NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`EVERLIGHT ELECTRONICS CO., LTD,
`Plaintiff-Cross-Appellant
`
`EMCORE CORPORATION,
`Plaintiff
`
`EVERLIGHT AMERICAS, INC.,
`Counterclaim Defendant-Cross-Appellant
`
`v.
`
`NICHIA CORPORATION, NICHIA AMERICA
`CORPORATION,
`Defendants-Appellants
`______________________
`
`2016-1577, 2016-1611
`______________________
`
`Appeals from the United States District Court for the
`Eastern District of Michigan in No. 4:12-cv-11758-GAD-
`MKM, Judge Gershwin A. Drain.
`______________________
`
`Decided: January 4, 2018
`______________________
`
`RAYMOND N. NIMROD, Quinn Emanuel Urquhart &
`Sullivan, LLP, New York, NY, argued for plaintiff-cross-
`appellant and counterclaim defendant-cross-appellant.
`
`NICHIA EX2024
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`

`

`
`
` 2
`
` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`Also represented by RICHARD WOLTER ERWINE, ANASTASIA
`M. FERNANDS, MATTHEW A. TRAUPMAN.
`
`KENNETH A. GALLO, Paul, Weiss, Rifkind, Wharton &
`Garrison LLP, Washington, DC, argued for defendants-
`appellants. Also represented by DIANE GAYLOR; DANIEL
`KLEIN, CATHERINE NYARADY, PETER SANDEL, New York,
`NY.
`
`______________________
`
`Before WALLACH, CHEN and HUGHES, Circuit Judges.
`CHEN, Circuit Judge.
`Everlight brought a declaratory judgment suit against
`Nichia seeking a determination of non-infringement,
`invalidity, or unenforceability of U.S. Patent Nos.
`5,998,925 (the ’925 patent) and 7,531,960 (the ’960 patent)
`(together, the Patents-in-Suit). Nichia filed counterclaims
`for infringement against Everlight. In April 2015, a jury
`returned a verdict that claims 2, 3 and 5 of the ’925 pa-
`tent and claims 2, 14, and 19 of the ’960 patent1 were
`invalid due to obviousness. In June 2015, the district
`court held a bench trial and determined that Everlight
`failed to establish its inequitable conduct claim. See
`Everlight Elecs. Co. v. Nichia Corp., 143 F. Supp. 3d 644,
`646 (E.D. Mi. 2015); J.A. 65−66 (Final Judgment). Fol-
`lowing the trials, Nichia moved for judgment as a matter
`of law (JMOL) of validity and/or a new trial, which the
`district court denied, holding that substantial evidence
`supported the jury verdict of invalidity. See Everlight
`Elecs. Co. v. Nichia Corp., No. 12-cv-11758, 2016 WL
`8232553, at *1 (E.D. Mi. Jan. 19, 2016); J.A. 34−35 (Final
`Judgment). Nichia appeals this ruling. Everlight cross-
`
`1 Nichia does not appeal the verdict with respect to
`claims 14 and 19 of the ’960 patent. See Appellant’s Br.
`1–2.
`
`NICHIA EX2024
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`

`EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`3
`
`appeals the ruling of no inequitable conduct. We have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Because
`the jury verdict is supported by substantial evidence, and
`because the district court did not err in denying Ever-
`light’s inequitable conduct claim, we affirm on all
`grounds.
`
`DISCUSSION
`I. The Jury Verdict of Invalidity
`We review a denial of JMOL under the law of the re-
`gional circuit. Comcast IP Holdings I LLC v. Sprint
`Commc’ns Co., L.P., 850 F.3d 1302, 1309 (Fed. Cir. 2017).
`“[The Sixth Circuit] review[s] de novo a district court’s
`denial of a motion for judgment as a matter of law.”
`Imwalle v. Reliance Med. Prod., Inc., 515 F.3d 531, 543
`(6th Cir. 2008). “This court reviews a jury’s conclusions
`on obviousness de novo, and the underlying findings of
`fact, whether explicit or implicit in the verdict, for sub-
`stantial evidence.” Pregis Corp. v. Kappos, 700 F.3d 1348,
`1354 (Fed. Cir. 2012). Substantial evidence is “such
`relevant evidence as a reasonable mind might accept as
`adequate to support a conclusion.” Consol. Edison Co. v.
