Nichia Corporation v. Everlight Electronics Co., Ltd. et al
Filing
79
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 12/12/2014. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
NICHIA CORPORATION
v.
EVERLIGHT ELECTRONICS CO., LTD., ET
AL.
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Case No. 2:13-CV-702-JRG
CLAIM CONSTRUCTION
MEMORANDUM OPINION AND ORDER
On November 17, 2014, the Court held a hearing to determine the proper construction of
the disputed claim terms in United States Patent Nos. 7,432,589 (“the ‘589 Patent”); 7,462,870
(“the ‘870 Patent”); 7,521,863 (“the ‘863 Patent”); and 8,530,250 (“the ‘250 Patent”)
(collectively, the “Asserted Patents”). After considering the arguments made by the parties at
the hearing and in the parties’ claim construction briefing (Dkt. Nos. 52, 60, and 65), the Court
issues this Claim Construction Memorandum Opinion and Order.
Page 1 of 74
TABLE OF CONTENTS
MEMORANDUM OPINION AND ORDER ............................................................................................... 1
I.
BACKGROUND ............................................................................................................................. 4
A.
B.
The ‘870 Patent ................................................................................................................. 6
C.
The ‘863 Patent ................................................................................................................. 8
D.
II.
The ‘589 Patent ................................................................................................................. 4
The ‘250 Patent ............................................................................................................... 10
APPLICABLE LAW ..................................................................................................................... 13
A.
Claim Construction ........................................................................................................ 13
B.
Construction Indefiniteness ........................................................................................... 15
C.
Means-plus-function Limitations .................................................................................. 15
III.
CONSTRUCTION OF AGREED TERMS ................................................................................... 16
IV.
CONSTRUCTION OF DISPUTED TERMS ................................................................................ 17
E.
The ‘589 Patent ............................................................................................................... 17
1. “wall formed to extend across the bottom surface of the recess” ................. 17
2. “notch which is formed by cutting off a portion of an edge of the first lead
electrode” ............................................................................................................ 21
F.
The ‘870 Patent ............................................................................................................... 26
1. “adjacent to the side surface in the recess”................................................... 26
2. “wall portion” ............................................................................................... 30
3. “extends inwardly in a direction toward a [the] center of the recess” .......... 34
4. “means for electrically connecting said light emitting element to said
positive lead electrode, and said light emitting element to said negative lead
electrode” ............................................................................................................ 38
G.
The ‘863 Patent ............................................................................................................... 42
1. “top surface” ................................................................................................. 42
2. “a transparent member that covers the light emitting element and the top
surface of the insulating board”........................................................................... 46
3. “the through hole of the insulating board has an inner wall that is formed in a
substantially stepped rectangle corresponding to the substantially stepped
rectangle of the metal member” .......................................................................... 49
H.
The ‘250 Patent ............................................................................................................... 52
1. The preambles of claims 1 and 17 ................................................................ 52
2. “lead” ............................................................................................................ 55
3. “lead frame,” “resin,” “resin part,” “resin package,” and “resin-molded
Page 2 of 74
body” ................................................................................................................... 58
4. “the at least one lead comprises a step on a bottom surface or outer surface
thereof” ................................................................................................................ 61
5. “a portion of the resin part is disposed over a portion of the plating on the
upper surface of the at least one lead” ................................................................. 62
6. “notch” .......................................................................................................... 64
7. “cutting the resin-molded body and the plated lead frame along the at least
one notch” ........................................................................................................... 67
8. “planar” ......................................................................................................... 69
9. “light reflecting material” ............................................................................. 72
V.
CONCLUSION .............................................................................................................................. 74
Page 3 of 74
I.
BACKGROUND
A. The ‘589 Patent
The ‘589 Patent is titled Semiconductor Device, it was filed on April 17, 2007, and issued
on October 7, 2008. The ‘589 Patent generally relates to a semiconductor device capable of
preventing an adhesive for die bonding from flowing to a wire bonding area. See ‘589 Patent at
Abstract.1 The specification generally discloses semiconductor devices having a semiconductor
element 28 that is electrically connected to a first lead electrode 18 and a second lead electrode
1
The Abstract of the ‘589 Patent follows:
The present invention provides a semiconductor device capable of preventing an
adhesive for die bonding from flowing to wire bonding area. The semiconductor
device of the present invention comprises a semiconductor element 28 having a
pair of electrodes, a housing 12 having the recess 14 for accommodating the
semiconductor element 28, a first lead electrode 18 and the second lead electrode
20 which are exposed on the bottom of the recess 14, an adhesive layer 30 for die
bonding between the semiconductor element 28 and the first lead electrode 18,
and electrically conductive wires 32 for wire bonding between one electrode of
the pair of electrodes of the semiconductor element and the first lead electrode 18
and between the other electrode and the second lead electrode 20, wherein the
housing 12 has the wall 26 formed to extend across the bottom surface of the
recess 14 so as to divide the surface of the first lead electrode 18 into a die
bonding area 22 and a wire bonding area 24, and the first lead electrode 18 has the
notch 36 which is formed by cutting off a portion of an edge of the first lead
electrode 18 and located at least just below the wall 26, while the wall 26 and the
bottom portion 40 of the housing 12 are connected to each other through the notch
36.
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20. See. e.g., ‘589 Patent at Figures 2A2 and 2B3.
The specification states that the disclosed embodiments include housing 12, which has
recess 14. ‘589 Patent at 5:53–54. The specification adds that the first lead electrode 18 and the
second lead electrode 20 are exposed on the bottom surface 16 of the recess 14. Id. at 5:54–56.
The specification further states that “[t]he semiconductor element 28 is fixed on the substrate
side thereof onto the die bonding area 22 by means of an adhesive layer 30 formed from an
adhesive for die bonding, and electrodes formed on the semiconductor side are connected to the
wire bonding areas 24, 24' by means of electrically conductive wires 32.” Id. at 5:65–63. The
specification further discloses that “[a] first wall 26 [is] formed on the surface of the first lead
electrode 18 so as to traverse the first lead electrode 18” and “a second wall 34 is formed to
protrude between the first lead electrode 18 and the second lead electrode 20.” Id. at 5:58–63.
The specification further states that the first and second walls 26, 34 are formed integrally
with the housing 12. Id. at 5:63–65. The specification adds that “[t]he first and second walls 26,
34 are formed with such a height as the adhesive components of the adhesive used to form the
adhesive layer 30 do not bleed from the die bonding area 22 into the wire bonding areas 24, 24'
and wire bonding with the electrically conductive wires 32 is not hampered.” Id. at 6:4–8. The
specification adds that “a rectangular notch 36 is formed on the edge of the first lead electrode 18
at a position where the first wall 26 is to be formed,” and that “the first wall 26 and the bottom
portion 40 of the housing 12 are firmly connected to each other through the notch 36.” Id.
at 6:23–28.
2
3
Figure 2A is perspective sectional view of the semiconductor device of a first embodiment.
Figure 2B is a partially enlarged view of a part of Figure 2A.
Page 5 of 74
Plaintiff brings suit alleging infringement of claims 1 and 2 of the ‘589 Patent. Claim 1
of the ‘589 Patent is representative of the asserted claims and recites the following elements
(disputed terms in italics):
1. A semiconductor device comprising:
a semiconductor element having a pair of electrodes;
a housing having a recess for accommodating the
semiconductor element;
a first lead electrode and a second lead electrode exposed on the
bottom surface of said recess;
an adhesive layer for die bonding between the semiconductor
element and the first lead electrode; and
electrically conductive wires for wire bonding between one
electrode of the pair of electrodes of the semiconductor
element and the first lead electrode and between the other
electrode and the second lead electrode,
wherein the housing has at least one wall formed to extend
across the bottom surface of the recess so as to divide the
surface of the first lead electrode into a die bonding area
and a wire bonding area;
the first lead electrode has a notch which is formed by cutting off
a portion of an edge of the first lead electrode and located
at least just below the wall; and
the wall and the bottom portion of said housing are connected to
each other through the notch.
B. The ‘870 Patent
Page 6 of 74
The ‘870 Patent is titled Molded Package and Semiconductor Device Using Molded
Package, it was filed on March 23, 2006, and issued on December 9, 2008. The ‘870 Patent
generally relates to a semiconductor device that includes a molded package, a semiconductor
component, and an encapsulating member covering the semiconductor component. See ‘870
Patent at Abstract.4 The specification generally discloses light emitting devices that include a
molded member 100, which includes recesses 120 and 130 that have bottom surfaces and side
surfaces 106a and 106b. ‘870 Patent at 6:16-23 Figures 15 and 26.
The specification states that the devices include a “second metal member 102 and [a]
4
The Abstract of the ‘870 Patent follows:
A molded package comprises at least a first metal member, a second metal
member, and a third metal member. Each member includes an end portion
inserted into a mold member where a recess is formed and another end portion
protruding from an outer wall of the mold member. A portion of each main
surface of the metal members is exposed from the mold member in the bottom of
the recess. A portion of each main surface can be also divided into at least two
bonding regions by a wall portion comprising part of the mold member. A
semiconductor device of the present invention comprises the molded package, a
semiconductor component, and an encapsulating member covering the
semiconductor component, and has a high reliability.
5
Figure 1 is perspective view of a molded package of a first embodiment.
6
Figure 2 is a top view of a semiconductor device of a first embodiment.
Page 7 of 74
third metal member 103 [that] are used as the lead electrodes for supplying electric power to the
light emitting element 108 and the protective element 107 being housed in the recess formed in
the main surface of the molded package 100.” ‘870 Patent at 6:50–54. The specification further
states that “a part of the mold member 105 forming the inner wall of the first recess 120 extends
toward the second recess 130 as the wall portion 104, and a part of the wall portion 104 extends
approximately to the same plane with the inner wall 106b. Thus, the exposed main surfaces of
the metal members are divided.” Id. at 6:62–7:3. The specification further states that “[t]he
divided main surfaces have a plurality of bonding regions of 102a, 102b, 103a, and 103b. That is,
a region where a conductive wire used for connecting to a semiconductor component to be wire
bonded …” Id. at 7:4–8.
Plaintiff brings suit alleging infringement of claims 1, 2, 3, 5, 7–11, 23, 28, 30, 35, and 36
of the ‘870 Patent. Claim 1 of the ‘870 Patent is representative of the asserted claims and recites
the following elements (disputed terms in italics):
1. A molded package for a light emitting device comprising:
a molded member having a recess formed therein with a bottom
surface and a side surface;
a positive lead electrode partially disposed on the bottom
surface and adjacent to the side surface in the recess and
extending outwardly from said molded member;
a negative lead electrode partially disposed on the bottom
surface and adjacent to the side surface in the recess and
extending outwardly from said molded member;
wherein a portion of said positive lead electrode and a portion of
said negative lead electrode in the recess are separated
from each other by a wall portion, wherein said wall
portion extends inwardly in a direction toward a center of
the recess.
C. The ‘863 Patent
The ‘863 Patent is titled Light Emitting Device and Method for Producing the Same, it
was filed on December 22, 2006, and issued on April 21, 2009. The ‘863 Patent generally
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relates to a a light emitting device capable of efficiently dissipating heat outward. See ‘863
Patent at Abstract.7 The specification generally discloses light emitting devices that include “a
light emitting element 10, a metal member 30, an insulating board 40, and a transparent member
50.” ‘863 Patent 4:4–25; Figures 18 and 39.
The specification adds that “[t]he light emitting element 10 is secured on the top surface of the
metal member 30 with a die-bonding member.” Id. The specification states that “[t]he metal
member 30 is inserted into the insulating board 40 so that the light emitting element 10 is
disposed on the top surface side.” Id. The specification further states that “[t]he transparent
member 50 seals the light emitting element 10 and can pass light from the light emitting element
7
The Abstract of the ‘863 Patent follows:
A light emitting device capable of efficiently dissipating heat outward, and a
method producing it are provided. The light emitting device includes an insulating
board, a metal member, a light emitting element, a conductive member and a
transparent member. The insulating board has a through hole. The metal member
is inserted into the through hole. The light emitting element is mounted on the top
surface of the metal member. The conductive member is formed on the insulating
board and is electrically connected to the light emitting element. The transparent
member covers the light emitting element and the top surface of the insulating
board. The conductive member is continuously formed from the top surface to the
bottom surface of the insulating board. The bottom surface of the metal member is
substantially coplanar with the bottom surface of the conductive member on the
bottom surface side of the insulating board.
8
Figure 1 is perspective view of a light emitting device of a first embodiment.
9
Figure 3 is a cross-sectional view showing the light emitting device shown in Figure 1.
Page 9 of 74
10.” Id.
The specification describes that “[t]he insulating board 40 has a substantially
rectangular shape, and is provided with a through hole and through grooves 42.” Id. In addition,
the specification disclose that “[t]he through grooves 42 are located on a pair of side surfaces
opposed to each other,” and that “conductive members 60 [including terminals 61 and 62] are
formed in a pattern on the surface of the insulating board 40, and are electrically connected to the
light emitting element 10.” Id.
Plaintiff brings suit alleging infringement of claims 1–5 and 8–10 of the ‘863 Patent.
Claim 1 of the ‘863 Patent is representative of the asserted claims and recites the following
elements (disputed terms in italics):
1. A light emitting device comprising:
an insulating board that has a through hole;
a metal member that is inserted into the through hole;
a light emitting element that is mounted on the top surface of
the metal member;
a conductive member that is formed on the insulating board and
is electrically connected to the light emitting element; and
a transparent member that covers the light emitting element and
the top surface of the insulating board, wherein
the metal member has a substantially stepped rectangle in a
cross-sectional view, wherein
the through hole of the insulating board has an inner wall that
is formed in a substantially stepped rectangle
corresponding to the substantially stepped rectangle of the
metal member, wherein
the top surface of the insulating board is substantially flat,
wherein
the conductive member is continuously formed from the top
surface to the bottom surface of the insulating board,
wherein
the top surface of the substantially stepped rectangle of the
metal member projects higher than the top surface of the
insulating board.
D. The ‘250 Patent
The ‘250 Patent is titled Light Emitting Device, Resin Package, Resin-molded Body, and
Page 10 of 74
Methods for Manufacturing Light Emitting Device, Resin Package and Resin-molded Body, it
was filed on August 27, 2009, and issued on September 10, 2013. The ‘250 Patent generally
relates to a simple and low-cost method for manufacturing multiple light emitting devices in a
short time. See ‘250 Patent at Abstract.10 The specification generally discloses a “resin package
20 [that] is formed with the resin part 25 which mainly contains a light reflecting material 26,
and the leads 22.” ‘250 Patent a 6:7–31; Figures 111 and 212.
