decoding/driver
electronics can be embedded directly in the layers of the card and can control individual LED die
or groups of die.” ’483 patent at 5:25-27 (emphasis added). Here, the specification’s use of the
present participle “decoding” indicates that the word “decoding” — and also the companion Word
“driver” — is being used to modify “electronics,” rather than as a compound noun describing a
subcomponent of the (elsewhere mentioned) “decoder/driver” device known in the art. Moreover,
4 Although the parties dispute whether the term “decoding/driver electronics . . .” requires both
decoding and driving, I do not reach that question in this order.
. 9
\
when the phrase “decoder/driver” is used in the specification to describe the device known in-the
. 1
art, it appears in without the accompanying word “electronics.” Id. at 7:60-63.
LSG’s construction would essentially read out the words “decoder/driver.” To explain,
LSG contends that the disputed limitation reads on any “electronic components of a decoder or
driver that can impact electricity flow to the LED.” But all manner of components can be found
in a decoder or driver, including transistors, resistors, capacitors, diodes, and transformers. In fact,
it is difficult to imagine a circuit component that would never be used in a decoder or driver. And
all circuit components “impact electricity” — that is what “electronics” do. Thus, although LSG’s
construction uses more words, it boils down to mere “electronics,” not “decoder/driver
electronics.” A construction that does not give meaning to all of the words of the claim is usually
incorrect. See Funai Elec. C0. v. Daewoo Elecs. C0rp., 616 F.3d 1357, 1372 (Fed. Cir. 2010)
(quoting Exxon Chemical Patents, Inc. v. Lubrizol C0rp., 64 F.3d 1553, 1557 (Fed. Cir. 1995)
(“We must give meaning to all the words in [the] claims.”)). _
Moreover, at the claim construction hearing, counsel for LSG conceded that, although
electrostatic discharge protection (“ESD”) circuits are common elements of decoding and driving
circuitry, such circuits are not necessary to decoding or driving, and do not themselves perform
decoding or driving functions. Tr. at 158:6-20. Accordingly, electrostatic discharge protection
circuitry, without more, camiot satisfy. this claim tenn, as ESD circuits are not themselves
electronics with the fimction of decoding or driving LEDs.
This much resolves the dispute between the parties, and no more need be said to understand
the plain and ordinary meaning of the term. I adopt that plain and ordinary meaning.
10
B. “an electrical path including an insulated conducting via through the metal
e base” (’053 patent) ‘
The claim term “an electrical path including an insulated conducting via through the meta]
base” is recited in asserted claim 7 of the ’053 patent. It is also recited in claim 4 of the ’053
patent, which was originally asserted against Respondents but has since been withdrawn from the
investigation. See Order No. 26.
The parties propose the following constructions for this claim term:
Complainants’ Construction I Respondents’ Construction
“an electrical path that passes through the “an electrical path including an electrically
metal base and an insulated conducting via” conducting interconnect that passes through,
' and is insulated from, the metal base"
JC at 1. .
The dispute between the parties centers on whether the phrase “through the metal base”
modifies the phrase “insulated conducting via” or whether it modifies the phrase “electrical path.”
Stated differently, the question is whether the disputed phrase reads on any electrical path running
through the metal base and through an insulating conducting via, regardless of whether the
insulating via is within the metal base. LSG argues it does. Respondents contend that the electrical
path in question must pass through the metal base by way of an insulated conducting via. See
CIMB at l9-20; RIMB at 6.
Respondents’ construction is correct. The basic rules of English grammar render the claim
language unambiguous _aswritten. Specifically, the claimed “electrical path” “include[s]” — that
is, moves electrons through — an “insulated via,” and‘that_“insulated via” is “through the metal
base.” The sequence of the words themselves, the proximity of the modifier words to their object,
ll
and the lack of offsetting commas in the phrase all confinn this meaning to a personof ordinary
skill in the art. '
Under the “last-antecedent” rule or the “nearest-reasonable-referent” rule of English
grammar, “modifiers and qualifying phrases attach to the terms that are nearest.” Grecian
Magnesite Mining, Indus. & Shipping C0,, _SAv. Comm ’r of Internal Revenue Serv. , 926 F.3d 819,
824 (D.C. Cir. 2019) (citing Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation
of Legal Texts 152 (2012)); see Toshiba Corp. v. Juniper Networks, Inc., 248 Fed. Appx. 170, 174
(Fed. Cir. 2007) (analyzing the term “policy information indicating a permitted neighboring
node/network from which a packet transfer by the label switching is to be permitted,” holding that
“from which” modifies “neighboring node/network,” and finding that if the patentee had intended
“fiom Which”to modify “policy information,” “it would have used commas to set off the phrase”);_
see also, e.g., Strunk & White, The Elements of Style (4th ed. 2000) § 20 (“Modifiers should come,
if possible, next to the word they modify.”). Here, the phrase “through the metal base” is
irmnediately proximate to the phrase “insulat_edconducting via.” In contrast, the phrase “through
the metal base” is distant from the phrase “electrical path”; it is separated by the intervening phrase
“including an insulated conducting via.” Because the prepositional phrase “though the metal base”
immediately follows the “insulating conducting via,” the nearest-reasonable-referent rule
presumes that the via is through the metal base. There are no “grammatical signals to the contrary”
here. Toshiba, 248 Fed. Appx. at 174 (Fed. Cir. 2007) (affirming district court’s construction of
“policy information indicating a permitted neighboring node/network from which a packet transfer
by the label switching is to be permitted” to mean “requiring the policy information to relate to an
upstream node/network”);
.12
l
Another rule of English usage supports the application of the nearest-reasonable-referent
rule here. Restrictive phrases — those essential to the meaning of the clause to which they belong
— should not be set off by commas. See Chicago Manual of Style, 248 (15th ed. 2003) (Sections \
6.3l, 6.36, 6.38). Commas should, however, be used to offset a restrictive clause when their
omission creates ambiguity. Here, there are no offsetting commas, so the phrase “through the
metal base” is presumed to be essential, that is, it is presumed to restrict or narrow the immediately
adjacent phrase “insulating conducting via.” '
By contrast, the construction proposed by LSG disregards these basic grannnar rules by
rearranging the words to mean “an electrical path through the metal base including an insulated
conducting via.” See CIMB at 20. LSG in effect seeks to read in offsetting commas where there
are none, transforming the claim language “an electrical path including an insulated conducting
via through the metal base” into “an electrical path, including an insulated conducting via, through
the metal b(ase.” Id.