`NLRB, 305 U.S. 197, 229 (1938).
`A patent claim is unpatentable when “the differences
`between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which
`said subject matter pertains.” 35 U.S.C. § 103(a).2 Obvi-
`
`2 Congress amended § 103 when it passed the Leahy-
`Smith America Invents Act (“AIA”). Pub. L. No. 112-29,
`§ 3(c), 125 Stat. 284, 287 (2011). However, because the
`application that led to the Patents-in-Suit never con-
`tained (1) a claim having an effective filing date on or
`after March 16, 2013 or (2) a reference under 35 U.S.C.
`
`NICHIA EX2024
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` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`ousness “is a question of law based on underlying findings
`of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
`2000). The underlying factual findings include (1) “the
`scope and content of the prior art,” (2) “differences be-
`tween the prior art and the claims at issue,” (3) “the level
`of ordinary skill in the pertinent art,” and (4) the presence
`of secondary considerations of nonobviousness such “as
`commercial success, long felt but unsolved needs, failure
`of others,” and unexpected results. Graham v. John Deere
`Co. of Kan. City, 383 U.S. 1, 17 (1966); see United States v.
`Adams, 383 U.S. 39, 50–52 (1966).
`A. The ’925 Patent
`Both Patents-in-Suit are directed to the combination
`of a blue light-emitting diode (LED) and a blue-to-yellow
`phosphor—a chemical which absorbs one color of light and
`emits another—to produce a white LED. Claim 2 is
`representative of the ’925 patent claims and can be writ-
`ten in independent form as follows:
`2. A light emitting device, comprising a light emit-
`ting component and a phosphor capable of absorb-
`ing a part of light emitted by the light emitting
`component and emitting light of wavelength dif-
`ferent from that of the absorbed light;
`wherein said light emitting component comprises
`a nitride compound semiconductor represented by
`the formula: IniGajAlkN where 0≤i, 0≤j, 0≤k and
`i+j+k=1; and
`wherein the phosphor used contains an yttrium-
`aluminum-garnet fluorescent material containing
`Y and Al.
`
`
`§§ 120, 121, or 365(c) to any patent or application that
`ever contained such a claim, the pre-AIA § 103 applies.
`See id. § 3(n)(1), 125 Stat. at 293.
`
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`EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
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`5
`
`’925 patent col. 31, ll. 25–40. At the jury trial, Everlight
`presented Japanese Patent Application No. H05-152609
`(Tadatsu) and U.S. Patent No. 6,600,175 (Baretz) to
`demonstrate that the use of phosphors with blue LEDs to
`alter the light profile emitted by the LED was known in
`the art. Tadatsu discloses use of a phosphor with a galli-
`um nitride blue LED to achieve “conversion of a light of a
`number of wavelengths” or “color correction of blue LED.”
`J.A. 19827–28. Baretz discloses a “monochromatic blue or
`UV” LED which is “down-converted to white light by
`packaging the diode with . . . inorganic fluorescers and
`phosphors in a polymeric matrix.” J.A. 19759; see also
`J.A. 19768 col. 9, ll. 9–29 (disclosing use of phosphors to
`produce white light from a gallium nitride blue LED).
`In conjunction, Everlight presented Mary V. Hoffman,
`Improved color rendition in high pressure mercury vapor
`lamps, 6 J. Illuminating Engineering Soc’y 89 (1977)
`(Hoffman), and U.S. Patent No. 4,727,283 (Philips) to
`demonstrate that the use of yttrium-aluminum-garnet
`(YAG) phosphors to downconvert blue light to yellow light
`was known in the context of mercury vapor lamps. Hoff-
`man discloses use of a YAG phosphor to downconvert blue
`light with a wavelength of 436nm to yellow light with a
`wavelength of 560nm. J.A. 20408–09. Philips discloses
`use of a YAG phosphor to absorb “radiation having a
`wavelength between about 400 and 480 nm and convert it
`into radiation in a wide emission band . . . with a maxi-
`mum [wavelength] at about 560 nm.” J.A. 19785 col. 2, ll.
`51–55. Based on the above references and expert testi-
`mony from both parties, the jury rendered its verdict of
`obviousness.