The specification states that “[t]he resin package 20 has the outer bottom surface 20a in
which the leads 22 are arranged, outer side surfaces 20b in which part of the leads 22 are
exposed, and the outer upper surface 20c in which an opening concave part 27 is formed.” Id.
10
The Abstract of the ‘250 Patent follows:
Provided is a simple and low-cost method for manufacturing, in a short time,
many light emitting devices wherein adhesiveness between a leadframe and a
thermosetting resin composition is high. The method for manufacturing the light
emitting device having a resin package (20) wherein the optical reflectivity at a
wavelength of 350-800 nm after thermal curing is 70% or more and a resin
section (25) and a lead (22) are formed on substantially a same surface on an
outer surface (20b) has: a step of sandwiching a leadframe (21) provided with a
notched section (21a) by an upper molding die (61) and a lower molding die (62);
a step of transfer-molding a thermosetting resin (23) containing a light-reflecting
substance (26), in a molding die (60) sandwiched by the upper molding die (61)
and the lower molding die (62) and forming a resin-molded body (24) on the
leadframe (21); and a step of cutting the resin-molded body (24) and the
leadframe (21) along the notched section (21a).
11
Figure 1 is a perspective view of a light emitting device of a first embodiment.
12
Figure 2 is a cross-sectional view showing the light emitting device shown in Figure 1.
Page 11 of 74
The specification adds that the concave part 27 has an inner bottom surface 27a and inner side
surface 27b, and that “[t]he leads 22 are exposed in the inner bottom surface 27a of the resin
package 20 and the light emitting element 10 is placed on the leads 22.” Id. The specification
further states that “[i]n the concave part 27 of the resin package 20, a sealing member 30 which
covers the light emitting element 10 is arranged.” Id.
The specification also discloses that “[t]he light emitting element 10 is electrically
connected with the leads 22 through wires 50,” and that “[t]he leads 22 are not arranged on the
outer upper surface 20c of the resin package 20.” Id. The specification further states that notch
parts are provided in a lead frame, and “the lead frame 21 is cut along the notch parts 21a and,
therefore, the cut part of the lead frame 21 is a part which is exposed from the resin package 20.”
Id.
Plaintiff brings suit alleging infringement of claims 1-3, 5-7, 9, 15-19, 21, 27, 29, and 31
of the ‘250 Patent. Claim 1 of the ‘250 Patent is representative of the asserted claims and recites
the following elements (disputed terms in italics):
1. A method of manufacturing a light emitting device, the
method comprising:
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 transfermolding 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 one
lead are planar at an outer side surface of the resin
package,
Page 12 of 74
wherein the plated lead frame is cut so as to form an unplated
outer side surface on the lead.
II.
APPLICABLE LAW
A. Claim Construction
“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 v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. See id. at 1313. C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group,
Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
understood by one of ordinary skill in the art at the time of the invention in the context of the
entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
Page 13 of 74
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he 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. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve ambiguous claim terms “where the
ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d
at 1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
disputed claim language, particular embodiments and examples appearing in the specification
will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
tool to supply the proper context for claim construction because a patent applicant may also
define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
in prosecuting a patent.”).
Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
Page 14 of 74
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
B. Construction Indefiniteness
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112(b). Whether a claim meets this definiteness requirement is a
matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007).
A party
challenging the definiteness of a claim must show it is invalid by clear and convincing evidence.
Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1368 (Fed. Cir.2014). The
ultimate issue is whether someone working in the relevant technical field could understand the
bounds of a claim. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed.
Cir. 2010). Specifically, “[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 Inc. v. Biosig
Instruments, Inc., 572 U.S. ___ , ___ (2014) (slip. op., at 1).
C. Means-plus-function Limitations
The asserted patents also contain means-plus-function limitations that require
construction. Where a claim limitation is expressed in “means plus function” language and does
Page 15 of 74
not recite definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112,
¶ 6. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part,
35 U.S.C. § 112, ¶ 6 mandates that “such a claim limitation ‘be construed to cover the
corresponding structure . . . described in the specification and equivalents thereof.’” Id. (citing 35
U.S.C. § 112, ¶ 6). Accordingly, when faced with means-plus-function limitations, courts “must
turn to the written description of the patent to find the structure that corresponds to the means
recited in the [limitations].” Id.
Construing a means-plus-function limitation involves multiple steps. “The first step in
construing [a means-plus-function] limitation is a determination of the function of the meansplus-function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303,
1311 (Fed. Cir. 2001). Once a court has determined the limitation’s function, “the next step is to
determine the corresponding structure disclosed in the specification and equivalents thereof.” Id.
A “structure disclosed in the specification is ‘corresponding’ structure only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim.”
Id. Moreover, the focus of the “corresponding structure” inquiry is not merely whether a
structure is capable of performing the recited function, but rather whether the corresponding
structure is “clearly linked or associated with the [recited] function.” Id.
III.
CONSTRUCTION OF AGREED TERMS
The parties have agreed to the construction of the following terms:
Claim Term/Phrase
“the half-value angle of light that
outgoes from the light emitting element
through the transparent member is
greater than 90 degrees”
Agreed Construction
“the angle between the directions in which the
luminous intensity value of light is half of the
maximum intensity value of light that outgoes
from the light emitting element through the
transparent member is greater than 90 degrees”
(‘863 Patent, Claim 4)
Page 16 of 74
(Dkt. No. 66-2 at 6.)
IV.
CONSTRUCTION OF DISPUTED TERMS
E. The ‘589 Patent
The parties’ dispute focuses on the meaning and scope of two phrases in the ‘589 Patent.
1. “wall formed to extend across the bottom surface of the recess”
Disputed Term
“wall formed to
extend across the
bottom surface of
the recess”
Plaintiff’s Proposal
“a protruding structure that
extends from one side of the
bottom surface of the recess to
the other side”
Defendants’ Proposal
“a structure that protrudes from the
bottom surface of the recess and that
extends from one point on the
perimeter of the recess to another point
on the perimeter of the recess”
a) The Parties’ Positions
The parties agree that the recited “wall” is a protruding structure or a structure that
protrudes. The parties dispute where the recited “wall” extends to and from. Plaintiff contends
that the recited wall “extends from one side of the bottom surface of the recess to the other side.”
Defendants contend that the recited wall “extends from one point on the perimeter of the recess
to another point on the perimeter of the recess.” Defendants also contend that the wall protrudes
“from the bottom surface of the recess.”
Turning to the parties arguments, Plaintiff argues that the specification describes the wall
as having a height (i.e., protruding) and as being connected on both ends to the side wall of the
housing (i.e., extending from one side of the bottom surface of the recess to the other side). (Dkt.
No. 52 at 7) (citing ‘589 Patent at 6:4–5; 5:56–60; 11:47–49; Figs. 2A-2C, 8A-8C, and 9A-9B).
Plaintiff also argues that its construction is consistent with The Oxford American College
Dictionary, which defines “across” as “from one side to the other of (something).” (Dkt. No. 52
at 8) (quoting Dkt. No. 52-8). Regarding Defendants’ construction, Plaintiff argues that it
obfuscates the meaning because the specification does not mention the term “perimeter,” let
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alone the phrase “point on the perimeter of the recess.” (Dkt. No. 52 at 8.) Thus, according to
Plaintiff, the specification provides no guidance on what constitutes the “perimeter of the recess”
or a “point” on that perimeter. (Dkt. No. 52 at 8.)
Defendants respond that Plaintiff’s construction excludes one of the preferred
embodiments. (Dkt. No. 60 at 7.) Specifically, Defendants argue that Figures 9A and 9B
illustrate a circular “recess 14” that by definition does not have “one side” and “the other side.”
(Dkt. No. 60 at 8.) Instead, Defendants argue that a circle is defined by a series of points that are
equidistant from the center of the circle. (Dkt. No. 60 at 8) (citing Dkt. No. 60-2 at 4 (MerriamWebster’s Collegiate Dictionary); Dkt. No. 60-3 at 4 (American Heritage Dictionary)). Thus,
Defendants contend that Plaintiff’s “one side” and “other side” construction specifically
excludes the embodiment shown by Figures 9A and 9B where the “recess 14” is circular. (Dkt.
No. 60 at 8.) Defendants also argue that their construction accounts for all the embodiments
disclosed in the ‘589 Patent by making clear that the wall “extends from one point on the
perimeter of the recess to another point on the perimeter of the recess.” (Dkt. No. 60 at 9.)
Plaintiff replies its construction does not exclude the circular recess because circles have
“sides.” (Dkt. No. 65 at 7) (citing Dkt. 65-2 at 5 (Microsoft Encarta College Dictionary (2001));
Dkt. 65-3 at 5 (American Heritage Dictionary of Science (1986))). Plaintiff also argues that
Defendants’ requirement that the wall protrude “from the bottom surface of the recess” is
unnecessary because the claims require only that the wall be part of the housing, not the bottom
of the recess. (Dkt. No. 65 at 7.) Finally, Plaintiff argues that Defendants seek to read in a
limitation—“point on the perimeter”—without citation to any evidence. (Dkt. No. 65 at 8.)
Plaintiff contends that the claims specify that the wall divides the first lead electrode, not the
recess, and the specification does not mention the term “perimeter,” let alone the phrase “point
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on the perimeter of the recess.” (Dkt. No. 65 at 8.)
For the following reasons, the Court finds that the phrase “wall formed to extend across
the bottom surface of the recess” should be construed to mean “a protruding structure that
extends across the bottom surface of the recess.”
b) Analysis
The phrase “wall formed to extend across the bottom surface of the recess” appears in
claims 1, 2, 5, and 6 of the ‘589 Patent. The Court finds that the phrase is used consistently in
the claims and is intended to have the same meaning in each claim. The claim language further
indicates that the recited “wall” is a protruding structure that creates two areas. For example,
claim 1 recites “wherein the housing has at least one wall … so as to divide the surface of the
first lead electrode into a die bonding area and a wire bonding area.” The specification states
that the purpose for creating two areas is to prevent the adhesive used to bond the semiconductor
element from bleeding into the wire bonding areas. See, e.g., ‘589 Patent 6:4–8 (“The first and
second walls 26, 34 are formed with such a height as the adhesive components of the adhesive
used to form the adhesive layer 30 do not bleed from the die bonding area 22 into the wire
bonding areas 24, 24' and wire bonding with the electrically conductive wires 32 is not
hampered.”). Thus, the Court agrees with the parties that the recited “wall” is a protruding
structure.
Regarding the issue of where the claimed “wall” extends to and from, the Court turns to
the specification. For the embodiments illustrated in Figures 1 and 2A-2C, the specification
states that “the first wall 26 extends across the first lead electrode 18.” ‘589 Patent at 6:20–21.
Similarly, for the embodiments illustrated in Figures 7A-7C, the specification states that “first
wall 26 extends across the surface of the first lead electrode 18.” ‘589 Patent at 10:31–33. For
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the embodiments illustrated in Figures 8A-8C, the specification states that “the first wall 26
extends across the surface of the first lead electrode 18” ‘589 Patent at 11:47–48. Finally, for the
embodiments illustrated in Figures 9A-9C, the specification states that “the first wall 26 extends
across the surface of the first lead electrode 18.” ‘589 Patent at 13:21–22. Thus, consistent with
the claim language, the specification illustrates and describes that the wall extends across the
bottom surface of the recess. Moreover, this construction is independent of the shape of the
recess and does not exclude any embodiments.
Defendants contend that the wall “extends from one point on the perimeter of the recess
to another point on the perimeter of the recess.” Although the preferred embodiments generally
illustrate the wall connected to the side wall of the housing, this is neither recited in the claim
nor is it necessarily required to prevent adhesive from bleeding from the die bonding area.
Instead, the wall must have height or be a protruding structure. Indeed, the patentee described
connecting the wall to the side walls of the housing in the specification, but did not include this
language in the claims. See, e.g., ‘589 Patent at 6:21–22 (stating that the first wall is “connected
on both ends thereof to the side wall 38 of the housing 12.”); 10:31–34 (stating that the first wall
“is bonded on both ends thereof with the side wall 38 of the housing 12.”); 11:47–50 (stating that
the first wall “is bonded with the side wall 38 of the housing 12 on both ends.”); 13:22–23
(stating that the first wall “extends to the side wall 38 of the housing 12.”)
Moreover, the Court does not adopt Defendants’ construction because the specification
does not use the word “perimeter” not does it state that the wall “extends from one point on the
perimeter of the recess to another point on the perimeter of the recess.” Thus, the Court agrees
with Plaintiff that this language is unnecessary and could be confusing to a jury. Finally, the
claim language itself only requires the wall “to extend across the bottom surface of the recess,”
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and the Court’s construction mirrors this unambiguous language. In addition, requiring the wall
to be a protruding structure is consistent with ensuring that “the adhesive components do not
overflow nor leak to the wire bonding area even when an adhesive consisting of adhesive
components having low surface tension is used in the adhesive layer for die bonding.” ‘589
Patent at 4:26–30. The Court has considered the extrinsic evidence submitted by the parties and
did not find it helpful in light of the intrinsic evidence.
c) Court’s Construction
In light of the intrinsic evidence, the Court construes the phrase “wall formed to extend
across the bottom surface of the recess” to mean “a protruding structure that extends
across the bottom surface of the recess”.
2. “notch which is formed by cutting off a portion of an edge of the first
lead electrode”
Disputed Term
“notch which is formed
by cutting off a portion
of an edge of the first
lead electrode”
Plaintiff’s Proposal
“a cut-out portion in an edge of
the first lead electrode which is
formed by cutting”
Defendants’ Proposal
“an indentation formed by a
slicing operation subsequent to
the formation of the lead
electrode”
a) The Parties’ Positions
The parties dispute two issues: (1) when the “cutting” step of the lead electrode to form
the notch occurs; and (2) what constitutes “cutting.” Plaintiff contends that the term “cutting” is
well understood within the art and that the claims expressly recite that the notch is “formed by
cutting off a portion.” (Dkt. No. 52 at 9.) Plaintiff also argues that its construction is supported
by the specification. (Dkt. No. 52 at 9) (citing ‘589 Patent at 3:14–16; 3:39–42; 7:18–32).
