Nichia Corporation v. Everlight Americas, Inc.

855 F.3d 1328, 122 U.S.P.Q. 2d (BNA) 1429, 2017 WL 1521595, 2017 U.S. App. LEXIS 7527
Court of Appeals for the Federal Circuit·Decided April 28, 2017·No. 2016-1585; 2016-1618·Published·Cited by 14 cases

Opinion

STOLL, Circuit Judge.

Nichia 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.

Background

I.

Nichia 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 *1332 America Corp. Nichia also researches and develops LED technology, including the technology disclosed in the three patents Nichia asserted in this case.

Everlight buys chips from suppliers and packages them into LEDs. Nichia, 2016 WL 810142, at *1. It sells LEDs in the U.S. directly to customers and through its subsidiaries. Id.

II.

Nichia 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:

[[Image here]]

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.

The LEDs in suit are miniscule; they are typically smaller than 1 millimeter in height. Id. They are used in LCD back-lights, video displays, automotive applications, and general lighting applications. Id.

The 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:

[mjultiple challenges must be addressed when de-signing 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 conduct *1333 ed 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 different directions.

Id. (internal emphases, citations, and quotations omitted).

The 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. 1 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 “Niehia has not demonstrated that Defendants’ past and continuing infringement of Nichia’s Patents has caused, and will continue to cause, irreparable harm to Niehia.” Id. It also reasoned that monetary damages could adequately compensate Niehia for Everlight’s infringement. The court thus concluded that Nic-hia was not entitled to injunctive relief. Id.

Niehia timely appealed, and Everlight cross-appealed. Niehia appeals the district court’s refusal to grant the injunction. Ev-erlight 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).

Discussion

I.

We 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 Ever-light failed to prove those claims invalid by clear and convincing evidence.

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Nichia Corporation v. Everlight Americas, Inc., 855 F.3d 1328, 122 U.S.P.Q. 2d (BNA) 1429, 2017 WL 1521595, 2017 U.S. App. LEXIS 7527 (Fed. Cir. 2017).

855 F.3d 1328 (Nichia Corporation v. Everlight Americas, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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