`The district court determined that the jury verdict
`was supported by substantial evidence because (1) the
`prior art demonstrated that both gallium nitride blue
`LEDs and YAG phosphors were known in the art;
`(2) evidence was presented at trial that a person of ordi-
`nary skill in the art would have desired to combine a blue-
`
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`

`
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` 6
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` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`to-yellow phosphor with a blue LED to produce a white
`LED; and (3) a reasonable jury could have found second-
`ary considerations to fail to weigh in favor of patentabil-
`ity. See Everlight, 2016 WL 8232553, at *8−9. In
`particular, the court noted evidence presented at trial
`that blue LEDs were “well known in the art,” that “it was
`known that blue LEDs could be combined with phosphors
`to change the color of the light emitted by the LED,” that
`“it has been known for over 300 years that mixing blue
`and yellow light results in white light,” and that “YAG
`was used in conjunction with blue light sources, including
`cathode ray tubes, blue lasers and blue mercury vapor
`lamps, to make white light.” Id. at *9. Thus, the court
`concluded that substantial evidence supported the conclu-
`sion that all of the elements of claims 2, 3, and 5 of the
`’925 patent were present in the prior art.
`As to motivation to combine, the district court noted
`that evidence was presented to the jury that (1) there was
`a large market demand for white LEDs; (2) the gallium
`nitride blue LED was a revolutionary breakthrough which
`was necessary to the development of a white LED;
`(3) testimony from both parties indicated that the inven-
`tion of the blue LED naturally led to the use of a blue-to-
`yellow phosphor to produce a white LED; (4) there were a
`limited number of blue-to-yellow phosphors; and
`(5) YAG’s properties were well-known to skilled artisans
`at the time of the alleged invention. Id. at *10. Thus, the
`district court found that a reasonable jury could have
`concluded that the alleged invention was no more than
`the “combination of familiar elements according to known
`methods” to “yield predictable results.” Id. (citing KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
`On secondary considerations, the district court noted
`that although Nichia had presented evidence of commer-
`cial success, a reasonable jury could have found that
`evidence to be undermined by credible doubts raised at
`trial as to the nexus between the patented features and
`
`NICHIA EX2024
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`

`EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`7
`
`the success. See Pregis, 700 F.3d at 1356 (“The lack of
`nexus between the claimed subject matter and the com-
`mercial success or purportedly copied features . . . renders
`[] proffered objective evidence uninformative to the obvi-
`ousness determination.”). Furthermore, the court noted,
`Everlight had presented substantial evidence of simulta-
`neous invention of the alleged invention by Osram, a
`competitor of Nichia. Everlight, 2016 WL 8232553, at
`*12−13 (citing Geo. M. Martin Co. v. All. Mach. Sys. Int’l
`LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010)). Thus, a
`reasonable jury could have found that secondary consid-
`erations did not weigh in favor of nonobviousness.
`We agree with the district court that substantial evi-
`dence supports the jury verdict of invalidity. Every
`element of the claimed invention was separately present
`in the prior art, and the jury heard evidence that a person
`of ordinary skill at the time of invention would have
`desired to combine a blue-to-yellow phosphor with a blue
`LED to produce white light, and would have been aware
`of YAG as a useful blue-to-yellow phosphor. This evi-
`dence is sufficient for a reasonable jury to conclude that
`the asserted claims would have been obvious. As to
`secondary considerations, the jury heard evidence which
`weighed in both directions and evidence attacking the
`credibility of the various asserted secondary considera-
`tions. For example, the jury heard evidence of independ-
`ent development by Osram of a white LED “within weeks
`of Nichia.” Id. at *12; see J.A. 17817−19, 20353−55.
`Furthermore, the
`jury heard evidence undermining
`whether Nichia’s evidence of commercial success and
`contemporary praise were actually due to the claimed
`invention and whether Nichia’s expert was unbiased. See
`Everlight, 2016 WL 8232553, at *12−13; see also J.A.
`18019, 21808, 22447−49 (awards and licenses that cover
`products beyond the inventions in the Patents-in-Suit). A
`reasonable jury could have drawn a variety of conclusions
`regarding the strength and credibility of the evidence. We
`
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`

`
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` 8
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` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`will not reweigh that evidence here. See In re Inland
`Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001); cf. Roth-
`man v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009)
`(“Because the district court duly instructed the jury to
`consider and weigh evidence of secondary considerations,
`this court sees no reason to disturb the jury’s determina-
`tion that this important factual evidence did not outweigh
`its assessment of obviousness in light of the prior art.”).