Plaintiff further argues that “the term ‘cutting,’ in the field of LED manufacturing, includes both
mechanical processes (e.g., stamping, punching) for removing a portion of the lead electrode and
chemical processes (e.g., etching) for removing the portion of the lead electrode.” (Dkt. No. 52
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at 9) (quoting Dkt. No. 52-6 at ¶¶ 17-20 (Declaration of Professor E. Fred Schubert (“Schubert
Decl.”))).
Regarding Defendants’ construction, Plaintiff argues that the claims and specification
consistently use the term “cutting,” and there is no support for Defendants’ proposed “slicing
operation.” (Dkt. No. 52 at 9.) Plaintiff further argues that it is not clear what a “slicing
operation” would entail. (Dkt. No. 52 at 9-10.)
Plaintiff also contends that there is no
requirement in the claims or the specification for a specific order of operations. (Dkt. No. 52
at 10.) Thus, according to Plaintiff, Defendants’ construction improperly adds limitations to the
claim because it requires the “slicing operation” to happen “subsequent to the formation of the
lead electrode.” (Dkt. No. 52 at 10.)
Defendants respond that it is common sense that the lead electrode must first exist before
the notch can be “formed by cutting off a portion” of it. (Dkt. No. 60 at 9.) Defendants argue
that the specification states that a metal sheet is “punched” to create a “lead frame,” which in
turn contains a pair of “lead electrodes.” (Dkt. No. 60 at 10) (citing ‘589 Patent at 7:51–54).
Defendants continue that it is subsequent to this step that the specification describes the
formation of the notch. (Dkt. No. 60 at 10) (citing ‘589 Patent at 7:18–20). Thus, according to
Defendants, the specification states that the notch is formed by “cutting” (as opposed to
punching) a rectangular portion from the edge of the first lead electrode. (Dkt. No. 60 at 10.)
Defendants also argue that independent claim 2 recites a “through hole,” but does not
require it to be cut or otherwise formed in the lead electrode. (Dkt. No. 60 at 10.) Defendants
contend that this would encompass a scenario where the through hole is formed simultaneously
with the lead electrode. (Dkt. No. 60 at 10) (citing ‘589 Patent at 3:39–42). Defendants also
argue that the extrinsic evidence cited by Plaintiff cannot overcome the statements in the
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intrinsic record, and therefore should carry no weight. (Dkt. No. 60 at 10-11.)
Defendants next argue that the specification denotes a clear distinction between “cutting
off a portion of an edge of the lead electrode” to make the notch, and “punch[ing] through … the
metal sheet thereby to make a lead frame.” (Dkt. No. 60 at 11) (quoting ‘589 Patent at 3:15–16;
7:51–52).
Thus, according to Defendants, their construction for cutting as “slicing” most
naturally aligns with the specification’s description of the invention. (Dkt. No. 60 at 11.)
Defendants contend that Plaintiff’s construction eliminates the difference between “cutting” and
“punching,” as set forth in the specification, and is based on unsupported extrinsic evidence.
(Dkt. No. 60 at 11.)
Plaintiff replies that Defendants’ requirement that the notch and lead electrode be formed
sequentially, and not simultaneously, impermissibly imports a process limitation into a pure
product claim. (Dkt. No. 65 at 8.) Plaintiff argues that this disregards the principle that actions
may be performed simultaneously absent express sequential limitations. (Dkt. No. 65 at 8.)
Plaintiff also contends that Defendants’ assertion regarding the “clear distinction” between
“cutting” versus “punching” ignores the common understanding that “cutting” includes
“punching,” as reflected in the prior art. (Dkt. No. 65 at 8) (citing to Dkt. 65-4 at 12:20–21;
16:8–9 (U.S. Patent No. 5,900,582)).
For the following reasons, the Court finds that the phrase “notch which is formed by
cutting off a portion of an edge of the first lead electrode” should be construed to mean “a
cut-out portion in an edge of the first lead electrode which is formed by cutting”.
b) Analysis
The phrase “notch which is formed by cutting off a portion of an edge of the first lead
electrode” appears in 1 and 6 of the ‘589 Patent. The Court finds that the phrase is used
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consistently in the claims and is intended to have the same meaning in each claim. The Court
further finds that a person of ordinary skill in the art would understand that the recited “notch” is
a “cut-out portion.” Specifically, the specification states “the cut-out portion may have a form of
notch formed by cutting off a portion of the edge of the first lead electrode.” ‘589 Patent at 3:39–
42; see also 3:14–18 (“the first lead electrode has a cut-out portion which is formed by cutting
off a portion of an edge of the lead electrode”). The specification further states that the notch is
not limited to a rectangular shape and may even be a tapered shaped. ‘589 Patent at 7:18–28. In
contrast to the intrinsic evidence, Defendants ask the Court to construe “notch” as “an
indention.” The word “indention” does not appear in the specification and would potentially
require its own construction. Thus, the Court finds that consistent with the specification, “notch”
should be construed to mean a “cut-out portion.”
In addition, the Court rejects Defendants’ argument that “cutting” must be construed as
“a slicing operation.”
Once again, the words “slicing operation” do not appear in the
specification and it is not clear what would be considered a slicing operation. Defendants’ sole
support for “slicing operation” is that the specification refers to “punching” the metal sheet to
make a lead frame and “cutting” off a portion of an edge of the lead electrode. (Dkt. No. 60 at
11.)
Thus, according to Defendants, “cutting” cannot be “punching.”
The Court is not
persuaded that a person of ordinary skill in the art would understand that this language prevents
“cutting” from including “punching.” In fact, the Court finds that the term “cutting” is not
confusing or ambiguous.
Moreover, the extrinsic evidence submitted by Plaintiff indicates that “cutting” is broader
than “punching,” and can include either “punching” or “etching.” For example, the prior art
submitted by Plaintiff states that “punching” or “etching” are forms of “cutting.” (Dkt. No. 65-4
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(U.S. Patent No. 5,900,582 at 12:20–21 (“means of cutting such as punching or etching”); 16:8-9
(“cut by punching or etching so as to produce a leadframe”)).) Likewise, Plaintiff cites to
Professor Schubert’s declaration, which states that “the term ‘cutting,’ in the field of LED
manufacturing, includes both mechanical processes (e.g., stamping, punching) for removing a
portion of the lead electrode and chemical processes (e.g., etching) for removing the portion of
the lead electrode.” (Dkt. No. 52-6 at ¶¶ 17-20) (Schubert Decl.). The Court finds that this
extrinsic evidence is consistent with the intrinsic evidence. Accordingly, the Court finds that a
person of ordinary skill in the art would understand “cutting” includes various processes for
removing a portion of the lead electrode, and is not limited to a “slicing operation,” as
Defendants propose.
Finally, the Court rejects Defendants’ contention that the lead electrode must exist before
the notch can be cut into it. The claims are apparatus claims and there is nothing that prevents
the action of cutting the notch at the same time the metal sheet is punched to make the lead
frame. Indeed, the Court has found that “cutting” may include punching or etching operations.
The specification describes a preferred embodiment that Defendants contend requires cutting the
notch subsequent to the formation of the lead electrode. Even assuming that Defendants are
correct that a person of ordinary skill of the art would interpret the specification as they contend,
the Court is not persuaded that the claims should be limited to this embodiment. Furthermore,
Defendants argue that Claim 2 indicates that the recited “through hole” embodiment could
encompass a scenario where the hole is formed simultaneously with the lead electrode. (Dkt.
No. 60 at 10.) The Court agrees and finds that Defendants’ argument indicates that a person of
ordinary skill in the art would understand that multiple features can be formed simultaneously
with the lead electrode, including cutting a notch. Accordingly, the Court rejects Defendants’
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construction that would exclude cutting the notch and lead electrode simultaneously.
c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the phrase “notch
which is formed by cutting off a portion of an edge of the first lead electrode” to mean “a
cut-out portion in an edge of the first lead electrode which is formed by cutting”.
F. The ‘870 Patent
The parties’ dispute focuses on the meaning and scope of four terms/phrases in the ‘870
Patent.
1. “adjacent to the side surface in the recess”
Disputed Term
“adjacent to the side
surface in the recess”
Plaintiff’s Proposal
“next to or lying near the side
surface of the recess”
Defendants’ Proposal
“sharing an endpoint or border with
the side surface in the recess”
a) The Parties’ Positions
The parties dispute what it means to be “adjacent” to the “side surface in the recess.”
Plaintiff contends that “adjacent” means “next to or lying near.” Defendants contend that
“adjacent” means “sharing an endpoint or border with.” Turning to the parties’ arguments,
Plaintiff contends that the claim language itself describes a position relative to the side surface of
the recess, without reciting any additional elements (e.g., an endpoint or a border) and without
requiring a relationship between these additional elements (e.g., sharing). (Dkt. No. 52 at 10.)
Plaintiff also argues that its construction is consistent with the extrinsic evidence submitted by
both parties. (Dkt. No. 52 at 10-11.)
Regarding Defendants’ construction, Plaintiff argues that it improperly imports a
limitation requiring adjacent components to “share an endpoint or border.” (Dkt. No. 52 at 11.)
Plaintiff argues that the claims do not recite an endpoint or border for any of the components and
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do not describe a relationship between these hypothetical components. (Dkt. No. 52 at 11.)
Plaintiff also argues that Defendants’ use of the term “sharing” implies that “adjacent”
components are in direct contact. (Dkt. No. 52 at 11.) Plaintiff argues that this is inconsistent
with how the term is used in the specification. (Dkt. No. 52 at 11) (citing ‘870 Patent at 7:29–31;
Figure 2).
Defendants respond that the claim language requires that the positive and negative lead
electrodes are partially disposed on the bottom surface of the recess of the molded member and
must “extend[] outwardly” therefrom. (Dkt. No. 60 at 12.) Defendants argue that because of this
configuration, the electrodes must necessarily “share an endpoint or border” with the side surface
of the recess as the electrodes extend from the bottom surface of the recess “outwardly from said
molded member.” (Dkt. No. 60 at 12.) Defendants also argue that Figure 5 illustrates that the
positive (102, 102c) and negative (103, 103c) lead electrodes share an endpoint or border with
the side surface of the recess (120). (Dkt. No. 60 at 12-13.) Finally, Defendants argue that the
extrinsic evidence confirms its construction. (Dkt. No. 60 at 13.)
Regarding Plaintiff’s construction, Defendants argue the phrases “next to” and “lying
near” are completely subjective. (Dkt. No. 60 at 13.)
Defendants contend that Plaintiff’s
construction invites a situation where one expert claims that the lead electrodes are “next to” or
“lying near” the side surface of the recess, and the opposing expert claims the opposite. (Dkt.
No. 60 at 13.) Defendants claim that the ambiguity of Plaintiff’s proposed construction is made
worse by the scale of the semiconductor disclosed in the specification and the accused products.
(Dkt. No. 60 at 13.)
Plaintiff responds that Defendants’ own dictionary definitions support Plaintiff’s
construction because they define the term “adjacent” to mean “lying near” or “next to.” (Dkt.
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No. 65 at 8.) Plaintiff further argues that Defendants’ proposal to limit the claim to a single
embodiment (depicted in the patent’s figures) is contrary to law. (Dkt. No. 65 at 9.)
For the following reasons, the Court finds that the phrase “adjacent to the side surface
in the recess” should be construed to mean “lying near or adjoined to the side surface in the
recess”.
b) Analysis
The phrase “adjacent to the side surface in the recess” appears in 1, 7, 35, and 36 of the
‘870 Patent. The Court finds that the phrase is used consistently in the claims and is intended to
have the same meaning in each claim. The claims recite that the “molded member” has a
“recess” with a “bottom surface and a side surface.” The claims further recite that a positive
lead electrode and a negative lead electrode are “partially disposed on the bottom surface and
adjacent to the side surface in the recess.” The Court agrees that this could potentially include
an embodiment where the electrode and the side surface in the recess share a border. However,
the Court does not agree that this language necessarily requires these elements to share a border
as Defendants contend.
Instead, the Court finds that the intrinsic evidence indicates that the patentee intended the
term “adjacent” to also mean “lying near.” Specifically, the specification refers to a “bonding
region 103b which is adjacent to the bonding region 103a.” ‘870 Patent at 7:29–31(emphasis
added).
Page 28 of 74
As illustrated in Figure 2 (emphasis added), bonding region 103a is not in direct contact with
bonding region 103b.
Thus, Defendants’ construction would unnecessarily narrow the
patentee’s intended meaning for the term “adjacent.” Defendants argue that this example is not
“with regard to the lead electrodes and the side surface of the recess.” (Dkt. No. 60 at 14 n.6.)
Defendants’ argument is not accurate because the bonding regions 103a and 103b are part of the
lead electrode 103. Furthermore, Defendants have not provided any evidence that the patentee
used the term “adjacent” in a manner that contradicts this example.
Finally, the patentee’s use of the term is consistent with the extrinsic evidence submitted
by the parties. Specifically, “adjacent” is defined as “close to; lying near.” (Dkt. Nos. 52-7 at 4
and 60-5 at 4 (The American Heritage Dictionary).) The Court does agree with Defendants that
certain embodiments illustrate that the electrodes and the side surface in the recess are
“adjoined.” However, the Court is not persuaded the claims should be limited to only these
embodiments. Thus, the Court finds “adjacent” should be construed as “next to or adjoined to.”
c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the phrase “adjacent
to the side surface in the recess” to mean “lying near or adjoined to the side surface in the
Page 29 of 74
recess”.
2. “wall portion”
Disputed Term
“wall portion”
Plaintiff’s Proposal
“a portion of the molded
package/molded member/device”
Defendants’ Proposal
“a distinct structure formed as part of the
molded package/molded
member/device”
a) The Parties’ Positions
The parties dispute whether the “wall portion” is a “distinct structure,” as Defendants
contend. Plaintiff notes that independent claims 1 and 7 recite a “wall portion,” and that
dependent claims 3, 5, 11, and 23 recite that “said wall portion is integral with said molded
member.” (Dkt. No. 52 at 12) Thus, according to Plaintiff, the claim language is consistent with
the interpretation that a wall “portion” refers to a portion of the molded member, molded
package, or light emitting device. (Dkt. No. 52 at 12.)
