Enplas Display Device Corpora v. Seoul Semiconductor Company
909 F.3d 398
| Fed. Cir. | 2018Background
- SSC holds U.S. Pat. Nos. 6,007,209 (’209) and 6,473,554 (’554) claiming LED-based backlighting/waveguide/illumination-coupler technology; Enplas manufactured plastic lenses used in such light bars and collaborated with SSC during development.
- SSC accused Enplas of inducing infringement in the U.S. by selling lenses to customers whose finished products (TVs) were sold in the United States; SSC purchased TVs and identified Enplas lenses in accused products.
- Pretrial, the district court granted summary judgment that claim 20 of the ’209 patent is not anticipated by Gleckman; the case proceeded to jury trial on anticipation of asserted ’554 claims, inducement, willfulness, and damages.
- The jury found Enplas induced infringement of the ’209 and ’554 patents and that the asserted ’554 claims were not anticipated by Johnson or JP-161; it awarded $4,000,000 (one-time lump-sum "freedom-to-operate" payment) for the ’554 patent and $70,000 for the ’209 patent.
- On post-trial JMOL motions, the district court denied Enplas’s JMOLs on anticipation (’554), inducement, and damages; on appeal the Federal Circuit affirmed anticipation rulings and the inducement denial but vacated and remanded the $4M damages award as unsupported by substantial evidence.
Issues
| Issue | Plaintiff's Argument (Enplas) | Defendant's Argument (SSC) | Held |
|---|---|---|---|
| Whether claim 20 of the ’209 patent is anticipated by Gleckman | Gleckman discloses LEDs around cavity periphery and inventor testimony creates factual dispute about LEDs mounted on bottom wall | Gleckman does not disclose LEDs mounted on the internal bottom wall as claimed; at most it could be modified | Affirmed: summary judgment that claim 20 is not anticipated (anticipation requires every element in single reference) |
| Whether asserted claims of the ’554 patent are anticipated by Johnson and JP-161 | Johnson/JP-161 disclose waveguide/LED arrangements that anticipate illumination coupler, LED position, and leaky TIR limitations | SSC’s expert showed material structural/functional differences (e.g., encapsulated LEDs vs. separated illumination coupler, no leaky TIR), creating a factual dispute for the jury | Affirmed: denial of JMOL; jury verdict that Johnson and JP-161 do not anticipate ’554 claims is supported by substantial evidence |
| Whether Enplas is liable for induced infringement (JMOL of no inducement) | Enplas: lacked specific intent to induce U.S. infringement; sales to foreign customers and knowledge were insufficient | SSC: Enplas knew of patents, co-developed products, had ~50% global market share, sold to customers whose products reached U.S., received pre-suit letter and provided recommended configurations—circumstantial evidence of intent | Affirmed: denial of JMOL; sufficient circumstantial evidence for jury to find knowledge and specific intent to induce U.S. infringement |
| Whether the $4,000,000 lump-sum damages award for the ’554 patent is supported by substantial evidence | Enplas: SSC’s damages expert improperly based the lump-sum royalty on sales of non-accused / non-infringing lenses (used as proxy for ‘‘potentially infringing’’ sales), so award lacks substantial evidence | SSC: expert assumed a reasonable hypothetical license (freedom-to-operate lump sum) covering potentially infringing products; the jury instruction allowed lump-sum covering past and future infringement | Vacated and remanded: $4M award unsupported because expert applied royalty base including non-accused, non-infringing products; damages must compensate for infringement only (jury’s $70,000 for ’209 remains intact) |
Key Cases Cited
- In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir.) (anticipation requires every claimed element in a single prior-art reference)
- Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir.) (same rule on anticipation)
- In re Chudik, 851 F.3d 1365 (Fed. Cir.) (prior art that must be modified does not anticipate)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (U.S.) (inducement requires knowledge that induced acts constitute infringement)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir.) (hypothetical negotiation framework for reasonable royalty)
- AstraZeneca AB v. Apotex Corp., 782 F.3d 1324 (Fed. Cir.) (reasonable-royalty base cannot include non-infringing activity)