Not only does LSG’s proposed construction contradict the plain meaning of the claim tenn
as written, it is also belied by the structure of other claims. Claim 4 is no longer asserted, but it
contains the same claim language in question. ' An examination of that claim and asserted claim 5
is instructive:
4. The packaged LED of claim 1 wherein at least one electrode of the LED
is connected to one of the underlying electrical cormection pads by an
electrical path including an insulated conducting via through the metal
base. - V
5. The packaged LED of claim l wherein at least one electrode of the LED
is connected to one of the underlying electrical connection pads by an
' electrical path including the metal base.
’O53patent, claims 4, 5 (emphasis added).
1 l 3
As can be seen, claims 4 and 5 are nearly identical; they vary only in their description of
an electrical path. In claim 5, the electrical path includes the metal base itself. That is, the electrons
of the metal base must flow to create the electrical path. LSG would have that same arrangement
invoked by the differing language of claim 4. The path in claim 4 is an insulated via “through”
the metal base. In claim 4, the electrons of the metal base are insulated from the electrical path,
not part of it. Thus, in claim 5, the patentees used language to describe the outcome LSG seeks,
but that language is not in claims 4 or 7. These differences presumably have a meaning. Tandon
Corp. v. U.S. Int’! Trade Comm ’n, 831 F.2d 1017,1023 (Fed. Cir. 1987). LSG’s proposed
construction would render superfluous the word “through,” an additional indicator that the
construction is incorrect. See Innova/Pure Water, 381 F.3d at 1119 (finding the term “operatively
comiected” does not require a physical cormection because the word “operatively” would
otherwise be redundant, and “all claim terms are presumed to have meaning in a claim”).
Figure 5 of the ’053 patent specification, and accompanying description, inform the proper
construction. That figure expressly illustrates and describes a via 56 “with insulated feed-though
in [the] metal base”:
14
y FIG. -5
LE" LED
aoumns PAD DIE
urn moor: 10 "l°°E' BONDING
smut) c"‘"*°°E PAD vu
“Cc as “urns ss ‘$6 51
17 noun ___‘_____
‘ ~ iiim BASE
it /J// 33;.sea -“--~“—-"
155 15 15ERAAaLE LTCC moot/muons - SW1
SOLDERABLE c0“mflEE“c“{‘ILoN (Al:‘l$%§IgTf$%B
(ANODEICATHUDB (SOLDERM,
’O53 patent, Fig. 5. _
Figure 5 is consistent with the normal grammatical interpretation of claim 7. It also
illustrates the differences between claim 4 and claim 5. The left side of the figure shows an
electrical path between anode/cathode 15B and LED anode/cathode 53 where the electrons of the
metal base are the path. In contrast, the right side of the figure shows a via 56 that provides an
electrical path that is insulated from the metal base as the via feeds through that base.
- In discussing Figure 5, the specification reinforces a plain-language reading of the claim.
It states that “[t]he top electrode 53 can be connected, for example by a bonding wire 54 to a top
bonding pad 55 on the ceramic 17 and through via 57 including insulated via section 56 to the
bonding pad 15A underlying the formed metal base 51.” ’053 patent at 4:7-1 1 (emphasis added);
see also id. at 2:54-57. Not only does this description match the illustration :Eroma technical
perspective, it reinforces the appropriate application of the nearest-reasonable-referent rule in
English grammar. The “including” phrase in the specification modifies the immediately proximate
“via 57,” not some remote phase like “top electrode 53.”
l5
In sum, the language of claim 7, the structure of claims 4 and 5, and consistent disclosures
in the specification and drawings indicate LSG’s construction must be rejected. I adopt the plain
meaning of the claim term.
C. “one or more isolated terminals formed on the metal base” (’483 patent)
The disputed term “one or more isolated terminals formed on the metal base” is recited in
asserted claim ll of the ’483 patent. The parties’ proposed constructions for this term are as
follows:
Complainants’ Construction Respondents’ Construction l
“one or more isolated tenninals formed on or Plain meaning A
from the metal base” , _
JCatl.
The plain meaning of the claim term is evident from the words themselves —-“one or more
isolated terminals fonned on the metal base.” LSG seeks to broaden this limitation to include
configurations in which the isolated tenninals are formed “from” the metal base, but LSG’s
proposed interpretation is not supported by the intrinsic evidence. In particular, nothing in the
’483 specification indicates that that patentee intended for the word “on” to mean “on or from.”\
See Hill—R0mServs., Inc. v. Stryker Corp, 755 F.3d I367, 1371 (Fed. Cir. 2014) (“We depart from
the plain and ordinary meaning of claim tenns based on the specification in only two instances:
lexicography and disavowal.”). I
LSG argues that the ’483 patent’s teachings with respect to Figures 1, 4, and 17 provide
support for its proposed construction, but the patent’s teachings in fact support the plain meaning
of the words “formed on the meta] base.” See, e.g., CIMB at 32-34. For instance, the embodiment
16
illustrated in Figure 17 expressly shows isolated tenninals formed on the metal base. ’483 patent
at 5:47-49 (“[A]s shown in FIG. 17, connections to the LED assembly can be made by isolated
temiinals 175 on base l74."§ (emphasis added). Nothing in Figure 17 or the corresponding text
suggests that the isolated terminals may be formed in any manner other than on the metal base."