Plaintiff further argues that the
specification discloses that “a part of the mold member 105 forming the inner wall of the first
recess 120 extends toward the second recess 130 as the wall portion 104, and a part of the wall
portion 104 extends approximately to the same plane with the inner wall 106b.” (Dkt. No. 52 at
12) (quoting ‘870 Patent at 6:65–7:2). Plaintiff contends that the recitation of “part of the wall
portion 104” indicates that the “portion” in the term refers to a portion of the molded member,
rather than to a portion of a wall. (Dkt. No. 52 at 12.) Plaintiff further argues that Figure 5
further shows that the wall portion 104 is a portion of the molded package 100/molded member
105/light emitting device. (Dkt. No. 52 at 12.)
Regarding Defendants’ construction, Plaintiff argues that it is not clear what it means to
state that “a distinct structure” is also “formed as part” of a component. (Dkt. No. 52 at 13.)
Plaintiff also contends that limiting the construction of the wall portion to a “distinct structure” is
inconsistent with the specification. (Dkt. No. 52 at 13) (citing ‘870 Patent at 2:38–39). Thus,
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according to Plaintiff, Defendants seek to read in limitations that will also make the claims less
understandable.
Defendants respond that Plaintiff’s construction eliminates the term “wall” from the
disputed phrase altogether, thereby permitting Plaintiff to point to any portion of the “molded
package/molded member/device,” and call it a “wall.” (Dkt. No. 60 at 14.) Defendants further
contend that dependent claims 3, 5, 11, 23 each add the “integral” limitation to the “wall
portion” phrase in independent claims 1 and 7. (Dkt. No. 60 at 15.)
Thus, according to
Defendants, the independent claims that include the “wall portion” phrase presumptively do not
require the wall portion to be integral with the molded member. (Dkt. No. 60 at 15.)
Defendants further argue that their construction requires the “wall portion” must be
something other than the package/member/device, otherwise there would be no need for the
“wall portion” limitation in the claim. (Dkt. No. 60 at 15.) Defendants also argue that the fact
that the “wall portion” must be something other than the package/member/device is shown with
reference to the independent claims of the ’870 patent. (Dkt. No. 60 at 15-16.) According to
Defendants, the independent claims make clear that the “wall portion” is a “distinct structure”
from the “molded package/molded member/device.” (Dkt. No. 60 at 15-16.)
Plaintiff replies that the surrounding claim language makes clear that the recited “wall
portion” is the particular portion that includes the structure by which the positive and negative
lead electrodes are “separated from each other.” (Dkt. No. 65 at 9.) Plaintiff further argues that
there is not any legal or factual basis for Defendants’ construction requiring a “distinct
structure.” (Dkt. No. 65 at 9.) Finally, Plaintiff contends that Defendants’ application of claim
differentiation is backwards. (Dkt. No. 65 at 9.) Plaintiff argues that if dependent claims recite
an “integral” wall portion, the independent claims encompass both integral and non-integral
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(distinct) wall portions. (Dkt. No. 65 at 9.)
For the following reasons, the Court finds that the phrase “wall portion” should be
construed to mean “portion of the molded package/molded member/device that covers at
least a portion of a surface of the lead electrodes”.
b) Analysis
The term “wall portion” appears in 1, 2, 3, 5, 7, 10, 11, 14-18, 23, 26, 35, and 36 of the
‘870 Patent. The Court finds that the phrase is used consistently in the claims and is intended to
have the same meaning in each claim. Independent claims 1 recites “wherein a portion of said
positive lead electrode and a portion of said negative lead electrode in the recess are separated
from each other by a wall portion.” This is illustrated in Figure 5 (below) as wall portion 104.
Regarding wall portion 104, the specification states that “[t]he wall portion 104 of the present
embodiment is formed around the bonding areas 102c and 103c except for a necessary area for
bonding the conductive wires, and covers the main surfaces of the second metal member 102 and
the third metal member 103.” ‘870 Patent at 8:51–60.
Thus, in this embodiment, the
specification teaches that the wall portion covers at least a portion of a surface of the lead
electrodes.
Likewise, in describing the wall portion 104 illustrated in Figures 1-3 the specification
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states that “[t]he wall portion 104 of the present embodiment covers the main surfaces of the
second metal member 102 and the third metal member 103, except an area necessary for bonding
the conductive wires 109 and the protective element 107.” ‘870 Patent at 7:46–49. Thus,
consistent with the claim language, the Court finds that a person of ordinary skill in the art
would understand that the recited “wall portion” is portion of the molded package/molded
member/device that covers at least a portion of a surface of the lead electrodes. Indeed, the
specification states “the shape of the wall portion 104 is not specifically limited, and any shapes
may be used, provided that the wall portion exposes at least two bonding regions on the main
surface.” ‘870 Patent at 9:20–23.
Turning to the parties’ construction, the Court agrees with Defendants that Plaintiff’s
construction would eliminate “wall” from the disputed phrase. Indeed, Plaintiff’s construction
removes any reference to the recited “wall.” However, the Court disagrees that a person of
ordinary skill would interpret the “wall portion” to be “a distinct structure,” as Defendants
contend. The specification states that the strength of the wall portion can be enhanced by being
formed continuously with the molded member. ‘870 Patent at 2:38–40. The Court also disagrees
with Defendants’ argument that the “wall portion” must be something other than the
package/member/device, otherwise there would be no need for the “wall portion” limitation in
the claim. As indicated above, the recited “wall portion” describes a specific portion of the
package/member/device.
c) Court’s Construction
In light of the intrinsic evidence, the Court construes the phrase “wall portion” to mean
“portion of the molded package/molded member/device that covers at least a portion of a
surface of the lead electrodes”.
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3. “extends inwardly in a direction toward a [the] center of the recess”
Disputed Term
“extends inwardly in a
direction toward a
[the] center of the
recess”
Plaintiff’s Proposal
“extends from the periphery of
the recess in a direction toward
a center of the recess”
Defendants’ Proposal
“has a longitudinal axis directed
toward a point that is equally
distant from the sides or outer
boundaries of the recess”
a) The Parties’ Positions
The parties dispute how the wall portion “extends inwardly” and how many “centers” the
recess can have.
Plaintiff argues that its construction is supported by the specification’s
statement that “a part of the mold member 105 forming the inner wall of the first recess 120
extends toward the second recess 130 as the wall portion 104.” (Dkt. No. 52 at 14) (‘870 Patent
at 6:62–7:3; Figures 5 and 6.) Plaintiff also argues that Figure 5 illustrates that the wall portion
104 extends from multiple directions towards the middle or center of a recess 120 from a
periphery of the recess 120. (Dkt. No. 52 at 14.) Plaintiff further argues that its construction is
also supported by the extrinsic evidence. (Dkt. No. 52 at 14.)
Regarding Defendants’ construction, Plaintiff argues that Defendants’ “longitudinal axis”
requirement is unsupported by the claim language or the specification. (Dkt. No. 52 at 14.)
Plaintiff further argues that Defendants’ construction is also inconsistent with the specification
because it states that “[t]he shape of the wall portion 104 is not specifically limited, and any
shapes may be used.” (Dkt. No. 52 at 14) (‘870 Patent at 9:17–37). Plaintiff further argues that it
is unclear if the wall portion 104 that forms a ring around light emitting element 108 in Figure 5,
has a longitudinal axis. (Dkt. No. 52 at 14.) Plaintiff also contends that Defendants’ requirement
that the center be “a point that is equally distant from every point on the perimeter of the recess”
improperly limits the shape of the recess to a circle. (Dkt. No. 52 at 14.)
Defendants respond that their construction follows from the express wording of the
claims, which requires some axis of the wall to extend towards the center of the recess. (Dkt. No.
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60 at 17.) Defendants contend that because the claim requires this extension towards the center
of the recess, the axis of the wall that must so extend is the longitudinal axis. (Dkt. No. 60 at 17.)
Defendants also argue that the claim requires the wall to extend towards “a center” of the recess.
(Dkt. No. 60 at 17.) Defendants further argue that every shape can have only one true “center,”
and the claims’ inclusion of the phrase “toward a center,” renders the claims indefinite unless “a
center” is defined as “a point that is equally distant from the sides or outer boundaries of the
recess.” (Dkt. No. 60 at 17.) Defendants also contend that Figure 5 illustrates the wall portion
(104) along the longitudinal axis of the wall towards the center of the recess. (Dkt. No. 60 at 18.)
Defendants further argue that Plaintiff’s construction is so broad that it will allow
Plaintiff to claim that this limitation is met by any portion of the molded package/molded
member/device that exists in the recess. (Dkt. No. 60 at 18.) Defendants contend that Plaintiff’s
arguments reveal that Plaintiff is ignoring the language of claims 1 and 7, which require the wall
to “separat[e] at least one of said positive lead electrode and said negative lead electrode into two
parts in the recess, wherein said wall portion extends inwardly in a direction toward a center of
the recess.” (Dkt. No. 60 at 18.) Defendants argue that the only portion of the “wall” that
separates the electrodes has a longitudinal axis that extends towards the center of the recess.
(Dkt. No. 60 at 19.)
Plaintiff replies that Defendants argue that “a” center must mean “one or more” centers,
but seek a construction that violates that rule by requiring a single “center.” (Dkt. No. 65 at 10.)
Plaintiff contends that the recess is a three-dimensional structure where the “sides or outer
boundaries” have a height, and thus, no single location in the recess could meet Defendants’
construction. (Dkt. No. 65 at 10.) Plaintiff argues that the specification, as well as claims 7 and
36, make clear that the inventors used the term “a center” to describe the central region of the
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recess where the light emitting element is mounted, and not the geometric center of the recess, as
Defendants contend. (Dkt. No. 65 at 10.)
For the following reasons, the Court finds that the phrase “extends inwardly in a
direction toward a [the] center of the recess” should be construed to mean “extends from the
side surface of the recess toward a [the] center of the recess”.
b) Analysis
The phrase “extends inwardly in a direction toward a [the] center of the recess” appears
in 1, 7, 35, and 36 of the ‘870 Patent. The Court finds that the phrase is used consistently in the
claims and is intended to have the same meaning in each claim. Independent claim 1 recites
“wherein a portion of said positive lead electrode and a portion of said negative lead electrode in
the recess are separated from each other by a wall portion, wherein said wall portion extends
inwardly in a direction toward a center of the recess.” As indicated above, the Court has
construed “wall portion” to mean “portion of the molded package/molded member/device that
covers at least a portion of a surface of the lead electrodes.” Furthermore, the specification
describes the wall portion 104 as extending from the inner wall of the first recess 120 toward the
second recess 130. ‘870 Patent at 6:65–67. Thus, a person of ordinary skill in the art would
understand that the recited “wall portion” extends from the recited side surface of the recited first
recess toward a center of the recited second recess, as illustrated in Figure 5.
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Contrary to Defendants’ contention, the Court is not persuaded that it should require the “center”
to be “a point that is equally distant from the sides or outer boundaries of the recess.” This
would improperly limit the shape of the recess to a circle. For example, a rectangle can have a
center and would not have a point that is equally distant from all of the sides or outer boundaries.
Additionally, Defendants’ construction requiring a “longitudinal axis” improperly limits the
claims to a single axis. The intrinsic records illustrates wall portion 104 generally extending
from around the entire perimeter of the side surface of the recess towards a center of the recess.
Indeed, the specification states “the shape of the wall portion 104 is not specifically limited, and
any shapes may be used, provided that the wall portion exposes at least two bonding regions on
the main surface.” ‘870 Patent at 9:20–23. Likewise, Figure 2 illustrates the wall portion
extending from the side surface of the recess toward the center of the recess along multiple
access. Thus, the Court reject Defendants’ construction because it improperly import limitations
into the claim.
c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the phrase “extends
inwardly in a direction toward a [the] center of the recess” to mean “extends from the side
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surface of the recess toward a [the] center of the recess”.
4. “means for electrically connecting said light emitting element to said
positive lead electrode, and said light emitting element to said negative
lead electrode”
Disputed Term
“means for
electrically
connecting said
light emitting
element to said
positive lead
electrode, and
said light emitting
element to said
negative lead
electrode”
Plaintiff’s Proposal
Function [Agreed]:
electrically connecting said light emitting
element to said positive lead
electrode…[and] to said negative lead
electrode.
Corresponding Structure [Disputed]:
the structure disclosed in the specification
for performing the recited function (i.e.,
electrically connecting said light emitting
element to said positive lead
electrode…[and] to said negative lead
electrode) is a conductive material
including at least one or more of a
conductive wire, a bump, a resin or glass
containing conductive material, and a
conductive paste, and the equivalents
thereof.
Defendants’ Proposal
Function [Agreed]:
electrically connecting said
light emitting element to said
positive lead
electrode…[and] to said
negative lead electrode.
Corresponding Structure
[Disputed]:
two or more conductive
wires, where the height of
the wall portion is greater
than the height of the two
conductive wires, and
equivalents thereof.
a) The Parties’ Positions
The parties agree that this disputed phrase should be governed by 35 U.S.C. § 112, ¶ 6.
The parties further agree that the recited function of this limitation is “electrically connecting
said light emitting element to said positive lead electrode … [and] to said negative lead
electrode.” The parties disagree on the corresponding structure disclosed in the specification for
performing this function. Plaintiff contends that the structures for performing the function is a
conductive material including at least one or more of a conductive wire (see, e.g., ‘870 Patent at
7:33–67), a bump (see, e.g., ‘870 Patent at 15:10–22), a resin or glass containing conductive
material (see, e.g., ‘870 Patent at 29:30–37), and a conductive paste (see, e.g., ‘870 Patent at
33:8–18). (Dkt. No. 52 at 15.) Plaintiff argues that Defendants’ construction includes only one
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of the corresponding structures disclosed in the specification, and therefore is improper. (Dkt.
No. 52 at 15.)
Plaintiff further argues that Defendants’ additional requirement that “the height of the
wall portion is greater than the height of the two conductive wires” is also improper, because it is
inconsistent with the claim language itself and the patent specification. (Dkt. No. 52 at 15.)
Plaintiff argues that dependent claims 14 and 26 (which each depend from claim 7) both require
that “said means for electrically connecting includes a plurality of conductive wires . . . disposed
below a top surface of said wall portions.” (Dkt. No. 52 at 15.) Plaintiff further argues that
Figures 10 and 11 show a height of a wall portion 104 being less than the height of a conductive
wire 109. (Dkt. No. 52 at 15.) Thus, according to Plaintiff, the intrinsic evidence shows that the
scope of the independent claims 7 and 36 is not limited to only arrangements in which a plurality
of wires are disposed below a top surface of a wall portion. (Dkt. No. 52 at 16.)
