IP Law Daily, PATENT—Fed. Cir.: Non-infringement decision reversed for erroneous claim construction in lighting dispute, (Oct 17, 2024)

By Kevin M. Finson

The trial court’s claim construction required reversal because it narrowed a claim term to match a preferred embodiment when nothing in the patent suggested such a narrowing was intended.

An LED lighting manufacturer and owner of a semiconductor light source established that a California district court erred in construing the claims of a patent the manufacturer had asserted against a competitor, the U.S. Court of Appeals for the Federal Circuit has held. The trial court had wrongfully narrowed the meaning of a claim term based on a preferred embodiment without any indication in the patent language that such a narrowing was intended (CAO Lighting, Inc. v. Feit Electric Co., Inc., No. 23-1906 (Fed. Cir. Oct. 16, 2024)).

CAO Lighting, Inc. (CAO) was the owner of U.S. Patent No. 6,465,961 (the ’961 patent), which claimed a semiconductor lights source with a particular structure of layers upon a substrate. CAO brought suit for infringement against Feit Electric Company, Inc. (Feit) alleging that Feit sold products with infringing LED chips. After claim construction the trial court granted summary judgment of non-infringement. CAO appealed.

Claim construction. CAO argued that the trial court erred by construing the term “first reflective layer” to require that the layer must be “epitaxial,” meaning that it is grown on the substrate, and that the “first reflective layer” must be made of a different material than the substrate.

The Federal Circuit found that this construction was based on an unsupported narrowing of the claim term to the way the term was used in the sole preferred embodiment described in the specification. The fact that the VCSEL chip used as an example in the specification possessed reflective layers that were epitaxial did not change the fact that the claims themselves were written broadly enough to encompass both epitaxial and non-epitaxial reflective layers. The trial court’s requirement that the first reflective layer must be of a different material than the substrate hinged on the epitaxial requirement, so that was likewise reversed.

Finding that the summary judgment decision of non-infringement was based on an erroneous claim construction, the court reversed the trial court’s claim construction and judgment of non-infringement and remanded for further proceedings.

The Case is No. 23-1906.

Judge: Dyk, T.

Attorneys: Ronald E. Cahill (Barnes & Thornburg LLP) for CAO Lighting, Inc. Ryan Dykal (Boies Schiller Flexner LLP) for Feit Electric Co., Inc.

Companies: CAO Lighting, Inc.; Feit Electric Co., Inc.

Cases: Patent FedCirNews CaliforniaNews