IP Law Daily, PATENT—Fed. Cir.: Federal Circuit affirms patent decision against the University of California, (May 16, 2023)

By Ursula Furi-Perry, J.D., MBA

The circuit court agreed with the International Trade Commission’s construction of “molding” and determined that its findings of non-infringement based on the “molding” limitation were supported by substantial evidence.

On appeal from a determination of the International Trade Commission, the Regents of the University of California claimed that several companies infringed on the Regents’ patents by importing or selling certain filament light-emitting diodes (LEDs) and products containing them. The U.S Court of Appeals for the Federal Circuit affirmed the determinations. The circuit court agreed with the International Trade Commission’s construction of “molding” and determined that its findings of non-infringement based on the “molding” limitation were supported by substantial evidence. (Regents of the University Of California v. ITC, May 16, 2023, Chen, R.).

Background. The Regents of the University of California (Regents) had brought claims for patent infringement under 19 U.S.C. s. 1337 against several companies, including the Home Depot and IKEA. The International Trade Commission (ITC) determined that the defendant companies did not infringe on the Regents’ patents by importing or selling certain filament light-emitting diodes (LEDs) and products containing them. The Regents appealed on claim construction, infringement, and invalidity to the U.S. Court of Appeals for the Federal Circuit.

Analysis. The federal circuit court agreed with the ITC’s claim construction of “molding” as “a component formed by or as if by a mold.” The court rejected the Regents’ argument that a “molding” did not necessarily require a structure with uniform shape and should be construed to mean a “formed component.” The specifications and claims supported the ITC’s determinations, the court held, suggesting “molding” with more specific physical characteristics than simply a “formed component,” because the “molding” must be designed in a particular manner to effectively extract light from the LED. The Regents’ proposed construction of a “formed component” was unclear, the court noted, as to any physical characteristics required by the “molding,” and the court noted no distinction between a formed and unformed component.

Regarding the infringement claim, the court again ruled against the Regents, holding that substantial evidence supported the ITC’s determination that the defendant companies’ products lacked a molding, with expert testimony supporting that the accused moldings were filament coatings that have surface irregularities, which are unlike coatings formed by a mold or as if by a mold. The Regents argued that the ITC erred by failing to focus solely on the portions of the filament that surrounded the LED, but the court held that argument was untimely, as it was not raised to the Administrative Law Judge (ALJ) and only argued in the petition for the ITC’s review.

Conclusion. The federal circuit affirmed the ITC’s decision and determinations.

The Case is No. 22-1521.

Attorneys: Shawn G. Hansen (Nixon Peabody LLP) for Regents of the University of California. Houda Morad for the ITC.

Cases: Patent FedCirNews