Defendants respond that Plaintiff’s construction includes structure that is not related to
“electrically connecting said light element to said … electrode[s].” (Dkt. No. 60 at 19.) For
example, Defendants contend that the “resin or glass containing conductive material” claimed by
Plaintiff actually relates to die bonding. (Dkt. No. 60 at 20) (quoting ‘870 Patent at 29:30–33).
Defendants argue that Plaintiff cannot deny that die bonding refers to the process of bonding the
light emitting element to the substrate, not “electrically connecting said light emitting element to
said … lead electrode[s].” (Dkt. No. 60 at 20.) Defendants contend that their construction
includes only those corresponding structures that are necessary to perform the recited function,
and that are clearly linked to that function in the specification. (Dkt. No. 60 at 20) (‘870 Patent at
3:11–13; 3:28–31). Finally, Defendants argue that Plaintiff’s claim differentiation argument
cannot overcome the statutory requirements of 35 U.S.C. § 112, ¶ 6. (Dkt. No. 60 at 20.)
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Plaintiff replies that Defendants incorrectly assert that a “resin or glass containing
conductive material” is used only to “die bond” and does not perform the recited function of
“electrically connecting” the LED to the lead electrodes. (Dkt. No. 65 at 11.) Plaintiff contends
that a purpose of a “resin or glass containing conductive material” is to conduct electricity—i.e.,
to be an electrical connection. (Dkt. No. 65 at 11.) Plaintiff also argues that Defendants’ claim
differentiation analysis is backwards because the fact that dependent claims recite a wall portion
height greater than the conductive wires’ height confirms that the independent claims should
include, but not be limited to that configuration. (Dkt. No. 65 at 11.)
b) Analysis
The phrase “means for electrically connecting said light emitting element to said positive
lead electrode, and said light emitting element to said negative lead electrode” appears in claims
7 and 36 of the ‘870 Patent. Having reviewed the claims, the Court finds that the phrase is
governed by 35 U.S.C. § 112, ¶ 6. The Court agrees with the parties that the recited function of
this limitation is “electrically connecting said light emitting element to said positive lead
electrode … [and] to said negative lead electrode.”
Having determined the limitation’s function, “the next step is to determine the
corresponding structure disclosed in the specification and equivalents thereof.” Medtronic,
248 F.3d at 1311. As an initial matter, the Court notes that the figures generally illustrate the
lead electrodes as items 102 and 103. See, e.g., ‘870 Patent at 6:50–54 (“The second metal
member 102 and the third metal member 103 are used as the lead electrodes for supplying
electric power to the light emitting element 108 and the protective element 107 being housed in
the recess formed in the main surface of the molded package 100.”). Thus, the task is to
determine the corresponding structure that electrically connects light emitting element 108 to
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lead electrodes 102 and 103. With this understanding, the Court finds that the specification
discloses two embodiments that include structure for electrically connecting the light emitting
element to the lead electrodes. Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250,
1258 (Fed. Cir.1999) (“When multiple embodiments in the specification correspond to a claimed
function in a patent claim, proper application of statutory means-plus-function language
generally reads the claim element to embrace each of those embodiments.”)
The first embodiment is illustrated in Figure 2 and includes the wire bonded conductive
wires 109. Specifically, the specification states that “the conductive wires 109 connecting to the
light emitting element 108 and the protective element 107 are respectively wire bonded to the
different bonding regions of 102a, 102b, 103a, and 103b which are isolated by the wall portion
104.” ‘870 Patent at 7:17–21. Thus, the corresponding structure for this embodiment is “wire
bonded conductive wires 109 and equivalents thereof.”
The second embodiment is illustrated in Figures 5 through 11 and includes a composite
component in addition to the conductive wires. Specifically, the specification states:
As shown in FIGS. 5 to 11, a composite component may be used as the
semiconductor element to be mounted on the package. A composite component is
formed by joining a pair of positive and negative electrodes of the light emitting
element 108 via bumps with a pair of positive and negative electrodes formed on
the submount 301 so as to face each other. On the surface of the submount 301, a
positive electrode and a negative electrode of a conductive material are disposed
on the same face side, and insulated from each other.
‘870 Patent at 15:10–18. Thus, the corresponding structure for this embodiment is “submount
301 with bumps, wire bonded conductive wires 109, and the equivalents thereof.”
Finally, the Court is not persuaded that the corresponding structure includes “where the
height of the wall portion is greater than the height of the two conductive wires, and equivalents
thereof,” as Defendants propose. The recited function is “electrically connecting said light
emitting element to said positive lead electrode…[and] to said negative lead electrode.” The
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height of the wall is not structure that performs this function. Indeed, Figures 10 and 11
illustrate a height of a wall portion 104 that is less than the height of a conductive wire 109.
c) Court’s Construction
In light of the intrinsic evidence, the Court finds that the phrase is governed by 35
U.S.C. § 112, ¶ 6, and construes the phrase “means for electrically connecting said light emitting
element to said positive lead electrode, and said light emitting element to said negative lead
electrode” as follows:
Function: The Court finds that the function is electrically connecting said light
emitting element to said positive lead electrode…[and] to said negative lead electrode.
Corresponding Structure: Embodiment #1: The Court finds that the corresponding
structure is wire bonded conductive wires 109 and equivalents thereof.
Embodiment #2: The Court finds that the corresponding structure is submount 301
with bumps, wire bonded conductive wires 109, and the equivalents thereof.
G. The ‘863 Patent
The parties’ dispute focuses on the meaning and scope of five terms/phrases in the ‘863
Patent.
1. “top surface”
Disputed Term
top surface of the
metal member
top surface of the
insulating board
top surface of the
substantially stepped
rectangle of the metal
member
Plaintiff’s Proposal
uppermost surface of the metal
member
uppermost surface of the insulating
board
uppermost surface of the
substantially stepped rectangle of the
metal member
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Defendants’ Proposal
Plain and ordinary meaning.
No construction necessary.
Plain and ordinary meaning.
No construction necessary.
Plain and ordinary meaning.
No construction necessary.
a) The Parties’ Positions
The parties dispute whether the term “top surface” requires construction in the disputed
phrases. Plaintiff contends that the term “top surface” should be construed as the “uppermost
surface.” Plaintiff argues that these limitations would be rendered meaningless if the claimed
top surfaces were not the “uppermost” surfaces. (Dkt. No. 52 at 18.) Plaintiff also contends that
its construction is consistent with and supported by the specification. (Dkt. No. 52 at 18) (citing
‘863 Patent at 7:60–63; Figure 3). Plaintiff argues that the top surface of the metal member, to
which the light emitting element is mounted, is the uppermost surface of the metal member.
(Dkt. No. 52 at 19.)
Plaintiff further argues that if the uppermost surface of the metal member did not project
higher than the uppermost surface of the insulating board, the insulating board would interfere
with the light outgoing from the light emitting element. (Dkt. No. 52 at 19.) Finally, Plaintiff
contends that its construction is consistent with Merriam-Webster’s Collegiate Dictionary,
which defines “top” as “the highest point, level or part of something; of, relating to, or being at
the top: UPPERMOST.” (Dkt. No. 52 at 19) (citing Dkt. 52-9 at 6 (Merriam-Webster’s
Collegiate Dictionary (2003)).
Defendants respond that Plaintiff has failed to articulate a reason why it is necessary to
construe the word “top,” or why the jury would require such a seemingly simple word to be
construed. (Dkt. No. 60 at 21.) Defendants argue that Plaintiff’s construction of “top” as
“uppermost” is no more descriptive or clear than the word “top.” (Dkt. No. 60 at 22.)
Defendants conclude that the Court should refuse to construe what is otherwise a simple and
readily-understandable term. (Dkt. No. 60 at 22.)
Plaintiff replies that there is in fact a dispute with respect to the meaning of this term
because Defendants do not agree that “top” means “uppermost.” (Dkt. No. 65 at 11.) Plaintiff
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contends that its construction is consistent with the claim language, and is supported by the
specification and extrinsic evidence. (Dkt. No. 65 at 11.)
For the following reasons, the Court finds that the phrase “top surface” should be given
its plain and ordinary meaning.
b) Analysis
The phrase “top surface of the metal member” appears in claims 1, 2, 5, and 8-10 of the
‘863 Patent. The Court finds that the phrase is used consistently in the claims and is intended to
have the same meaning in each claim. The phrase “top surface of the insulating board” appears
in claims 1, 2, 5, and 10 of the ‘863 Patent. The Court finds that the phrase is used consistently
in the claims and is intended to have the same meaning in each claim. The phrase “top surface
of the substantially stepped rectangle of the metal member” appears in claim 1 of the ‘863
Patent. As indicated by the parties, Plaintiff only ask the Court to construe the word “top” in
these phrases. Having reviewed the intrinsic evidence, the Court finds that the phrase “top” is
unambiguous, is easily understandable by a jury, and requires no construction. Therefore, the
phrase will be given its plain and ordinary meaning.
For example, the specification states that “[t]he light emitting element 10 is secured on
the top surface of the metal member 30 with a die-bonding member.” ‘863 Patent at 4:6–7;
Figure 3.
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Figure 3 (above) illustrates an example of the recited “top surface of the metal member.”
Likewise, the specification states that “the cathode and anode terminals 61 and 62 that are
formed continuously from the top surface of the insulating board 40 to the grooves 42 are
formed so as to extend to the bottom surface of the insulating board 40.” ‘863 Patent at 6:38–42.
Again, Figure 3 illustrates an example of the recited “top surface of the insulating board.”
Finally, the specification states that “[t]he metal member has a substantially stepped rectangle in
a cross-sectional view.” ‘863 Patent at 1:64–65. Once again, Figure 3 illustrates an example of
the recited “top surface of the substantially stepped rectangle of the metal member.” Thus, as
indicated by these examples, the term “top surface” is unambiguous, is easily understandable by
a jury, and requires no construction. Plaintiff has failed to convince the Court that it should
redraft the claim to include Plaintiff’s preferred language over the language selected by the
patentee.
c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the phrase “top surface” will be given its
plain and ordinary meaning.
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2. “a transparent member that covers the light emitting element and the
top surface of the insulating board”
Disputed Term
a transparent member that
covers the light emitting
element and the top surface of
the insulating board
Plaintiff’s Proposal
a transparent member that is over at
least some of the surface of the light
emitting element and the uppermost
surface of the insulating board
Defendants’ Proposal
Plain and ordinary
meaning. No
construction
necessary.
a) The Parties’ Positions
The parties dispute whether the phrase “a transparent member that covers the light
emitting element and the top surface of the insulating board” requires construction. Plaintiff
contends that claim language only requires the transparent member to at least partially cover the
identified components and does not specify the manner in which it is applied or covers the
components. (Dkt. No. 52 at 19-20.) Plaintiff also argues Figures 1 and 3 clearly show the
transparent member is over at least some of the surface of the light emitting element and the
uppermost surface of the insulating board. (Dkt. No. 52 at 20.) Plaintiff further contends that the
specification provides some exemplary methods of forming the transparent member, including,
for instance, compression molding, a potting method, and a die cut method, but does not describe
spreading the transparent member over the top surface of the insulating board and the light
emitting element. (Dkt. No. 52 at 20). Finally, Plaintiff argues that intrinsic evidence does not
require the transparent member to be spread over all of the surfaces. (Dkt. No. 52 at 21.)
Defendants argue that the phrase should be given its plan and ordinary meaning, and that
Plaintiff’s only substantive proposal is to import limitations from the specification into the
claims. (Dkt. No. 60 at 22.) Defendants argue that Plaintiff incorrectly states the claim language
“requires the transparent member to at least partially cover the identified components.” (Dkt. No.
60 at 23.) Defendants contend that the claims have no such partiality requirement, and all that is
required by the plain language of the claims is that the transparent member “covers the light
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emitting element and the tops surface of the insulating board.” (Dkt. No. 60 at 23.) Defendants
also argue that Plaintiff’s reference to the specification further shows that Plaintiff is attempting
to import the “at least some of” language from the specification into the claims. (Dkt. No. 60
at 23.)
Plaintiff replies that its construction does not “import” limitations into the claims. (Dkt.
No. 65 at 11.) Plaintiff argues that it cites embodiments in which the transparent member
partially covers the recited light emitting element and insulating board to explain why the correct
construction should not exclude those embodiments. (Dkt. No. 65 at 11.) Plaintiff contends that
its construction correctly provides that the transparent member cover “at least some of” the light
emitting element and insulating board.” (Dkt. No. 65 at 11.)
For the following reasons, the Court finds that the phrase “a transparent member that
covers the light emitting element and the top surface of the insulating board” should be
given its plain and ordinary meaning.
b) Analysis
The phrase “a transparent member that covers the light emitting element and the top
surface of the insulating board” appears in claims 1, 2, and 10 of the ‘863 Patent. The Court
finds that the phrase is used consistently in the claims and is intended to have the same meaning
in each claim. The Court further finds that, contrary to Plaintiff’s assertion, the claim language
does not recite that the transparent member need only cover “at least some of” the light emitting
element. Instead, the plain language of the disputed phrase is “a transparent member that covers
the light emitting element.” As it relates to the covering the light emitting element, the Court
finds that Plaintiff’s construction is inconsistent with the intrinsic evidence.
Specifically, there is no mention of partial coverage of the light emitting element, and
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Plaintiff’s construction would improperly read “at least some” into the claims. The specification
states that the “transparent member 50 seals the light emitting element 10” (‘863 Patent at
4:11-12) and “serves to protect the light emitting element 10 from external force, moisture and
so on from the external environment.” (‘863 Patent at 10:61–63). See also ‘863 Patent at 7:65–67
(“[T]he light emitting element 10 is 65 mounted on the top surface of the metal member 30 and
is sealed by the transparent member 50.”). Moreover, consistent with the stated purpose of the
transparent member, all of the figures illustrate the transparent member covering the light
emitting element in its entirety. Thus, the Court does not adopt Plaintiff’s construction as it is
inconsistent with the intrinsic evidence.
The Court further finds that the phrase “a transparent member that covers the light
emitting element and the top surface of the insulating board” is unambiguous, is easily
understandable by a jury, and requires no construction. Therefore, the phrase will be given its
plain and ordinary meaning. That said, the Court agrees with Plaintiff that the transparent
member does not need cover the entire top surface of the insulating board.