Furthermore, Figtues 1A and 4 show that electrical comiection pads 15A and 15B — the claimed
“isolated terminals” — are formed on the single-structure metal base 11 in a stacked arrangement
with intervening insulation layer l2. See ’483 patent at 2:45-3:13.
Accordingly, the term “one or more isolated terminals formed on the metal base” shall be
construed in accordance with the plain and ordinary meaning of its constituent words.
1). “overlying” 0053, *4s3, and *421 patents) _
The disputed term “overlying” is recited in asserted claims 1, 7, 12, and 15 of the ’053
patent; asserted claim ll of the ’483 patent; and asserted claim 1 of the ’42l patent. The parties
proposed the following constructions for this term: I
Complainants’ Construction Respondents’ Construction
“lying above and not requiring direct contact “positioned only above”
with”
J C at 2.
The asserted patent claims use the term “overlying” in several contexts, such as “a layer of
ceramic overlying the metal base” (’054 patent, claim l) or “insulating layers overlying at least a
portion of the planar portion of the thennally conducting base” (’42l patent, claim 1). The parties
agree that “overlying,” as used in the asserted patents, ‘does not require direct contact. Tr. at
116:19-25; see also RRMB at 9. The dispute then boils down to whether, as Respondents contend,
17
that “overlying” means positioned only above. See Tr. at 117:1-5. Respondents argue that “if a
layer, for example, overlies something, it can’t be both above and below it at the same time.” Tr.
at 106:2-S.
Respondents’ proposed restriction that “overlying” means “positioned only above” is not
supported by the specifications and drawings of the asserted patents. For example, the ’053,patent
specification states that Figure 4 illustrates “lens 40 overlying the LED 10”:
FIG. 4 i
ii I 12
,, ......
“ GLASS ?ZQ'*!L2L:>§£'¢£4”'*’////////vzv///4I/2'/////11W"f..'f3>\.$Z退.';
,5 13A 136 15
’0$3 patent at 3:57-60.- But the left and right edges of lens 40 are not “positioned only above”
LED 10;they are to the side of LED 10 also. Respondents apparently argue, without much support,
that what is shown in Figure 4 can be “ignored” because the patent calls that figure “an alternative
embodiment.” RRMB at 10. I decline to ignore this significant intrinsic evidence.
_ Respondents prefer to focus on Figure 5 of the ’053 patent, arguing that the LED in Figure
5 is “overlying” the metal base within their construction of that term:
The LED, enclosed by a blue box, is clearly situated in the space overlying
the base (likewise, the three “solderable” components are underlying the
base). [Jiao Resp. D_ecl. 1]22.] Whether a portion of metal base 51 is
vertically higher than the LED, in a region not vertically aligned with the
LED, is irrelevant to whether or not the LED is overlying the base.
18
. FIG. 5
ten
e<»am:s Pm 01 LE“
urn moon 10E cifiwngg aumms
um ' [:ATl‘lDllEl t 53 PAD [mt VIA
as
\ \ 5‘ WAamt msuutm
V//* v? L FEED-THRGIEHINIE/ ram , RS7 ‘Q Y L L
m ;\;\ l ._ p
us 15
monetcmuxa mm" sowauas
RRMB at 9-10 (emphasis original); see RRMB Ex. 21 1]22 (Declaration of Jianzhong Jiao, Ph.D.
in Support of Respondents’ Responsive Claim Construction Brief) (hereinafter “Jiao Resp.
Decl.”). But the ’053 patent specification never describes LED 10 as “overlying” the metal layer.
Even if it did, Respondents appear to concede that it is possible for the lower edges of metal base
51 — illustrated at the far lefi and right of Figure 5 — to be at a higher elevation than LED 53.
See RRMB at 9-10. In such a configuration, the position of LED 10 is not exclusively “above”
the metal base; LED 10 is also to the side of some portions of the metal base and below the elevated
portions of .that same base. Respondents’ discussion of Figure 5 does not support their
construction.
l9
Having considered the arguments of the parties, I adopt the plain and ordinary meaning of
“overlying,” which is not limited to “positioned only above.”5 '
E. “wherein the electrically insulating layers include one or more terminals”
(’42l patent) _
The claim term “wherein the electrically insulating layers include one or more terminals”
is recited in asserted claim 1 of the ’42l patent. Respondents contend thatithis tenn is indefinite,
whereas LSG argues that this term is not indefinite and should be construed to mean “wherein
one or more terminals are on or within the electrically insulating layers.”
Complainants’ Construction Respondents’ Construction
“wherein one or more tenninals are on or Indefinite
within the electrically insulating layers”
This term is not indefinite.
JC at 2. , _
Respondents argue that this term is indefinite as “presenting a logical impossibility” when
construed in view of the claim construction principle that “includes” means “comprising.” See
RIMB at 15-16. Respondents cite to a declaration submitted by their expert, Dr. Thomas Katona,
in support of the following proposition: _
It is a physical impossibility for an element that is electrically insulating——
such as the claimed “electrically insulating layers”-—to be comprised of
elements that are electrically conducting—such as the “temiinals” disclosed
" and claimed in the ’42l patent. T
5Respondents argue that the glass depicted in Figure lA of the of the ’053 patent is not “overlying”
base 11 because the base is either “embedded in the glass” or the glass is “enveloping” the base;
See Tr. at ll0:10-112:7. My construction of “overlying” does not include instances of embedding
or enveloping as described by the Respondents at the claim construction hearing.