`Nichia argues before this court that a person of ordi-
`nary skill would not have been motivated to combine a
`blue LED with a YAG phosphor because (1) the disclosure
`of blue LEDs in the prior art focused on a so-called “three-
`color” solution in which multiple phosphors produced a
`combination of red, green, and blue light to achieve white
`light rather than the “two-color” solution of the ’925
`patent (i.e. blue + yellow), Appellant’s Br. 30−33; (2) a
`person of ordinary skill would not have recognized useful
`properties of YAG phosphors such as moisture resistance,
`id. at 30−33, 47−48; and (3) the prior art discouraged use
`of YAG with a blue light source because of poor color
`rendering, id. at 43−47. We disagree on all points.
`First, it is not necessary that the prior art teach a
`two-color solution in order for the jury verdict to be sup-
`ported by substantial evidence.3 It is sufficient that the
`prior art recognize that blue LEDs can be combined with
`phosphors to produce varying light profiles,4 that combi-
`
`3 Although we do not reach this point, we recognize
`that both the district court and Everlight pointed to
`statements in the prior art which suggest a two-color
`solution. See, e.g., J.A. 18524−27; J.A. 19759 col. 9, ll.
`45−50, col. 10, l. 66 − col. 11, l. 6; see also ’925 patent col.
`1, l. 56 − col. 2, l. 7 (describing prior art).
`4 We recognize that Everlight’s expert made arguably
`inaccurate statements at trial regarding whether Baretz
`and Tadatsu disclose a blue-to-yellow phosphor. See J.A.
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`EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
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`9
`
`nation with a blue-to-yellow phosphor would yield white
`light, and that a strong market demand existed for a
`white LED. See Everlight, 2016 WL 8232553, at *9 (“[I]t
`was known that blue LEDs could be combined with phos-
`phors to change the color of light emitted by the LED.”
`(citing trial exhibits and transcript)), id. (“[I]t has been
`known for over 300 years that mixing blue and yellow
`light results in white light (citing trial transcript)), id. at
`*10 (“[It was an] undisputed fact that there was a large
`market demand for white LEDs. . . . Nichia’s expert
`conceded [that] the development of a commercially viable
`blue LED ‘gave everyone the inventive to move forward to
`create a simple blue plus yellow LED that emits white
`light.’” (quoting trial transcript)).
`We further disagree that a person of ordinary skill
`needed to be aware of the moisture-resistant properties of
`YAG to satisfy the motivation to combine requirement. It
`is sufficient to support the jury verdict that a person of
`ordinary skill would desire to combine a blue-to-yellow
`phosphor with a blue LED and that YAG was one of a
`limited number of available blue-to-yellow phosphors. See
`KSR, 550 U.S. at 421 (“When there is a design need . . . to
`solve a problem and there are a finite number of identi-
`fied, predictable solutions, a person of ordinary skill in
`the art has good reason to pursue the known options
`within his or her technical grasp.”). Given that signifi-
`cant motivation to use a YAG phosphor, it does not matter
`
`
`17581−82 (stating that Baretz discloses using blue light
`and yellow phosphor to achieve white light); see also J.A.
`17600−08 (making similar statements with respect to
`Tadatsu). Because other evidence before the jury was
`sufficient to support a finding of obviousness, and because
`Nichia had the opportunity to cross-examine Everlight’s
`expert, we decline to reweigh the evidence presented to
`the jury.
`
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` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`that YAG may provide properties unappreciated at the
`time of invention which are superior to other blue-to-
`yellow phosphors; even if the prior art did not identify all
`of the problems identified by Nichia in the ’925 patent’s
`specification, we have never required a party to prove
`that all possible problems solved by an invention were
`known in the prior art. Proof of one motivation to com-
`bine, as shown here, is sufficient.5
`We also disagree that the statements in the prior art
`that YAG phosphors provided poor color rendering taught
`away from the claimed invention.6 See Appellant’s Br. 43
`(quoting J.A. 19786 (stating YAG “is detrimental to the
`colour rendition properties”), 20410 (“The emission con-
`tribution of YAG . . . would definitely result in a lower
`
`
`5 Nichia also does not contest that Baretz sought to
`solve the problem of general degradation by elements
`such as heat and light, see Appellant’s Br. 30–31; see also
`Baretz col. 5 ll. 2−8, col. 9 ll. 65−66 (discussing degrada-
`tion), nor that YAG was known in the prior art to be
`resistant to at least intense light degradation, see Appel-
`lant’s Br. 12 (“YAG had previously been used in cathode
`ray tubes but its resistance to light and moisture had not
`been appreciated because, unlike LEDs, cathode ray tubes
`are hermitically sealed against moisture.”). “[A]ny need or
`problem known in the field of endeavor at the time of
`invention and addressed by the patent can provide a
`reason for combining the elements in the manner
`claimed.” KSR, 550 U.S. 398, 420 (2007) (emphasis
`added).