Indeed, the
specification states that the transparent member preferably covers “a majority part of the
conductive member 60 formed on the top surface of the insulating board 40.” ‘863 Patent at
6:29–30. Thus, to the extent that Defendants contend that the plain and ordinary of the phrase
requires the transparent member to cover the entire top surface of the insulating board, the Court
rejects this argument.
c) Court’s Construction
In light of the intrinsic evidence, the phrase “a transparent member that covers the
light emitting element and the top surface of the insulating board” will be given its plain and
ordinary meaning.
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3. “the through hole of the insulating board has an inner wall that is
formed in a substantially stepped rectangle corresponding to the
substantially stepped rectangle of the metal member”
Disputed Term
“the through hole of the
insulating board has an inner
wall that is formed in a
substantially stepped
rectangle corresponding to the
substantially stepped
rectangle of the metal
member”
Plaintiff’s Proposal
“the through hole of the
insulating board has an inner
wall formed in a substantially
stepped rectangle that is
similar in form to the shape of
the substantially stepped
rectangle of the metal
member”
Defendants’ Proposal
“the through hole of the
insulating board has an inner
wall formed in a substantially
stepped rectangle that is
identical in shape to the
substantially stepped
rectangle of the metal
member”
a) The Parties’ Positions
The parties dispute how the substantially stepped rectangular shape of the inner wall of
the insulating board “correspond[s] to” the substantially stepped rectangular shape of the metal
member. Plaintiff contends that the through hole is similar in form to the shape of the crosssection of the metal member. (Dkt. No. 52 at 21) (citing ‘863 Patent at 8:28–32). Plaintiff also
contends that Figure 3 illustrates that the through hole is similar in form to the shape of the
cross-section of the metal member, but it is not identical as evidenced by the spaces between the
sides of the metal member and the walls of the through hole. (Dkt. No. 52 at 21.) Plaintiff
further notes that The Oxford American College Dictionary defines term “corresponding” to
mean “similar in character, form, or function; able to be matched, joined or interlocked.” (Dkt.
No. 52 at 21) (quoting Dkt. No. 52-8 at 6 (The Oxford American College Dictionary)).
Regarding Defendants’ construction, Plaintiff argues that there is no basis to read in the
limitation that the through hole’s inner wall “is identical in shape to the substantially stepped
rectangle of the metal member.” (Dkt. No. 52 at 22.)
Defendants respond that that the inner wall of the insulating board is a substantiallystepped rectangle that is identical in shape to the substantially-stepped rectangle of the metal
member. (Dkt. No. 60 at 24.) Defendants contend that it is readily apparent from Figure 9 that
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the inner wall of the insulating board (40) has an identical substantially-stepped shape as the
metal member (30) such that the two can be nested together. (Dkt. No. 60 at 24.) Defendants
contend that this identical configuration is described further in the specification. (Dkt. No. 60 at
25) (citing ‘863 Patent at 8:27–32; 12:41–44). Thus, according to Defendants, the corresponding
shapes are identical, the only difference being the size of the two components so that they can be
nested together. (Dkt. No. 60-9 at 4.) Finally, Defendants note that the Merriam-Webster’s
Collegiate Dictionary defines “correspond” as “to be in conformity or agreement.” (Dkt. No. 60
at 25) (citing Dkt. No. 60-9 at 4 (Merriam-Webster’s Collegiate Dictionary)).
Plaintiff replies that Defendants assertion that the through hole and metal member must
be “identical in shape” is unsupported by the specification and inconsistent with the Federal
Circuit’s treatment of the term “substantially.” (Dkt. No. 65 at 12.) Plaintiff argues that the word
“substantially” is a term of approximation that does not require exact correspondence between
two objects. Plaintiff also argues that the plain meaning of the phrase “corresponding to” does
not require a 100% identity. (Dkt. No. 65 at 10.) Finally, Plaintiff argues that Defendants
improperly restrict the claims to the embodiment in Figure 9, without considering that the
“substantially stepped” rectangular structures permit the through hole and the metal member to
fit together. (Dkt. No. 65 at 11.)
For the following reasons, the Court finds that the phrase “the through hole of the
insulating board has an inner wall that is formed in a substantially stepped rectangle
corresponding to the substantially stepped rectangle of the metal member” should be
construed to mean “the through hole of the insulating board has an inner wall formed in a
substantially stepped rectangle that is similar in form to the shape of the substantially
stepped rectangle of the metal member”.
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b) Analysis
The phrase “the through hole of the insulating board has an inner wall that is formed in a
substantially stepped rectangle corresponding to the substantially stepped rectangle of the metal
member” appears in claim 1 of ‘863 Patent. The Court first notes that claim 1 does not require
the “corresponding” shapes to be identical as Defendants’ construction would require. Indeed,
the specification states that “[t]he metal member 30 is inserted into the through hole of the
insulating board 40.” ‘863 Patent at 4:38–40. If the shapes were “identical,” then the metal
member could not be inserted into the through hole.
Moreover, the specification states that “the shapes of the insulating member 40, the
through hole and the groove 42 can be varied for different purposes.” ‘863 Patent at 4:48–51.
Granted, the claim language requires that hole and the metal member have “corresponding
shapes,” but this disclosure indicates that there is not a strict requirement that they be “identical.”
In fact, the specification states that in one embodiment, “copper bodies that have a shape
corresponding to but one size smaller than the shape of the aforementioned through hole are used
as the metal members.” ‘863 Patent at 12:39–44. Thus, the Court finds that a person of ordinary
skill in the art would understand the recited “corresponding to” to mean “that is similar in form
to the shape.” Again, the intrinsic evidence indicates that the recited metal member has to be
able to be inserted into the through hole. Accordingly, the Court adopts Plaintiff’s construction.
c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the phrase “the
through hole of the insulating board has an inner wall that is formed in a substantially
stepped rectangle corresponding to the substantially stepped rectangle of the metal
member” to mean “the through hole of the insulating board has an inner wall formed in a
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substantially stepped rectangle that is similar in form to the shape of the substantially
stepped rectangle of the metal member”.
H. The ‘250 Patent
The parties’ dispute focuses on the meaning and scope of fourteen terms/phrases in the
‘250 Patent.
1. The preambles of claims 1 and 17
Disputed Term
1. A method of
manufacturing a light
emitting device, the
method comprising:
17. A light emitting
device comprising:
Plaintiff’s Proposal
Claim 1 is limited to a
method for manufacturing a
light emitting device.
Defendants’ Proposal
Plain and ordinary meaning. The
preambles of claims 1 and 17 are not
claim limitations.
Claim 17 is limited to a light
emitting device.
Plain and ordinary meaning. The
preambles of claims 1 and 17 are not
claim limitations.
a) The Parties’ Positions
The parties dispute whether the preambles of claims 1 and 17 are claim limitations.
Plaintiff argues that one of ordinary skill in the art would have recognized that these preambles
must be considered in order to properly understand the remainder of the claims, such as “lead
frame,” “transfer molding a thermosetting resin containing a light reflecting material,” “an
optical reflectivity of 70% or greater...,” “resin package,” and “resin-molded body.” (Dkt. No. 52
at 23) (citing Dkt. No. 52-6 at ¶¶ 28-30 (Schubert Decl.)). Plaintiff contends that terms such as
“lead frame” and “resin-molded body” are used to describe components used during manufacture
of light emitting devices prior to singulation, while the terms “lead,” “resin part,” and “resin
package” are used to describe components for a singulated light emitting device. (Dkt. No. 52
at 23) (citing ‘250 Patent at 2:59–62); (Dkt. No. 52-6 at ¶ 29 (Schubert Decl.)).
Plaintiff further argues that the term “light emitting device” in the preambles of claims 1
and 17 gives life, meaning, and vitality to the claims by making it clear that the claims are
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directed to a light emitting device and a method for manufacturing light emitting devices. (Dkt.
No. 52 at 24.) Plaintiff argues that every device and process described within the “Disclosure of
Invention” of the ‘250 Patent is about light emitting devices or the manufacture of light emitting
devices. (citing Dkt. No. 52-6 at ¶ 30 (Schubert Decl.)). Thus, according to Plaintiff, claims 1
and 17 should not be read without consideration of the preambles.
Defendants respond that the preambles of claims 1 and 17 are not necessary to give “life
meaning, and vitality” to the claims, and that the bodies of the claims “define[] structurally
complete invention[s].” (Dkt. No. 60 at 25.) Defendants contend that the bodies of claims 1 and
17 contain “complete and exacting structural detail,” and do not depend on their respective
preambles (or the inclusion of a “light emitting device”) for completeness. (Dkt. No. 60 at 26.)
Defendants contend that the only appearance of such a “light emitting element” limitation is
claim 7, and that there is no claim dependent on claim 17 (the apparatus claim) that includes a
“light emitting element.” (Dkt. No. 60 at 26.)
Plaintiff replies that Defendants ignore that the patentees expressly and conclusively
defined these claim terms by reference to their application to light emitting device technology.
(Dkt. No. 65 at 12.) Plaintiff argues that the patentees described their invention as “relat[ing] to
a light emitting device,” and the “Technical Field,” “Problems to Be Solved by the Invention,”
and “Means for Solving the Problems” all address the invention in the context of light emitting
devices. (Dkt. No. 65 at 12-13.) Plaintiff argues that the function of these components is
described relative to the emission of light, and the patent discloses no other applications. (Dkt.
No. 65 at 13.)
For the following reasons, the Court finds that the preambles of claims 1 and 17 are claim
limitations.
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b) Analysis
The preamble of claim 1 recites “[a] method of manufacturing a light emitting device.”
The preamble of claim 17 recites “[a] light emitting device comprising.” For these claims, the
Court agrees that the entirety of the ‘250 Patent reveals that the preamble language relating to
“light emitting device” does not state a purpose or an intended use of the invention, but rather
discloses a fundamental characteristic of the claimed invention that is properly construed as a
limitation of the claim itself.
The specification consistently describes the claimed invention as directed to light
emitting devices and does not include boilerplate language stating otherwise. For example, the
“Technical Field” section (‘250 Patent at 1:15–21), “Problems to Be Solved by the Invention”
section (‘250 Patent at 2:47–54), “Effects of the Invention” section (‘250 Patent at 5:30–39),
“Best Mode for Carrying Out the Invention” section (‘250 Patent at 5:41–48), and “Industrial
Applicability” section (‘250 Patent at 18:26–31) all address the invention in the context of light
emitting devices. Thus, the preamble language gives life, meaning and vitality to the claims by
making it clear that claim 17 is directed to a light emitting device and claim 1 is directed to a
method for manufacturing a light emitting device. This is in contrast to the preamble of claim 27,
which recites “[a] method of manufacturing a resin package.”
Furthermore, the Court is not persuaded by Defendants’ arguments as they relate to
claims 1 and 17. First, Defendants are incorrect that the only appearance of a “light emitting
element” limitation is in dependent claim 7. Dependent claim 4 also recites that “the upper mold
and the lower mold contact the lead plate at a portion of the lead plate corresponding to the
location of a light emitting element.” Likewise, all of the claims that depend from claim 17
recite “[t]he light emitting device according to claim 17.” Finally, claim 1 and claim 27 are
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nearly identical with the only substantive difference being the preamble language. The preamble
of claim 1 recites “[a] method of manufacturing a light emitting device,” and the preamble of
claim 27 recites “[a] method of manufacturing a resin package.” This indicates that the patentee
intended the preamble of claim 1 to be limiting, otherwise these two independent claims would
have identical scope.
c) Court’s Construction
In light of the intrinsic evidence, the Court finds that the preambles of claims 1 and 17
are claim limitations.
2. “lead”
Disputed Term
“lead”
Plaintiff’s Proposal
“lead for a light emitting
device”
Defendants’ Proposal
“the conductive portion of the device that
makes an electrical connection to a structure
outside of the device”
a) The Parties’ Positions
The parties dispute whether the term “lead” should be limited to a “light emitting
device.” Plaintiff contends the patentee acted as his own lexicographer and defined lead in the
specification as “used for a singulated light emitting device.” (Dkt. No. 52 at 24) (citing ‘250
Patent at 2:59–62). Plaintiff argues that the language of claims 1 and 17 limit the term lead to a
“light emitting device.” (Dkt. No. 52 at 25.) Plaintiff contends that it is not clear if Defendants’
construction requires that the lead actually make a connection to a structure outside of the LED
to infringe, or merely requires that it is capable of making such a connection. (Dkt. No. 52 at 25.)
Plaintiff also argues that there is no support in either the claim language or the specification for
requiring the lead to be “a conductive portion of the LED” or for the lead to make “an electrical
connection to a structure outside of the LED.” (Dkt. No. 52 at 25) (citing 52-6 at ¶ 33 (Schubert
Decl.)).
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Defendants respond that Plaintiff is trying to limit all of the claims where the term “lead”
appears to “a light emitting device.” (Dkt. No. 60 at 27.)
Defendants contend that the
specification states that the resin package has a “positive lead” and a “negative lead,” and that
the “leads” are the portions of the device that conducts electricity to power the device. (Dkt. No.
60 at 27) (citing ‘250 Patent at 4:4–10; Nichia Tutorial, Chapter 5). Defendants contend that
since the semiconductor element in the device is not self-powered, the semiconductor element
must be connected to some power source through these leads. (Dkt. No. 60 at 27.) Defendants
further argue that the specification explicitly states that “[t]he lead frame [from which the lead is
formed] is formed using an electrical [sic] good conductor such as iron, phosphor bronze or a
copper alloy.” (Dkt. No. 60 at 28) (citing ‘250 Patent at 9:21–22).
Thus, according to
Defendants, requiring the “lead” portion of the device to conduct electricity is fully supported by
the specification. (Dkt. No. 60 at 28.) Defendants also argue that their language of “to a
structure outside of the device” is fully supported by the nature of the design of the device as set
forth in the specification. (Dkt. No. 60 at 28) (citing ‘250 Patent at 6:32–34).
In reply, Plaintiff relies on the same argument that it made for the disputed preambles of
claims 1 and 17. (Dkt. No. 65 at 12.)