20 i
Id. at 16 (citing RIMB Ex. 4 (Declaration of Dr. Thomas Katona, Ph.D.)1[ 28 (hereinafter “Katona
Decl.”)). ‘ i
LSG argues that this claim term is not indefinite because a person of ordinary skill “would
not have read the claim language to be creating an ‘impossibility”’ and provides a declaration from
its expert, Dr. Martin Kuball, in support of this proposition. See CRMB 18-19 (citing CRMB Ex. 2
(Declaration of Dr. Martin Kuball in Support of Complainants’ Responsive Claim Construction
Brief) 1]38-44 (hereinafter “Kuball Resp. Decl.”)); see also Kuball Decl. 1111 116-24. According to
LSG, a person of ordinary skill “reading the claims in context of all the claim language, the
specification, and the nature of the invention, would understand this term to mean ‘wherein one or
more terminals are on or within the electrically insulating layers.’” Id. at 18-19 (citing ’42l patent
at 2:63-3:3, 3:66-4:4, 7:1-8 (examples in the specification of “terminals on or within an electrically
insulating layer”); _id.at Figs. 1A, 1B, 2, 10). LSG fiirtherargues that the specification’s use of
the term “include” does not exclusively mean “made up of’; it can also mean “to have.” Id. at 19.
Taken as a whole, the intrinsic evidence does not support a finding that the term “wherein
the electrically insulating layers include one or more tenninals” renders claim 1 invalid as
indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.” Nautilus, 134 S. Ct. at 2124. The extrinsic
expert declarations from both sides do little to resolve what a person of ordinary skill in the art
would understand when reading claim l. LSG’s expert Dr. Kuball takes the position that a person
of ordinary skill would understand the tenn to mean that the claimed “one or more tenninals” are
located within or on the claimed “electrically insulating layers,” whereas Respondents? expert
Dr. Katona opines that it is impossible for an electrically insulating (i.e., non-conducting) layer to
21
include a conducting terminal. See Kuball Resp. Decl. 1]43; Katona Decl. 1110. Without the
benefit of cross-examination, it is difficult to assess the weight that should be given to the opinions
of Drs. Kuball and Katona. ‘ _
It is thereiore my determination that Respondents have failed, at this time, to show clearly
and convincingly that a person of ordinary skill in the art would lack reasonable certainty as to the
scope of claim l of the ’421 patent in connection with the claim tenn “wherein the electrically
insulating layers include one or more terminals.”
F. “base” (’053, ’483, and ’421 patents) _ '
The-disputed tenn “base” is recited in asserted claims l, 5, 7, 12, 14, and 15 of the ’053
patent; asserted claim ll of the ’483 patent; and asserted claims 1 and 6 of the ’421 patent. The
parties agree that this term should be construed in the same manner for all asserted patents, and
proposed the following constructions: .
Complainants’ Construction i Respondents’ Construction
“a material that underlies (without requiring “a substrate or board that provides support for
direct contact) at least a portion of an the assembly components and layers”
insulatinglayer” __ or _
“support or foundation”
JCat2.‘
According to LSG, the dispute between the parties centers on whether or not the base needs
to be a “unitary” structure.‘ See Tr. at 61:24-62:23. For instance, LSG contends that the metal
base ll illustrated in Figure lA of the ’053 patent “contains three portions that are electrically
6 That a “base” does not necessarily require “direct contact” — as setforth in LSG’s proposed
construction — is not in dispute.
. 22
isolated from each other.” See CIMB at 16. Under this interpretation of the illustration, LSG
argues that Respondents’ proposed construction is incorrect because “[t]he metal base in Figure
1A is neither a ‘substrate’ nor a ‘board,’ nor does it necessarily ‘provide support for the assembly
components and layers,’ as Respondents’ construction would require. . . . It is also not necessarily
‘foundation,’ since it is a three-part base with two of its parts (the right and lefl sides) simply
running through the middle of the LED package.” Id. at l6-17. LSG further argues that the
embodiment in Figure 4 of the ’053 patent shows a three-part metal base ll that fails to support
Respondents’ proposed construction. See id. at 17.
LSG’s argument is not persuasive, however, insofar as the ’421 patent specification uses
the terms “metal base,” “metal support board,” and “metal substrate” intercl_1angeably.7 For
example, the specification teaches:
In the simplest form, LTCC-M technology is used to provide an integrated
package for a semiconductor LED die and accompanying circuitry, wherein
the conductive metal support board provides a heat sink for the LED die.
Referring to FIG. 10, bare LED die 100, for example, may be mounted
directly onto a metal base I01 of the LTCC-M system having high thennal
conductivity to cool the die 100. In such case, the electrical signals used to
operate the die 100 may be connected to the component from the ceramic
102. In FIG. 10, a wire bond 103 serves this purpose. Indirect attachment to
the metal support "board101 may also be used.
’421 patent at 6:57-6:67 (emphasis added); see also id. at 7: 1-8 (noting “components are mounted
on the metal support board 101”), Fig. 10 (indicating “METAL BASE” 101). The patents likewise
use the terms “substrates” and “boards” interchangeably. See, e.g., ’42l patent at 6:8-9 (“More
recently, metal support substrates (metal boards) have been used to support the green tapes”); ’O53
patent at 7:4-5 (same). '
7As the parties have agreed that “base” should be construed similarly across all asserted patents,
this intrinsic evidence is particularly germane.
23
. i .
With respect to >LSG’scontention that the claimed “base” need not be a unitary stnlcture,
Respondents argue that the metal base ll depicted in Figure 1A of the ’053 and ’_483patents does
not consist of three pieces. See, e.g., RRMB at 13-14. Respondents’ expert Dr. Jiao provided a
declaration in which he opined that a person of ordinary skill would understand Figure 1A to be a
“schematic cross section” of a packaged LED that shows where the insulated conducting via passes
through the metal base. See Jiao Resp. Decl. 111]26-29. According to Respondents, “[v]iewed
three-dimensionally, the metal base l l is one piece—a metal support substrate or metal board, see,
e.g., ’483 patent, 7:8~that' includes two electrically insulated vias enumerated as 14 . . . .” RRMB
at 13 (emphasis original).
