from the United States District Court for the Eastern
District of Texas in No. 2:13-cv-00702-JRG, Judge J. Rodney
P. Parker, Rothwell, Figg, Ernst & Manbeck, P.C.,
Washington, DC, argued for plaintiff-appellant. Also
represented by Martin Moss Zoltick, Michael Jones, Daniel
McCallum, Steven Paul Weihrouch.
Robin Selinger, Patterson & Sheridan LLP, Dallas, TX,
argued for defendants-cross-appellants. Also represented by
Jayme Partridge, Barden Todd Patterson, Houston, TX; Eric W.
Benisek, Jeffrey T. Lindgren, Robert McArthur, Stephen C.
Steinberg, Richard C. Vasquez, Vasquez Benisek &
Lindgren, LLP, Lafayette, CA.
Reyna, Hughes, and Stoll, Circuit Judges.
Corporation sued Everlight Electronics Co., LTD., Everlight
Americas, INC., and Zenaro Lighting, Inc. (collectively,
"Everlight") for infringement of three of its
patents. Following a bench trial, the district court found
Everlight infringed all three patents and had not proved them
invalid. The court denied, however, Nichia's request for
a permanent injunction against Everlight. Nichia appeals the
district court's refusal to enter an injunction against
Everlight. Everlight cross-appeals the court's judgment
that it infringes Nichia's patents and that it failed to
prove the patents invalid. We affirm.
Corporation is an LED company that manufactures and supplies
LEDs in markets around the world. Nichia Corp. v.
Everlight Elecs. Co., No. 02:13-CV-702, 2016 WL 310142,
at *1 (E.D. Tex. Jan. 25, 2016)
("Nichia"). Both parties agree that
"Nichia is the world's largest supplier of
LEDs." J.A. 2113, ¶ 154. It sells LEDs in America
through its subsidiary Nichia America Corp. Nichia also
researches and develops LED technology, including the
technology disclosed in the three patents Nichia asserted in
buys chips from suppliers and packages them into LEDs.
Nichia, 2016 WL 310142, at *1. It sells LEDs in the
U.S. directly to customers and through its subsidiaries.
accused Everlight of infringing three of Nichia's
patents, U.S. Patent Nos. 8, 530, 250, 7, 432, 589, and 7,
462, 870. All three disclose package designs and methods of
manufacturing LED devices. All three patents use a shared set
of vocabulary known in the art, as shown below on a common
configuration of an LED:
Id. at *4; J.A. 11. The court explained that this
LED includes the following parts:
(i) the "leads, " which are used to conduct the
electrical current to the LED chip; (ii) the "resin
housing, " which is made out of a reflective resin and
includes a recess in which the LED chip is placed; (iii) the
"LED chip" or "LED die" (about the size
of a grain of salt), which is mounted in the recess typically
by using an adhesive material in a process known as die
bonding; (iv) one or more "bond wires" that connect
the LED chip to the leads; and (v) an "encapsulation
material" that encapsulates the LED chip and protects it
from the environment.
Nichia, 2016 WL 310142, at *4.
LEDs in suit are miniscule; they are typically smaller than 1
millimeter in height. Id. They are used in LCD
backlights, video displays, automotive applications, and
general lighting applications. Id.
court found that LED design technology is a complex
technological space, where many design considerations pull in
different directions simultaneously. It found that "LED
package design involves the simultaneous integration and
balancing of multiple design considerations, including
electrical, optical, thermal, and mechanical design
challenges." Id. The court emphasized that:
[m]ultiple challenges must be addressed when designing an LED
package: (i) electrical design challenges: We have to conduct
a relatively high-current density through the small LED chip
and connect the LED chip to the leads; (ii) optical design
challenges: The intensities are very high, because the LED
chip is very small and the power emitted by the LED is quite
high. And, therefore, we need to handle a very high-optical
radiation density; (iii) thermal design challenges: The LED
chip inevitably creates heat, and this heat needs to be
conducted away; and (iv) mechanical design challenges:
includes protecting the LED chip from any external effect,
such as moisture or mechanical intrusion. These multiple
requirements can be contradictory and can pull the design in
Id. (internal emphases, citations, and quotations
district court held a bench trial and found that Everlight
infringed all three patents and had failed to prove by clear
and convincing evidence that the asserted claims of the three
patents are invalid. Id. at *1. Despite finding the
patents valid and infringed, the court refused Nichia's
request for prospective relief in the form of a permanent
injunction. Id. The court explained that
"Nichia has not demonstrated that Defendants' past
and continuing infringement of Nichia's Patents has
caused, and will continue to cause, irreparable harm to
Nichia." Id. It also reasoned that monetary
damages could adequately compensate Nichia for
Everlight's infringement. The court thus concluded that
Nichia was not entitled to injunctive relief. Id.