For the following reasons, the Court finds that the phrase “lead” should be construed to
mean “the portion of the device that conducts electricity.”
b) Analysis
The term “lead” appears in claims 1, 2, 15, 17-19, 21, 22, 25, 26-28, and 31 of the
‘250 Patent. The Court finds that the term is used consistently in the claims and is intended to
have the same meaning in each claim. The Court further finds that the intrinsic evidence
indicates that the leads are the portion of the device that conducts electricity. The specification
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states that “[i]n the resin package 20, the concave part 27 having an inner bottom surface 27a
and inner side surface 27b is formed. The leads 22 are exposed in the inner bottom surface 27a
of the resin package 20 and the light emitting element 10 is placed on the leads 22.” ‘250 Patent
at 6:13–17. The specification further states that “[t]he light emitting element 10 is electrically
connected with the leads 22 through wires 50.” ‘250 Patent at 6:20–23. Thus, a person of
ordinary skill in the art would understand that the recited “lead” is “the portion of the device that
conducts electricity.” Indeed, the specification states that “[t]he lead frame is formed using an
electrical [sic] good conductor such as iron, phosphor bronze or a copper alloy.” ‘250 Patent at
9:21–22.
Regarding the parties’ construction, the Court disagrees that all of the claims should be
limited to “light emitting devices.” The term “lead” is recited in several claims, and unlike
independent claims 1 and 17, the remaining independent claims are not limited to “light emitting
devices,” but instead recite a “resin package” or a “resin-molded body.” See, e.g., claims 27, 29,
and 31. It would be improper to redraft the claims to import a “limit emitting device” limitation
into these claims via a disputed term. Likewise, the Court generally agrees with the conductive
portion of Defendants’ construction, but finds the remaining language problematic and not as
concise as the Court’s construction. Finally, although the Court finds that the recited “lead”
must conduct electricity, this does not foreclose the recited “lead” from performing other
functions in addition to conducting electricity.
c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the phrase “lead” to
mean “the portion of the device that conducts electricity”.
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3. “lead frame,” “resin,” “resin part,” “resin package,” and “resinmolded body”
Disputed Term
lead frame
resin part
Plaintiff’s Proposal
lead frame that is used during
manufacture of light emitting
devices
resin suitable for use in a light emitting
device
resin part for a light emitting device
resin package
resin package for a light emitting device
resin-molded body
resin-molded body that is formed during
manufacture of light emitting devices
resin
Defendants’ Proposal
Plain and ordinary meaning.
No construction necessary.
Plain and ordinary meaning.
No construction necessary.
Plain and ordinary meaning.
No construction necessary.
Plain and ordinary meaning.
No construction necessary.
Plain and ordinary meaning.
No construction necessary.
a) The Parties’ Positions
The parties dispute whether the terms “lead frame,” “resin,” “resin part,” “resin package,”
and “resin-molded body” should be limited to a “light emitting device.” Regarding the term
“lead frame,” Plaintiff contends that the phrase is consistently used to describe the component
used during manufacture of light emitting devices, as compared to “lead,” which is used to
describe the component in light emitting devices. (Dkt. No. 52 at 26-27) (citing ‘250 Patent
at 10:64-12:57; Dkt. No. 52-6 at ¶ 34 (Schubert Decl.)).
Regarding the term “resin,” Plaintiff contends that the terms “resin part” and “resin
package” are expressly defined in the specification as “used for a singulated light emitting
device,” while the term “resin-molded body” is defined as “used in the stage prior to singulation”
of the light emitting device. (Dkt. No. 52 at 27) (citing ‘250 Patent at 2:59–62). Plaintiff also
argues that the specification makes clear that the claimed resin must be suitable for use in a light
emitting device. (Dkt. No. 52 at 27) (citing ‘250 Patent at 6:48–7:4). Finally, Plaintiff argues
that “one of ordinary skill in the art would have understood that not all resins would be suitable
for use in a light emitting device, or the manufacture of a light emitting device.” (Dkt. No. 52
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at 28) (quoting 52-6 at ¶ 38 (Schubert Decl.)).
Regarding the terms “resin part,” “resin package,” and “resin-molded body,” Plaintiff
contends that these terms must also be construed in view of the consistent disclosure of the
specification, the preambles of the claims, and the portion of the specification that states that
“resin part, and resin package are used for a singulated light emitting device, and terms such as
lead frame and resin-molded body are used in the stage prior to singulation.” (Dkt. No. 52 at 28)
(quoting ‘250 Patent at 2:59–62). Plaintiff also argues that this is consistent with the language of
claims 1 and 17. (Dkt. No. 52 at 29.) Thus, according to Plaintiff, the terms “resin package” and
“resin part” are consistently used to describe the resin package and resin part for a light emitting
device. (Dkt. No. 52 at 29.)
Defendants respond that Plaintiff does not offer legitimate constructions for any of the
disputed terms, but instead simply takes the term in dispute and tacks on additional language
from the preambles of claims 1 and 17. (Dkt. No. 60 at 29.) Defendants argue that Plaintiff’s
attempt to import limitations from the specification into each of the disputed terms/phrases is per
se improper. (Dkt. No. 60 at 29.) Defendants argue that this is especially true here as all of these
terms appear in claims that do not require a “light emitting device.” (Dkt. No. 60 at 29.)
In reply, Plaintiff relies on the same argument that it made for the disputed preambles of
claims 1 and 17. (Dkt. No. 65 at 12.)
For the following reasons, the Court finds that the term “resin,” “resin part,” “resin
package,” and “resin-molded body” should be given their plain and ordinary meaning.
b) Analysis
The term “lead frame” appears in claims 1, 3, 6, 7, 12, 13, 15, 27, and 31 of the ‘250
Patent. The Court finds that the term is used consistently in the claims and is intended to have
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the same meaning in each claim. The term “resin” appears in claims 1, 9, 27, and 31 of the ‘250
Patent. The Court finds that the terms is used consistently in the claims and is intended to have
the same meaning in each claim. The term “resin part” appears in claims 1, 15, 17, 26, 27, 29,
and 31 of the ‘250 Patent. The Court finds that the terms is used consistently in the claims and is
intended to have the same meaning in each claim. The term “resin package” appears in claims 1,
2, 7, 8, 17, 18, 20, 23, 26, 27, 28, 29, 30, and 31 of the ‘250 Patent. The Court finds that the
terms is used consistently in the claims and is intended to have the same meaning in each claim.
The term “resin-molded body” appears in claims 1, 5, 6, 15, 27, and 31 of the ‘250 Patent. The
Court finds that the terms is used consistently in the claims and is intended to have the same
meaning in each claim. The Court further find that the disputed terms are unambiguous, are
easily understandable by a jury, and require no construction. Indeed, Plaintiff does not construe
the disputed language, but instead includes the disputed terms in its constructions.
Regarding Plaintiff’s constructions, the Court disagrees that all of the claims should be
limited to “light emitting devices.” The disputed terms/phrases are recited in several claims, and
unlike independent claims 1 and 17, the remaining independent claims are not limited to “light
emitting devices.” See, e.g., claims 27, 29, and 31. It would be improper to redraft the claims to
import a “limit emitting device” limitation into these claims via these disputed terms. Moreover,
Plaintiff does not contend that the disputed terms require construction, but instead seeks to
import a limitation from the specification into the claims. Accordingly, the Court finds that the
terms should be given their plain and ordinary meaning. To the extent that Plaintiff contends
that the plain and ordinary of the terms are limited to a light emitting device, the Court rejects
this argument.
c) Court’s Construction
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In light of the intrinsic and extrinsic evidence, the terms “lead frame,” “resin,” “resin
part,” “resin package,” and “resin-molded body” will be given their plain and ordinary
meaning.
4. “the at least one lead comprises a step on a bottom surface or outer
surface thereof”
Disputed Term
the at least one
lead comprises a
step on a bottom
surface or outer
surface thereof
Plaintiff’s Proposal
the at least one lead has an indentation
formed on an exposed portion of a bottom
surface or outer surface of the lead
Defendants’ Proposal
Plain and ordinary meaning.
No construction necessary.
a) The Parties’ Positions
The parties dispute whether the phrase requires construction. Plaintiff contends that
construction is necessary to help the Court and jury understand what is meant by a “step on a
bottom surface or outer surface” of the at least one lead. (Dkt. No. 52 at 29.) Plaintiff argues that
a review of the specification shows that a “step” refers to an indentation in an exposed portion of
the lead. (Dkt. No. 52 at 29) (citing ‘250 Patent at 14:37–51; 14:58–15:2; 15:35–54; 16:5–29).
Plaintiff contends that Figure 12 is an example of a device having a step in an exposed portion of
a bottom surface or outer surface of the lead. (Dkt. No. 52 at 29.) Defendants respond that
Plaintiff has failed to offer a reason why the Court and the jury can’t understand the term “step,”
and why the synonym “indentation” is any clearer to the trier of fact. (Dkt. No. 60 at 29.)
Plaintiff replies that Defendants do not dispute the accuracy of Plaintiff’s construction. (Dkt. No.
65 at 13.)
For the following reasons, the Court finds that the phrase “at least one lead comprises a
step on a bottom surface or outer surface thereof” should be given its plain and ordinary
meaning.
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b) Analysis
The phrase “at least one lead comprises a step on a bottom surface or outer surface
thereof” appears in claims 19 of the ‘250 Patent. The Court agrees with Defendants that Plaintiff
has failed to offer a persuasive reason why the Court and the jury cannot understand the term
“step,” and why it should be redrafted as “indentation.”
Moreover, the Court finds that
Plaintiff’s construction is more confusing than helpful. Accordingly, the Court finds that the
phrase should be given its plain and ordinary meaning.
c) Court’s Construction
In light of the intrinsic evidence, the phrase “at least one lead comprises a step on a
bottom surface or outer surface thereof” will be given its plain and ordinary meaning.
5. “a portion of the resin part is disposed over a portion of the plating on
the upper surface of the at least one lead”
Disputed Term
a portion of the resin part is
disposed over a portion of the
plating on the upper surface of
the at least one lead
Plaintiff’s Proposal
the resin part covers partially,
but not completely, the plating
on the upper surface of the at
least one lead
Defendants’ Proposal
Plain and ordinary
meaning. No construction
necessary.
a) The Parties’ Positions
The parties dispute whether the phrase requires construction. Plaintiff argues the phrase
should be construed to mean that “the resin part covers partially, but not completely, the plating
on the upper surface of the at least one lead.” (Dkt. No. 52 at 30.) Plaintiff argues that every
single embodiment illustrates resin covering some, but not all, of the plating of the upper surface
of the lead. (Dkt. No. 52 at 30.) Plaintiff contends that this is a common-sense requirement for a
light emitting device. (Dkt. No. 52 at 30) (citing ‘250 Patent at 5:60–6:23; Figures 2 and 4).
Defendants respond that Plaintiff seeks to import a negative limitation from the
specification into the plain and ordinary meaning of the claims. (Dkt. No. 60 at 30.) Defendants
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also argue that the transitional term “comprising” is an open phrase and allows coverage of
technologies that employ additional and unrecited elements. (Dkt. No. 60 at 30.)
Thus,
according to Defendants, the disputed phrase refers to a scenario where “a portion [or all] of the
resin part is disposed over a portion [or all] of the plating on the upper surface of the at least one
lead.” (Dkt. No. 60 at 30.)
Plaintiff replies that a portion of an object is a part of that object, not the entire object.
(Dkt. No. 65 at 13.) Plaintiff contends that Defendants disregard this important distinction and
read the phrase “portion of” out of the claims entirely. (Dkt. No. 65 at 13.) Plaintiff also argues
that Defendants ignore that a purpose of the plating on the lead frame is to reflect light, which it
could not do if it were entirely covered by resin; thus, the resin must cover “partially, but not
completely.” (Dkt. No. 65 at 13.)
For the following reasons, the Court finds that the phrase “a portion of the resin part is
disposed over a portion of the plating on the upper surface of the at least one lead” should
be should be construed as “a portion of the resin part is located over a portion of the plating
on the upper surface of the at least one lead.”
b) Analysis
The phrase “a portion of the resin part is disposed over a portion of the plating on the
upper surface of the at least one lead” appears in claims 17 and 29 of the ‘250 Patent. The Court
finds that the phrase is generally unambiguous and is easily understandable by a jury. Thus, the
Court is not persuaded that it needs include the negative limitation proposed by Plaintiff.
However, the Court does agree that the term “disposed” could be confusing to a jury, and finds
that this term should be construed as “located.” For example, Figure 2 illustrates a portion of the
resin part 25 located over a portion of the upper surface (27a) of lead (22) that is plated. ‘250
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Patent at 5:66–6:6.
To the extent that Defendants contend that the Court’s construction allows for all of the resin
part to be disposed over all of the plating on the upper surface of the at least one lead, the Court
rejects this argument. The disputed language clearly states that “a portion of the resin part is
disposed over a portion of the plating on the upper surface of the at least one lead.” A portion is
not “all” as Defendants contend. To suggest otherwise would be inconsistent with the intrinsic
evidence.
c) Court’s Construction
In light of the intrinsic evidence, the Court construes the phrase “a portion of the resin
part is disposed over a portion of the plating on the upper surface of the at least one lead”
to mean “a portion of the resin part is located over a portion of the plating on the upper
surface of the at least one lead”.
6. “notch”
Disputed Term Plaintiff’s Proposal
“notch”
“opening”
Defendants’ Proposal
“a cavity that penetrates the lead frame and that will
be filled with resin”
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a) The Parties’ Positions
The parties dispute whether the term “notch” should be construed as “opening” as
Plaintiff contends, or whether it should be construed as “a cavity that penetrates the lead frame
and that will be filled with resin,” as Defendants contend. Plaintiff contends that its construction
is consistent with the term’s use in the specification, which consistently shows the claimed
“notch” to be an “opening” in the lead frame. (Dkt. No. 52 at 31) (citing ‘250 Patent at 3:28–40;
9:7–20; Figures 3, 5, 7, 8, and 10 (elements 21a, 121a, and 221a)). Plaintiff notes that the
language “opening” is not specifically used with respect to “notches” in the specification, but
contends that it best captures the meaning of “notch” in a manner that will be easily understood.
(Dkt. No. 52 at 31.) Plaintiff also argues that Defendants’ construction is overly complex, does
not clarify the meaning of the term, introduces redundancies into the claim, and is inappropriate
because it reads in an intended future use or state for the notch. (Dkt. No. 52 at 31.)
Defendants respond that their construction is necessary to distinguish between the
claimed “notch” and the claimed “hole.” (Dkt. No. 60 at 31.) Defendants note that claim 1
requires “a lead frame comprising at least one notch,” while claim 3, which depends from claim
1, further requires “the lead frame further comprising at least one hole.” (Dkt. No. 60 at 31.)