Having considered the intrinsic evidence and the argtunents of the parties, including the
expert declarations submitted therewith, it is my determination that neither construction proposed
for “base” reflects the plain and ordinary meaning as viewed by a person of ordinary skill in the
art. LSG’s construction is overbroad because it would extend the claimed “base” to any
component underlying the claimed insulating layer. For instance, Figure 5 of the ’O53 and ’483
patents shows several elements underlying the insulating layer, including an anode/cathode l5A,
an anode/cathode 15B, thennal conduction pads 16,"and electrically conductive vias 56 and 57.
All of those components could constitute the claimed “base” under LSG’s construction. But that
is plainly not what a person of ordinary skill would understand from the reading the patents. On
the other hand, Respondents’ alternate proposals of either “a substrate or board that provides
support for the assembly components and layers” or “support or foundation” adds an unnecessary
ftmctional requirement into the disputed claim element_
Therefore, I will interpret the term “base” according to its ordinary meaning in the art,
which encompasses terms like f‘supportboard” and “substrate.”
24
G. .“one or more thermal vias” (’053 patent) _ . 4
9' The disputed phrase “one or more thermal vias’.’is recited in asserted claims 1 and 12 of
the ’053 patent. The parties proposed the following constructions for this tenn in their briefs:
V Complainants’ Construction Respondents’ Construction
No construction necessary. “one or more interconnects, the position,
dimension, and composition of which provide
enhanced heat flow from the LED die to the
metal base”
JC at 2. Y A .
At the claim construction hearing, the parties agreed that “thennal vias” means “vias that
enhance heat flow.” See Tr. at 54:19-55:12, 59:3-5. Accordingly, the claim term “one or more
thermal vias” is construed to mean “one or more viass that enhance heat flow.”
H; “wherein the layer of electrically insulating material includes at least one
opening to house the LED die” (’483 patent) .
The disputed claim term “wherein the layer of electrically insulating material includes at
least one opening to house the LED die” is recited in asserted claim 11 of the ’483 patent. The
parties have proposed the following‘ constructions for this term: e
Complainants’ Construction Respondents’ Construction
No construction necessary. - ‘fwhereinthe layer of electrically insulating
material includes at least one cavity or well
' into which the LED die is mounted”
v
3 The parties agree that “via” is an acronym for “vertical interconnect access.” See Tr. at 23 :14-17,
36:3-8, 58:7-10. '
I 25
JC at 2. The dispute between the parties arises because Respondents seek a construction of this
claim term that would exclude the embodiment shown in Figure 4 of the ’483 patent. See Tr. at
134:19-135:9. , i ,
I
The ’483 patent specification uses the word “openings” only once outside of the claims
when it teaches (in reference to Figure 17 reproduced below) that “[0]penings in insulating layer
171 form wells for the LEDs as before.” .’483 patent at 5:49-50.
' FIG‘. 17
,,- to
' 4:7 112
171 i
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The reference to “as before” points to sections of the ‘specification that discuss “cavities.”
For instance, Figure 1A of the ’483 patent (reproduced below) shows that “one or more ceramic
layers 17 . . . form acavity 18 around the LED 10.” Id. at 3:5-7.
I \
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Other embodiments described in the specification also refer to an insulating layer with a
“cavity” into which an LED die is mounted. See, e.g., ’483 patent at 2:8-9 (“FIGS. 3A and 3B
illustrate exemplary light dispersive cavities in the ceramic layer”); 3:49-52 (“FIGS. 3A and 3B
illustrate exemplary light dispersive cavities for the LED of FIG. l. In FIG. 3A the cavity 18 is
- .4
provided with walls 30 having straight taper. In FIG. 3B, the walls 31 have a parabolic taper.”),
4:7-10 (“The FIG. 5 device is similar to FIG. 1 device except that the metal base 51 is formed, as
by coining, to include a concave light reflecting cavity 52 around the LED die 10.”), 4:34-37 (“The
FIG. 7 embodiment is similar to the FIG. 5 embodiment except that the cavity 18 in the ceramic
layer 17 is enlarged so that the shaped region of formed metal base 51 is more widely exposed for
acting as a layer area reflector.”), 5:11-12 (In Fig. 12, “[a] plurality of cavities 122 includes a
plurality LED die [sic] 123, 124, and 125.”); see also 5:66-6:1; 6:7-12; 67:26-29;6:48-52.
Turning now to Figure 4 (reproduced below), on which the parties’ dispute is centered, the
specification teaches: _
FIG. 4 is a schematic cross section of an alternative embodiment of a single
LED packaged for high temperature operation. In this embodiment a.1ens
40 overlying the LED 10 replaces the ceramic layer 17, cavity 18 and lens
cover l9. The other features of the FIG. 4 device are substantially the same
as described for the FIG. l device.
27
’483 patent at 3:62-67.
FIG. 4
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The ’483 specification ‘makes clear that lens 40 in Figure 4 takes the place of the ceramic
layer l7 and cavity 18 in Figure 1, which correspond to the claimed “layer of electrically insulating
material” and “opening,” respectively? Accordingly, there is nothing in the Figure 4 illustration
to show the claimed “opening” in the “layer of electrically insulating material.” As Respondents
argue, “Figure 4 does not have the claimed ‘layer of electrically insulating material includ[ing] at
least one opening to house the LED die.’ It has a lens covering an LED instead.” RRMB at 19
(emphasis original).