`6 Nichia makes the same arguments for color render-
`ing with respect to lack of reasonable expectation of
`success and unrecognized problem in the field as with the
`moisture resistant properties of YAG. See Appellant’s Br.
`47−48. For the reasons stated above, we find these argu-
`ments unpersuasive.
`
`NICHIA EX2024
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`EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
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`11
`
`CRI [color rendering index].”)). Teaching away is a ques-
`tion of fact and requires a showing that a skilled artisan
`“would be discouraged from following the path set out in
`the reference, or would be led in a direction divergent
`from the path that was taken by the applicant.” In re
`Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). A person of
`ordinary skill desiring to create a white LED could plau-
`sibly look to the cited prior art references despite their
`statements on color rendition because they aided in the
`creation of a white LED, which was a highly desired goal.
`Without additional evidence, the jury could reasonably
`have found that the color rendition properties of the prior
`art would not have taught away from the creation of a
`white LED.
`
`B. The ’960 Patent
`The ’960 patent is directed to a similar LED/phosphor
`system as the ’925 patent without the YAG phosphor
`limitation. Instead, the ’960 patent teaches that the
`phosphor is concentrated near the surface of the LED chip
`to minimize environmental degradation. Claim 2 of the
`’960 patent, the only claim at issue in this appeal, can be
`written in independent form as follows:
`2. A light emitting device which comprises;
`a light emitting component having a gallium ni-
`tride based semiconductor; and
`a resin containing at least one phosphor capable of
`absorbing a part of a first light of blue color emit-
`ting from the light emitting component and emit-
`ting a second light of wavelength different from
`that of the absorbed first light, said emission of
`the second light emitted from at least one fluores-
`cent material and a light of an unabsorbed first
`light passes through said fluorescent material
`from said light emitting component, said unab-
`
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` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`sorbed first light and said second light are capable
`of overlapping each other to make white light;
`wherein a concentration of the phosphor increases
`from the surface of a resin that contains the phos-
`phor toward the light emitting component.
`’960 patent col. 30, l. 65 – col. 31, l. 19. In addition to
`Baretz and Tadatsu, Everlight presented Japanese Patent
`Publication No. 52-40959 (JP-959) to demonstrate that
`the fabrication of resins with a phosphor gradient was
`known in the prior art. JP-959 describes a process for
`curing phosphor-infused resins in which gravity is al-
`lowed to concentrate the phosphor. Figure 1C of that
`reference shows that when the resin/chip combination is
`placed with the chip below the resin, the phosphor con-
`centrates on the surface of the chip. The reference further
`teaches that the phosphor within the resin “settles down-
`ward” and “is concentrated.” J.A. 19881–82. Based on
`JP-959, Baretz, Tadatsu, and expert testimony from both
`parties, the jury rendered its verdict of obviousness.
`The district court determined that the jury verdict
`was supported by substantial evidence because JP-959
`disclosed a phosphor gradient in Figure 1C and taught
`that the phosphor “settles downward” and “is concentrat-
`ed.” With regard to motivation to combine, the district
`court found that the jury had heard evidence that Baretz
`discussed various configurations of the phosphor to avoid
`degradation, and that there were a limited number of
`ways to disperse the phosphor within the resin. See
`Everlight, 2016 WL 8232553, at *13.
`On appeal, Nichia argues that JP-959 did not in fact
`disclose the gradient of claim 2 of the ’960 patent because
`Figure 1C was only an intermediate step, and the goal of
`JP-959 was to concentrate the phosphor on the outer
`surface of the resin, rather than the inner surface. We
`agree with Nichia that a person of ordinary skill following
`the steps of the JP-959 reference to completion would not
`
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`13
`
`produce the ’960 patent’s claimed gradient. However, we
`conclude that a reasonable jury could find that an artisan
`of ordinary creativity would be drawn to use the teachings
`of the JP-959 patent, including that the phosphor “settles
`downward” and “is concentrated,” and the teachings of
`Baretz that the phosphor should be configured away from
`the surface to avoid degradation to produce the phosphor
`gradient of the ’960 patent.