Thus, according to Defendants, the “notch” in the lead frame is different than the “hole,” and this
difference must be accounted for with a claim construction that distinguishes the two for the
jury. (Dkt. No. 60 at 31.) Defendants also argue that the specification explicitly sets forth the
difference between a “notch” and a “hole,” by stating, “the difference is that, while the
thermosetting resin is filled in the notch parts, the thermosetting resin is not filled in hole parts
which are described later. While the notch parts and hole parts penetrate the lead frame, grooves
which are described later do not penetrate the lead frame.” (Dkt. No. 60 at 31) (quoting ‘250
Patent at 3:35–40). Defendants argue that their construction mirrors the disclosed distinction
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between the claimed “notch” and the “hole.” (Dkt. No. 60 at 31.)
Plaintiff replies that Defendants seek to elevate the description of an optional
embodiment of the invention to a global definition. (Dkt. No. 65 at 13) (citing ‘250 Patent at
3:29–40). Plaintiff argues that the terms “grooves” and “holes” are not at issue, and are optional
features recited in dependent claims 3, 13, and 14. (Dkt. No. 65 at 14.)
For the following reasons, the Court finds that the term “notch” should be construed to
mean “an opening that penetrates the lead frame.”
b) Analysis
The term “notch” appears in claims 1, 9, 10, 12, 15, 16, 27, and 31 of the ‘250 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. The intrinsic evidence indicates that the recited “notch” is an opening in
the lead frame that penetrates the lead frame. The specification distinguishes a “notch” from a
“groove” based on whether the feature penetrates the lead frame. Specifically, the specification
states “[w]hile the notch parts and hole parts penetrate the lead frame, grooves which are
described later do not penetrate the lead frame.” ‘250 Patent at 3:38–40. Thus, the Court finds
that a person of ordinary skill in the art would understand that the recited “notch” is an opening
that penetrates the lead frame.
Regarding the parties’ construction, Plaintiff’s construction is so broad that it is unhelpful
and merely substitutes the word “opening” for “notch.” Defendants’ construction improperly
reads an embodiment into the claims. Defendants are correct that claim 1 requires “a lead frame
comprising at least one notch,” and claim 3, which depends from claim 1, further requires “the
lead frame further comprising at least one hole.”
Defendants are also correct that the
specification describes an embodiment where the hole is not filled with resin. But the difference
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between the recited “notch,” “hole,” and “groove” is one of geometry, and whether or not that
particular feature penetrates the lead frame. The intrinsic evidence indicates that a notch and a
hole penetrate the lead frame, and a groove does not. Whether the particular feature “will be
filled with resin” is not recited in the claims, and the Court is not persuaded that it should redraft
the claims to add this limitation.
c) Court’s Construction
In light of the intrinsic evidence, the Court construes the term “notch” to mean “an
opening that penetrates the lead frame.”
7. “cutting the resin-molded body and the plated lead frame along the at
least one notch”
Disputed Term
cutting the resin-molded body
and the plated lead frame along
the at least one notch
Plaintiff’s Proposal
Plain and ordinary
meaning
Defendants’ Proposal
slicing the resin molded body and
the plated lead frame in the same
step along the at least one notch
a) The Parties’ Positions
The parties dispute two issues: (1) timing of the cutting step, and (2) what constitutes
“cutting.” Regarding Defendants’ proposal of “slicing,” Plaintiff argues that the word “slicing”
is not found in the specification, and does not provide any additional clarity for the Court or the
jury. (Dkt. No. 52 at 32) Plaintiff argues that the word “cutting” is clear and that replacing
“cutting” with “slicing” is inappropriate. (Dkt. No. 52 at 32.) Plaintiff further argues that
Defendants’ construction reads in a limitation that slicing the resin molded body and the plated
lead frame is done “in the same step.” (Dkt. No. 52 at 32,) Plaintiff argues that the steps are
defined by the claims themselves, and that there is no need to read in an additional limitation.
(Dkt. No. 52 at 32.) Plaintiff further argues that “in the same step” seems to introduce ambiguity
into the claim. (Dkt. No. 52 at 32.) Plaintiff contends that it is unclear from Defendants’
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construction whether the use of multiple tools/processes as part of a single cutting process would
be part of “the same step.” (Dkt. No. 52 at 32.)
Defendants respond that claim 1 recites “cutting the resin-molded body and the plated
lead frame along the at least one notch,” which requires that the same “cutting” step to cut both
the “resin molded body and the plated lead frame along the at least one notch.” (Dkt. No. 60
at 32.) Defendants further contend that the construction is supported by the specification. (Dkt.
No. 60 at 32) (citing ‘250 Patent at 7:47–52). Defendants further argue that it is necessary to
distinguish “cutting” from “punching” or “etching,” because the specification contrast
“punching” or “etching” to “cutting.” (Dkt. No. 60 at 33) (citing ‘250 Patent at 8:49–9:3; 9:7–
20).
Plaintiff replies that the “cutting” of the resin-molded body and plated lead frame need
not occur simultaneously because the exact sequence or manner of cutting is unspecified. (Dkt.
No. 65 at 14.)
Plaintiff contends that Defendants improperly seek to impose a sequence
requirement on a method claim that recites none. (Dkt. No. 65 at 14.) Plaintiff further argues
that Defendants fail to identify any disavowals restricting the claims to slicing. (Dkt. No. 65
at 14.)
For the following reasons, the Court finds that the phrase “cutting the resin-molded
body and the plated lead frame along the at least one notch” should be given its plain and
ordinary meaning.
b) Analysis
The phrase “cutting the resin-molded body and the plated lead frame along the at least
one notch” appears in claims 1, 27, and 31 of the ‘250 Patent. The Court finds that the phrase is
unambiguous, is easily understandable by a jury, and requires no construction. In addition, the
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Court rejects Defendants’ argument that “cutting” must be construed as “a slicing operation.”
Once again, the words “slicing operation” does not appear in the specification and it is not clear
what would be considered a slicing operation. Although, the specification does disclose an
embodiment where the lead frame and resin-molded body are cut using a saw, this is one
embodiment and the claims are not limited to this cutting method. See, e.g., ‘250 Patent
at 12:45–49 (“The cutting method uses a singulation saw, and starts singulation from the resinmolded body 24 side. By this means, in the cutting surface, the resin-molded body 24 and lead
frame 21 are in the substantially same plane, and the lead frame 21 is exposed from the resinmolded body 24.”)
Finally, the Court finds that “cutting the resin-molded body and the plated lead frame”
does not have to occur “in the same step,” as Defendants propose. Unlike the language that
Defendants point to in the specification, the claim does not recite that the cutting has to occur “in
the same step.” Accordingly, Defendants’ construction would add an unwarranted step to the
method claim.
c) Court’s Construction
In light of the intrinsic evidence, the phrase “cutting the resin-molded body and the
plated lead frame along the at least one notch” will be given its plain and ordinary meaning.
8. “planar”
Disputed Term
Plaintiff’s Proposal
planar
[formed] in substantially the same plane
Defendants’ Proposal
no measurable surface variation.
a) The Parties’ Positions
The parties dispute whether the term “planar” should be construed as “[formed] in
substantially the same plane,” as Plaintiff contends, or whether it should be construed as “no
measurable surface variation,” as Defendants contend. Plaintiff argues that neither “measurable”
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nor “variation” are found in the specification. (Dkt. No. 52 at 33.) Plaintiff contends that the
extrinsic evidence also supports its proposed construction. (Dkt. No. 52 at 33.)
Defendants respond that claim 1 requires that the outer surfaces of the “resin part” and
“at least one lead” to be planar, not substantially planar, as Plaintiff proposes. (Dkt. No. 60 at
34.) Defendants also argue that if the patentee wanted to claim that the outer surfaces of the
“resin part” and the “at least one lead” were “substantially planar” or “formed in substantially
the same plane,” the patentee knew how to do so. (Dkt. No. 60 at 34) (citing ‘250 Patent at
2:63-3:1).
Defendants further argue that the extrinsic evidence supports Defendants’
construction and that none of the definitions cited by either side support the notion that the plain
and ordinary meaning of “planar” is “substantially in the same plane.” (Dkt. No. 60 at 34.)
Plaintiff replies that Defendants mischaracterize its construction because Plaintiff’s
construction is not “substantially planar,” but rather, “in substantially the same plane”—
language that it contends mirrors the patentee’s usage throughout the specification. (Dkt. No. 65
at 14) (citing ‘250 Patent at 2:64–3:1). Plaintiff further argues that Defendants’ construction
improperly ignores that description. (Dkt. No. 65 at 14.) Plaintiff also contends that Defendants
seeks to restrict the meaning of this term to a very narrow scope without identifying any
evidence that its construction is correct. (Dkt. No. 65 at 14.)
For the following reasons, the Court finds that the term “planar” should be construed to
mean “in a substantially same plane”.
b) Analysis
The term “planer” appears in claims 1, 17, 27, and 29 of the ‘250 Patent. The Court finds
that the term is used consistently in the claims and is intended to have the same meaning in each
claim. The Court further finds that the term appears in the context of “an outer surface of the at
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least one lead are planar at an outer side surface of the resin package.” See, e.g., claim 1. Thus,
the claim language recites that it is the outer side surface of the resin package and a lead that are
planar.
Turning to the specification, the Court finds that a person of ordinary skill in the art
would understand that the term “planar” means “in a substantially same plane.”
The
specification does not use the word “planar,” but instead states that “a resin package 20 in which
a resin part 25 and leads 22 are formed in the substantially same plane in outer side surfaces
20b.” ‘250 Patent at 7:47–52; Figure 1. In fact, the specification describes this relationship
between the recited “outer side surface of the resin package” and the recited “lead” as “in a
substantially same plane” throughout the specification. See, e.g., ‘250 Patent at 2:63–3:1 (“[I]n
which a resin part and a lead are formed in a substantially same plane in an outer side surface.”);
3:60–61 (“[w]herein a resin part and a lead are formed in a substantially same plane in an outer
side surface.”); 4:28–29 (“[w]herein a resin part and a lead are formed in a substantially same
plane in an outer side surface.”); 4:57–59 (“[w]herein a resin part and a lead are formed in a
substantially same plane in an outer side surface.”); 7:47–52 ([t]he resin part and leads are
formed in the substantially same plane.”)
Regarding Defendants’ construction, the Court first notes that neither the term
“measurable” nor “variation” are found in the ‘250 Patent. Moreover, it would appear that
Defendants’ construction would apparently require the leads and outer surface of the resin
package to be perfectly flat. This would be inconsistent with the intrinsic evidence. The
intrinsic evidence indicates that “planar” means that the lead and the outer surface of the resin
package have to be “in a substantially same plane.” Finally, the Court reviewed the extrinsic
evidence submitted by the parties and did not find it useful in light of the intrinsic evidence.
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c) Court’s Construction
In light of the intrinsic and extrinsic evidence, the term “planar” should be construed as
“in a substantially same plane”.
9. “light reflecting material”
Disputed Term
light reflecting
material
Plaintiff’s Proposal
not indefinite plain and ordinary meaning,
i.e., material that reflects light
Defendants’ Proposal
Indefinite
a) The Parties’ Positions
The parties dispute whether the term “light reflecting material” is indefinite. Defendants
argue that the problem with this phrase is that every material that is visible reflects light. (Dkt.
No. 60 at 35.) Thus, according to Defendants, the “scope of the invention” cannot be understood
with reasonable certainty by one of ordinary skill, as every visible material in existence is
encompassed by this phrase. (Dkt. No. 60 at 35.)
Plaintiff contends that Defendants’ argument that all visible materials reflect light
sidesteps the issue of how a person of ordinary skill in the art would understand the meaning and
scope of the claims. (Dkt. No. 65 at 15.) Plaintiff argues that Dr. Schubert’s testimony answers
this point. (Dkt. No. 65 at 15) (citing Dkt. No. 52-6 at ¶¶ 42-43 (Schubert Decl.)) Plaintiff
contends that Defendants have provided no evidence for its position that one of ordinary skill in
the art would not have been able to ascertain the scope of the claims. (Dkt. No. 65 at 15) Thus,
according to Plaintiff, Defendants have not met their burden of demonstrating indefiniteness
For the following reasons, the Court finds that the term “light reflecting material” is not
indefinite.
b) Analysis
The term “light reflecting material” appears in claims 1, 27, and 31 of the ‘250 Patent.
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The Court finds that the phrase is used consistently in the claims and is intended to have the
same meaning in each claim. Claim 1 recites “transfer-molding a thermosetting resin containing
a light reflecting material in a space between the upper mold and the lower mold to form a resinmolded body.” The Court finds that this language, “viewed in light of the specification . . .,
inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus, 134 S. Ct. at 2129.
Specifically, the specification states the following about
thermosetting resin containing a light reflecting material:
It is preferable to use as the resin package 20 a translucent thermosetting resin
highly filled with a light reflecting material. It is preferable to use, for example, a
thermosetting resin which provides the optical transmittance equal to or more than
80% at 350 nm to 800 nm, and it is more preferable to use a thermosetting resin
which provides optical transmittance equal to or more than 90%. This is because
it is possible to prevent deterioration of the resin package 20 by reducing light
which is absorbed by the thermosetting resin. The light reflecting material 26
preferably reflects 90% or more light from the light emitting element 10, and
more preferably reflects 95% or more light. Further, the light reflecting material
26 preferably reflects 90% or more light from the fluorescent material 40, and
more preferably reflects 95% or more light. By reducing the amount of light
which is absorbed by the light reflecting material 26, it is possible to improve the
efficiency to extract light from the light emitting device 100.
‘250 Patent at 6:55–7:4. The specification further states that “[t]he light reflecting member uses
titanium dioxide and is filled with 10 to 60% by weight of titanium dioxide.” ‘250 Patent at
8:21–23; see also 17:29–34. Given these exemplary embodiments, the Court finds that the
claims, viewed in light of the specification, inform those skilled in the art about the scope of the
invention with reasonable certainty. Accordingly, Defendants have failed to prove that the term
is indefinite to those skilled in the art.
c) Court’s Construction
In light of the intrinsic evidence, the Court finds that the term “light reflecting
material” is not indefinite.
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V.
.
CONCLUSION
The Court adopts the above constructions. The parties are ordered that they may not
refer, directly or indirectly, to each other’s claim construction positions in the presence of the
jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion,
other than the actual definitions adopted by the Court, in the presence of the jury. Any reference
to claim construction proceedings is limited to informing the jury of the definitions adopted by
the Court.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 12th day of December, 2014.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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