In view of the teachings of the ’483 specification, Ifind that Respondents’ proposed
construction of “opening” to mean “cavity or well” reflects the plain and ordinary meaning of the
term ‘asunderstood by a person of ordinary skill in the art. The alternative embodiment shown in
Figure 4 is not encompassed by the disputed claim language. iThe fact that construing “opening”
in this manner would, in the words of LSG, “exclude Figure 4 from all claims of the ’483 patent,”
does not foreclose such a construction. See CRMB at 12. To be correct, the construction of a
claim need not encompass all embodiments taught in a patent specification. Baran v. Med. Device
9 Neither Figure 1 nor any other illustration in the ’483 patent appears to show “lens cover 19.”
28
I
Techs, Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on
every embodiment”); Helmsderfizr v. Bobrick Washroom Equip.,’Inc., 527 F-.3d1379, 1383 (Fed.
Cir. 2008) (“It is often the case that different claims are directed to and cover different disclosed
embodiments”). ’ ‘
I. “a thennally conductive region in solderable thermal contact with the
' thermally conducting base” (’42l patent)
The claim term “a thennally conductive region in solderable thermal contact with the
thermally conducting base” is recited in asserted claim 1 of the ’42l patent. Respondents contend
that this term is indefinite, whereas LSG argues this term is not indefinite and should be construed
in accordance with the meaning of “base” as determined earlier: ‘ L
Complainants’ Construction ~ Respondents’ Construction
For “base,” see Complainants’ proposal for i Indefinite
“base.” Otherwise, no construction is i - V l
necessary. * .
This tenn is not indefinite.
JC at 2. I
Respondents argue that the intrinsic evidence as to the meaning of this claim term “is
hopelessly inconsistent,” and base their argument on the language of claims 1 and 2 of the ’421
patent. See RIMB at 24. These claims read, in relevant part: . - .
1. A LED assembly . . . comprising . . . a thermally conducting base . . .
wherin a bottom surface of the LED assembly includes a thermally
conductive region in solderable thermal contact with the thermally
. conducting base . . . . V _
2. The LED assembly of claim 1, wherein the thermally conductive region
is an integral part of the thermally conducting base.
’42l patent at 7:46-8,13.
29
Respondents argue:
. Claim l on its face appears to require the “thermally conductive region” be
“solderable” to the “base.” However, claim 2—which depends from claim
1 and includes all of its limitations—requires the “region” and the “base” to
be “integral” with each other, which would preclude the possibility of the
- components being “solderable” to each other. The specification and
prosecution history are themselves murky and susceptible to various
interpretations.
RIMB at 24.
LSG argues that this claim term is not indefinite because a person of ordinary skill “would
readily rmderstand that claim 1 simply requires athennally conductive region that can be, but is
not necessarily yet, soldered to the thermally conductive base, whereas claim 2 requires that
thermally conductive region h-asbeen soldered to the base, and is thus integral to the base.” CRMB
at 20 (emphasis original) (citing Kuball Resp. Decl. W 46-53). According to LSG, a person of
ordinary skill would have been “infonned by the teachings of Figures 2 and 4, which make clear
that ‘solderable thennal contact’ means the capability to be soldered, such that the thermally
conductive region of Claim 1 need not actually be soldered to the base.” Id. at 21 (citing Kuball
Resp. Decl. 1]50). LSG further argues:
“[E]ven after the [thermally conductive] region and the base have been
soldered together (and have become integral), a [person of ordinary skill]
would still understand them to be in solderable contact with one another.
[Kuball Resp. Decl.] 1153. The fact that they have been soldered is proof
that they are solderable, i.e., capable of being soldered.
Id.
Taken as a whole, the intrinsic evidence does not support a finding that the tenn “a
thermally conductive region in solderable thermal contact with the thermally conducting base”
renders claim 1 invalid as indefinite. “[A] patent is invalid for indefiniteness if its claims, read in
light of the specification delineating the patent, and the prosecution history, fail to inform, with
30"
reasonable certainty, those skilled in the art about the scope of the invention.”~Nautilus, 134 S. Ct.
at 2l24. The extrinsic evidence, which includes expert declarations from both sides, is conflicting.
LSG’s expert Dr. Kuball takes the position that a person of ordinary skill would understand that
claim l requires a thermally conductive region that can be soldered to the thermally conductive
base, whereas claim 2 requires that thermally conductive region has been soldered to the base.
Respondents’ expert Dr. Katona opines that a “thennally conductive region” integral vsdtha “base?
cannot be “solderable” to that base because the two components are already combined in some
way. See Kuball Resp. Decl. 111]46-53; Katona Decl. 1]30-39. Without the benefit of cross
examination, it is difficult to assess the weight that should be given to the opinions of Drs. Kuball
and Katona.
It is therefore my determination that Respondents have failed, at this time, to show clearly
and convincingly that a person of ordinary skill in the art would lack reasonable certainty as to the
scope of claim 1 of the ’42l patent in comection with the claim tem1 “a thermally conductive
region in solderable thermal contact with the thermally conducting base.”
J. “A light emitting diode (LED) assembly” (’483 patent)
The phrase “[a] light emitting diode (LED) assembly” is recited in the preamble to asserted
claim l 1 of the ’483 patent. Respondents take the position that this preamble is limiting and should
be construed to mean “a low temperature co-fired ceramic on metal (LTCC-M) light emitting diode
(LED) assembly,” whereas LSG contends that no construction is needed and that the disputed
phrase should take its plain and ordinary meaning:
31
Complainants’ Construction Respondents’ Construction
‘N0 construction necessary. “A low temperature co-fired ceramic on metal
. (LTCC-M) light emitting diode (LED)
assembly”
JC at 2. \
As an initial matter, the intrinsic evidence demonstrates that the “light emitting diode
(LED) assembly” identified in the preamble-of claim ll is a limiting feature of the claims. It is
the structure that the other claim elements combine to form. Independent claim ll requires “one
or more isolated terminals formed on the metal base, the one or more isolated terminals electrically
connected to decoder/driver electronics that control the LED electrodes, wherein the electronics
are mounted within the assembly.” ’483 patent at 10:19-23. The preamble provides the antecedent
for “the assembly” on which the claimed electronics are mounted. The preamble of claim 11 is
also the antecedent for “[t]he assembly” in non-asserted dependent claim 13: “The LED assembly
of claim ll further comprising an additional metal block on which the LED assembly is mounted
to further improve heat dissipation.” Id. at 10:27-29. The fact that other parts of claim ll and
claim 13 refer back to the assembly in the preamble indicates that the preamble is limiting. See,
e.g., Pacing Techs, LLC v. Garmin Int’I, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (“Because
the‘preamble terms ‘user’ and ‘repetitive motion pacing system’ provide antecedent basis for and
are necessary to understand the positive limitations in the body of claims in the ’843 patent, we
hold that the preamble to claim 25 is limiting”). Moreover, the structure of the invention would
not be complete without the “light emitting diode (LED) assembly” introduced in the preamble.