`Nichia also argues that a skilled artisan would not be
`motivated to combine Baretz and JP-959 because Baretz’s
`teachings to avoid “degradation” are insufficient guidance
`and the specific problem which the phosphor gradient
`solved, degradation due to moisture, was not identified in
`the prior art. See Appellant’s Br. 57−59. We disagree.
`Baretz teaches that the phosphor should be deployed
`within the LED assembly in a way that it is “not subject
`to abrasion, or degradation,” and gives several examples
`of the ways in which it can be so deployed. J.A. 19768 col.
`9, l. 51 – col. 10, l. 19. A reasonable jury could conclude
`that an artisan of ordinary creativity would assess the
`phosphor location according to the guidance of Baretz and
`deploy it near the surface of the LED chip according to the
`teachings of JP-959.7
`II. Inequitable Conduct
`We review the district court’s factual findings regard-
`ing inequitable conduct for clear error, and the ultimate
`
`
`7 Nichia also reiterates its arguments regarding the
`jury’s alleged failure to weigh its secondary consideration
`evidence. We reject these arguments for the same reasons
`stated above for the ’960 patent. Because we conclude
`that the jury verdict of invalidity is supported by substan-
`tial evidence, we decline to address Everlight’s argument
`that the term “white light” in claim 2 of the ’960 patent is
`indefinite.
`
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` EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
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`decision as to inequitable conduct for abuse of discretion.
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
`1357, 1365 (Fed. Cir. 2008). “If the district court’s inequi-
`table conduct determination rests on a clearly erroneous
`finding of materiality or intent, it constitutes an abuse of
`discretion and must be reversed.” Am. Calcar, Inc. v. Am.
`Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011).
`Generally, “[t]o prove inequitable conduct, the accused
`infringer must provide evidence that the applicant
`(1) misrepresented or omitted material information, and
`(2) did so with specific intent to deceive the [U.S. Patent
`and Trademark Office].” Id. Intent must be shown by
`clear and convincing evidence, and must be “the single
`most reasonable inference able to be drawn from the
`evidence.” Therasense Inc. v. Becton, Dickinson & Co.,
`649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc).
`Everlight argued before the district court that state-
`ments in the ’960 patent specification submitted to the
`U.S. Patent and Trademark Office (USPTO) that the
`inventors achieved an LED with peak wavelengths “near
`600 nm” were intentionally false. J.A. 60–61. The district
`court held that Everlight had not shown but-for materiali-
`ty because it had not sufficiently questioned the inventors
`to establish a record that their statements to the USPTO
`were actually false. Everlight, 143 F. Supp. 3d at 658−59.
`The district court additionally concluded that Everlight
`had not shown specific intent to deceive the USPTO
`because the single most reasonable inference to be drawn
`from the evidence was that “the inventors should have
`been more careful in keeping a record of this information
`and documenting their findings.” Id. at 662 (emphasis in
`original).
`We see no reversible error in the district court’s find-
`ing that a mere showing that documents should have been
`submitted to the USPTO but have been lost, without a
`showing of additional facts probative of intent to deceive,
`does not rise to the level of specific intent under this
`
`NICHIA EX2024
`
`

`

`EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
`
`15
`
`court’s precedent. See Therasense., 649 F.3d at 1290 (“In
`a case involving nondisclosure of information, clear and
`convincing evidence must show that the applicant made a
`deliberate decision to withhold a known material refer-
`ence.”) (emphasis in original). Because we agree that the
`requisite showing of specific intent is lacking, we need not
`reach the issue of but-for materiality. See id. (“To prevail
`on a claim of inequitable conduct, the accused infringer
`must prove that the patentee acted with the specific
`intent to deceive the PTO.”).
`CONCLUSION
`We have considered all of the parties’ other argu-
`ments and find them unconvincing. For the foregoing
`reasons, the opinion of the district court is
`AFFIRMED
`COSTS
`
`No costs.
`
`NICHIA EX2024
`
`