Nichia Corporation (“Nichia”) sued Everlight Americas, Inc., Everlight Electronics Co., Ltd. and Zenaro Lighting (collectively, “Everlight”) for infringement of three of Nichia’s patents disclosing packaging designs and methods of manufacturing LED devices. Following a bench trial, the district court found that Everlight infringed all three patents and failed to prove the patents invalid. The district court denied Nichia’s request for a permanent injunction. Nichia appealed the district court’s refusal to enter a permanent injunction, and Everlight cross-appealed the district court’s infringement and validity findings. The Court affirmed on all grounds.
Series of patents
Regarding the first patent, Everlight challenged the district court’s construction of the terms “lead” and “planar” and its resulting finding of infringement. Everlight argued that “lead” does not mean “the portion of the device that conducts electricity,” and instead should be construed to require that the lead electrically connects to a structure outside of the device. The Federal Circuit rejected Everlight’s construction because it had no support in the intrinsic evidence. Everlight also argued that “planar” does not mean “in a substantially same plane.” Everlight pointed to the patent’s specification, which uses “in a substantially same plane,” and the claims, which use “planar,” as evidence that the two terms should be given different meanings. The Court also affirmed that Nichia’s patent claims were not obvious because the references did not disclose all elements of the invention and there was no motivation to combine them. A person of ordinary skill would not look to the asserted references, which disclosed semiconductor devices when designing LED devices because the two involve different design and manufacturing considerations.
The second patent, the Court affirmed the infringement holding, finding that the accused products disclosed all elements of the claimed invention. There was furthermore no motivation to combine the two references asserted by Everlight to prove the claims obvious and the patent invalid. While the claims required an electrode with two exposed portions separated by a wall, the references taught an electrode with a single exposed area and a wall. Because the references disclosed different structures, addressed different problems, and proposed different solutions, the district court’s motivation to combine finding was not clearly erroneous.
The third patent, the Court summarily affirmed infringement for the same reasons as the second patent. The Court rejected Everlight’s obviousness argument because the references did not disclose all elements of the claimed invention and there was no motivation to combine them. While one of the asserted references was designed to reduce the flow of resin, the other was designed to enhance the flow of resin. Again, the references disclosed different structures, addressed different problems, and proposed different solutions.