The claims specifically describe components mounted to that assembly, which is an indication that
the preamble is limiting. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“Where a patentee
32
uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts
give effect to that usage”). 'For all of these reasons, I find the preamble of claim 11 is limiting,
and LSG does not dispute that here. See CIMB at 34-37; CRMB at 16-17.
As for the question of whether the preamble should be construed to mean “a low
temperature co-fired ceramic on metal (LTCC-M) light emitting diode (LED) assembly” as
proposed by Respondents, the prosecution history of the ’483 patent is instructive. The ’483 patent
’483 patent is a divisional of U.S. Patent Application No. 10/638,579 (“the ’579 application”). See
’483 patent at cover. The Examiner issued an Office Action stating that the ’579 application
contained two patentably distinct species of the same invention: 1
Group l (claims 1—l0) ~ a packaged LED comprising a metal base
including an underlying thermal connection pad and a pair of underlying
electrical connection pads, the pair of underlying electrical connection pads
is electrically connected to the electrodes of LED;
Group ll (claims 11-20) — a low temperature co-fired an metal
(LTCC-Ill) LED comprising a metal base including a thermal cormection
surface and a plurality of conductive traces insulated from the metal base
and cormected to the LED electrodes.
RIMB Ex. 19 (Office Action dated July 20, 2004, from ’483 prosecution history) at
NICHIA_00000089 (emphasis added). In response, the applicants chose to prosecute the first
group in the ’579 application (leading to the issuance of the ’053 patent), and to prosecute the
LTCC-M claims in divisional U.S. Patent Application No. 10/933,096 (“the ’096 application”),
which issued as the ’483 patent. Thus, following the applicants’ election in response to the July
20, 2004, Office Action, all the originally filed claims of the ’096 application included the phrase
“A low temperature co-fired [ceramic] on metal (LTCC-M) light emitting diode (LED) assembly.”
See, e.g., RIMB Ex. 20 (excerpts from ’483 prosecution history) at NICHIA_0O002337-38
(Preliminaly Amendment dated Sept. 2, 2004). ’
33
In the first Office Action of the ’O96application, the Examiner rejected as obvious eight of
the ten original claims over certain non-LED LTCC-M package prior art combined with certain
LED non-LTCC-M prior art. RIMB Ex. 20 at NICHIA_00002364-66 (Office Action dated Jun.
2, 2005). The Examiner also noted dependent claims 14 and 19 would be allowable if written in
independent form because “[t]he prior art of record fails to disclose the decoder/driver electronics
that control the LED electrodes is embedded in the LTCC-M package.” Id at NICHIA_00002366
(Office Action dated Jun. 2, 2005). The applicants subsequently amended the claims as instructed
and rewrote dependent claims 14 and 19 in independent fonn, resulting in issued claims l and 7.
14. at NICHIA_00O02387-89 (Reply dated Nov. 1, 2005).
In that same response, the applicants also added new claims 25734, including independent
application claims 25 and‘ 31 (which issued as claims ll and 17), stating that the new claims
covered embodiments “wherein the layer 17 overlying the metal base ll is comprised of any
suitable insulating material, and not limited to ceramic.” RIMB Ex. 20 at NICHIA_0O002394
(Reply dated Nov. 1, 2005). x
The Examiner subsequently allowed the amended and new claims and provided the
following reasoning:
The prior art of record fails to disclose all the limitations recited in the base
Claims. Specifically, the combination of a LTCC-M LED structure
comprising a metal base including a thermal connection surface; an LED >1
die having a pair of electrodes overlying and electrically insulated from the
metal base by an insulating layer; and one or more isolated terminals formed
on the metal base and electrically connected to decoder/driver electronics
which are mounted within the assembly (base claims 1l and 25) [i.e., issued
claims l and 11], Q a plurality of edge connector fingers connected to
decoder/driver electronics which are embedded in the assembly and control
the LED electrodes (base claims 21 and 31) [i.e., issued claims 7 and l7].
34
RIMB Ex. 20 at NICHIA_O0002407 (Reason for Allowance dated Dec. -30, 2005) (underline
original). i
The applicants did not comment on the Examiner’s stated reasons for allowance, and
Respondents argue this silence indicates that “the examiner’s statements are strong evidence as to
the interpretation of the claim limitations discussed in the reasons for allowance.” RIMB at 36
(citing Elkay Mfg. Co. v. Ebco Mfg. C0., 192 F.3d 973, 979 (Fed. Cir. 1999) (finding applicant’s
failure to respond to‘examiner’s ‘statement in the reasons for allowance relevant to claim
construction); ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir.
2003); Biogen, Inc. v. Berlex Labs., 1nc., 318 F.3d 1132, 1138-39 (Fed. Cir, 2003) (finding
examiner’s stated reasons for allowance persuasive evidence in claim construction)).