timely appealed, and Everlight cross-appealed. Nichia appeals
the district court's refusal to grant the injunction.
Everlight cross-appeals the district court's judgment
that Everlight infringes and that it failed to prove the
patents invalid with respect to all of the asserted claims of
Nichia's three asserted patents. We have jurisdiction
under 28 U.S.C. § 1292(c)(2).
begin with Everlight's appeal of the district court's
finding that Everlight infringed the asserted claims of
Nichia's three patents and its conclusion that Everlight
failed to prove those claims invalid by clear and convincing
review the court's findings of fact for clear error and
its legal conclusions de novo. Allergan, Inc. v. Apotex
Inc., 754 F.3d 952, 961 (Fed. Cir. 2014). "A
finding is 'clearly erroneous' when although there is
evidence to support it, the reviewing court on the entire
evidence is left with the definite and firm conviction that a
mistake has been committed." United States v. U.S.
Gypsum Co., 333 U.S. 364, 395 (1948). "Where the
district court's claim construction relies only on
intrinsic evidence, the construction is a legal determination
reviewed de novo." Ruckus Wireless, Inc. v.
Innovative Wireless Sols., LLC, 824 F.3d 999, 1002 (Fed.
Cir. 2016) (citing Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 841 (2015)). Infringement is a
question of fact. Golden Blount, Inc. v. Robert H.
Peterson Co., 438 F.3d 1354, 1361 (Fed. Cir. 2006).
"Obviousness is a question of law based on underlying
questions of fact." Daiichi Sankyo Co. v. Apotex,
Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
begin with the '250 patent. The district court found
claims 1, 7, 17, 19, and 21 of the patent infringed and not
proven invalid. Everlight first challenges the court's
construction of the claim term "lead" and its
finding of infringement under its proposed construction.
Second, it challenges the court's construction of
"planar" and the court's finding of
infringement under either its proposed construction or the
court's. Finally, Everlight challenges the court's
conclusion that it failed to prove the patent obvious.
'250 patent is directed to a process for manufacturing
LEDs that purportedly improves production efficiency. The
patent describes making a continuous sheet of LEDs and
separating, or "singulating, " them to make the
final product. '250 patent col. 2 ll. 49-53. During
singulation, LEDs often break. So to reduce breakage, the
patent suggests manufacturing LEDs by fitting a lead frame
between an upper and lower mold, filling the molds with
resin, and then singulating the LEDs. This, the patent
suggests, is a "simple and low-cost method for
manufacturing, in a short time, multiple light emitting
devices which ha[ve] high adhesion between a lead frame and a
thermosetting resin composition." Id. The
district court noted that, "[b]etween 2010 and 2013,
Nichia's sales of the products that practice the '250
patent increased from three percent of Nichia's total
sales volume, to 27 percent." Nichia, 2016 WL
310142, at *24. The court also explained that, "[i]n
2013, Nichia sold over 13.9 billion units, with revenues of
$1.7 billion." Id.
'250 patent's first claim is reproduced below:
1. A method of manufacturing a light emitting device, the
providing a lead frame comprising at least one notch;
plating the lead frame;
after plating the lead frame, providing an upper mold on a
first surface of the plated lead frame and a lower mold on a
second surface of the plated lead frame, and transfer-molding
a thermosetting resin containing a light reflecting material
in a space between the upper mold and the lower mold to form
a resin-molded body; and
cutting the resin-molded body and the plated lead frame along
the at least one notch to form a resin package, the resin
package comprising a resin part and at least one lead, and
the cutting step being performed such that an outer surface
of the resin part and an outer surface of the at least ...