I find that, on this record, the applicants’ silence after receiving the Examiner’s stated
reasons for allowance does not constitute a clear and Lmmistakabledisavowal of claim scope. In
particular, I find the applicants’ express statement that they were adding claims (including issued
claim 11) to “present embodiments of the present invention wherein the layer 17 overlying the
metal base ll is comprised of any suitable insulating material, and not limited to ceramic” as
demonstrating a lack of disavowal. See RIMB Ex. 20 at NICHIA_00002394 (Reply dated Nov. 1,
2005) (emphasis added); see ‘also Salazar v. Proctor & Gamble C0., 414 F.3d 1342, 1345 (Fed.
Cir. 2005) (“Consequently, an applicant’s silence regarding statements made by the examiner
during prosecution, without more, cannot amount to a ‘clear and unmistakable disavowal’ of claim
' _/
35
sc0pe.”). Accordingly, I decline to limit the term “light emitting diode (LED) assembly” to only
LTCC-M assemblies. I will interpret it using its plain and ordinary meaning. V
-£7&;Z_’jfl/{Q24/\>
Clark s. Cheney
Administrative Law Judge
SO ORDERED.
36
In the Matter of »
CERTAIN LIGHT-EMITTING DIODE‘PRODUCTS, INV. NO. 337-TA-1168
SYSTEMS, AND COMPONENTS THEREOF (III) ~
PUBLIC CERTIFICATE OF SERVICE ,
I, Lisa R. Barton, hereby certify that the attached ORDER NO. 31 has been served by
hand upon the following parties as indicated, on February 11, 2020.
\
>Lisa R Barton, ecretary
U.S. Intemational Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Lighting Science_GroupCorporation and Healthe. Inc.:
Kayvan B. Noroozi, Esq.
NOROOZI PC
11601 Wilshire Blvd.
Suite 2170
Los Angeles, CA 90025
C] Via Hand Delivery
D Via Express Delivery
|2(Via First Class Mail
El Other: »
On Behalf of Complainant Global Value Lighting, LLC:
Kenneth G. Parker, Esq.
HAYNES AND BOONE, LLP
600 Anton Boulevard
Suite 700
Costa Mesa, CA 92626
III Via Hand Delivery
U Via Express Delivery
@’Via First Class Mail
[:1 Other:
On Behalf of Respondents Nichia Corporation and Nichia America Corporation:
Thomas R. Makin, Esq. "
SHEARMAN & STERLING LLP
599 Lexington Avenue V
New York, NY 10022-6069
[:1Via Hand Delivery
Cl Via Express Delivery
@'Via First Class Mail
\:| Other: i
In the Matter of
CERTAIN LIGHT-EMITTING DIODE PRODUCTS, ' INV. NO. 337-TA-1168
SYSTEMS, AND COMPONENTS THEREOF (III) V
PUBLIC CERTIFICATE OF SERVICE
On Behalf of Respondents Cree, Inc.. Cree Hong Kong, Limited, and Cree Huizhou Solid
State Lighting Co., Ltd.: .
S. Alex Lasher, Esq. Cl Via Hand Delivery
1300 I StT'3et>NW lZfVia First Class Mail
Suite D Other:
Washington, DC20005 M‘
On Behalf of Respondents OSRAM GmbH. OSRAM Licht AG, OSRAM Opto
Semiconductors GmbH, and OSRAM Opto Semiconductors, Inc.:
Paul M. Bartkowski, Esq. II] Via Hand Delivery
ADDUCI MASTRIANI & SCHAUMBERG, LLP Q)Via Expmss Delivefy
1133 Connecticut Avenue, NW Mvia First Class Mai]
12th Eloor " U Othfl: *
Washington, DC20036 M?
On Behalf of Respondents Signifv N.V. and Signifv North America Corporation:
Adam D. Swain, Esq. El Via Hand Delivery
ALSTON & BIRD LLP El Via Express Delivery
950 F Street, NW E’ Via First Class Mail
Washington, DC 20004 |:| Other;
On Behalf of Respondents General Electric Com-panv and Consumer Lighting_(U.S.)_,LLC
gd/b/a GE Lighting, LLC):
Eric S. Namrow, Esq. . III Via Hand Delivery
MORGAN, LEWIS & BOCKIUS LLP I] Via Express Delivery
llll Pennsylvania Avenue, NW ’ |ZrVia"First Class Mail
Washington, DC 20004-2541 III Other;
2
In the Matter of
CERTAIN LIGHT-EMITTING DIODE PRODUCTS, INV. NO. 337-TA-1168
SYSTEMS, AND COMPONENTS THEREOF (III)
PUBLIC CERTIFICATE OF SERVICE
On Behalf of Respondents Lumileds Holding B.V. and Lumileds. LLC
Bryan A. Kohm, Esq.
FENWICK & WEST LLP
555 Califomia Street
12th Floor
San Fransico, CA 94104
III Via Hand Delivery
Cl Via Express Delivery
Er Via First Class Mail
III Other:
On Behalf of Respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc.
John M. Caracappa, Esq.
STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, NW
Washington, D,C20036
On Behalf of Respondent Current Lighting Solutions. LLC:
Steven E. Adkins, Esq. , '
McGUIREWOODS LLP
2001 K Street, NW
Suite 400
Washington, DC 20006-1040
III Via Hand Delivery
II! Via Express Delivery
lZl'Via First Class Mail
E] Other:
|:| Via Hand Delivery
U Via Express Delivery
|ZVia First Class Mail
II] Other:
On Behalf of Respondents Acuitv Brands, Inc. and Acuitv Brands Lighting, Inc.:
Matthew S. Yungwirth, Esq.
DUANE MORRIS LLP
1075 Peachtree Street, NE
Suite 2000
Atlanta, GA 30309 F
On Behalf of Respondent Ledvance LLC
Edwin Wheeler, Esq-.
INTERLINK LAW GROUP, PC
One Market Street
Spear Tower, 36th Floor
San Francisco, CA 94105
III Via Hand Delivery
Cl Via Express Delivery
|ZfVia First Class Mail
III Other:
III Via Hand Delivery .
El Via Express Delivery
Ef Via First Class Mail
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