Case: 16-1585 Document: 52-1 Page: 1 Filed: 04/28/2017
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`NOTICE OF ENTRY OF
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 04/28/2017
`
` The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
` Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered by the Clerk's Office.
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`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`16-1585, 16-1618 - Nichia Corporation v. Everlight Americas, Inc.
`United States District Court for the Eastern District of Texas, Case No. 2:13-cv-00702-JRG
`
`NICHIA EXHIBIT 2036
`Vizio, Inc. v. Nichia Corp.
`Case IPR2018-00437
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`NICHIA CORPORATION,
`Plaintiff-Appellant
`
`v.
`
`EVERLIGHT AMERICAS, INC., EVERLIGHT
`ELECTRONICS CO., LTD.,
`Defendants-Cross-Appellants
`
`ZENARO LIGHTING, INC.,
`Defendant
`______________________
`
`2016-1585, 2016-1618
`______________________
`
`Appeals from the United States District Court for the
`Eastern District of Texas in No. 2:13-cv-00702-JRG,
`Judge J. Rodney Gilstrap.
`______________________
`
`Decided: April 28, 2017
`______________________
`
`
`ROBERT P. PARKER, Rothwell, Figg, Ernst & Manbeck,
`P.C., Washington, DC, argued for plaintiff-appellant. Also
`represented by MARTIN MOSS ZOLTICK, MICHAEL JONES,
`DANIEL MCCALLUM, STEVEN PAUL WEIHROUCH.
`
`JERRY ROBIN SELINGER, Patterson & Sheridan LLP,
`Dallas, TX, argued for defendants-cross-appellants. Also
`represented by JAYME PARTRIDGE, BARDEN TODD
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` NICHIA CORPORATION v. EVERLIGHT AMERICAS, INC.
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`PATTERSON, Houston, TX; ERIC W. BENISEK, JEFFREY T.
`LINDGREN, ROBERT MCARTHUR, STEPHEN C. STEINBERG,
`RICHARD C. VASQUEZ, Vasquez Benisek & Lindgren, LLP,
`Lafayette, CA.
`
`______________________
`
`Before REYNA, HUGHES, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`Nichia Corporation sued Everlight Electronics Co.,
`LTD., Everlight Americas, INC., and Zenaro Lighting,
`Inc. (collectively, “Everlight”) for infringement of three of
`its patents. Following a bench trial, the district court
`found Everlight infringed all three patents and had not
`proved them invalid. The court denied, however, Nichia’s
`request for a permanent injunction against Everlight.
`Nichia appeals the district court’s refusal to enter an
`injunction against Everlight. Everlight cross-appeals the
`court’s judgment that it infringes Nichia’s patents and
`that it failed to prove the patents invalid. We affirm.
`BACKGROUND
`I.
`Nichia Corporation is an LED company that manufac-
`tures and supplies LEDs in markets around the world.
`Nichia Corp. v. Everlight Elecs. Co., No. 02:13-CV-702,
`2016 WL 310142, at *1 (E.D. Tex. Jan. 25, 2016)
`(“Nichia”). Both parties agree that “Nichia is the world’s
`largest supplier of LEDs.” J.A. 2113, ¶ 154. It sells LEDs
`in America through its subsidiary Nichia America Corp.
`Nichia also researches and develops LED technology,
`including the technology disclosed in the three patents
`Nichia asserted in this case.
`Everlight buys chips from suppliers and packages
`them into LEDs. Nichia, 2016 WL 310142, at *1. It sells
`LEDs in the U.S. directly to customers and through its
`subsidiaries. Id.
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`II.
`Nichia accused Everlight of infringing three of
`Nichia’s patents, U.S. Patent Nos. 8,530,250, 7,432,589,
`and 7,462,870. All three disclose package designs and
`methods of manufacturing LED devices. All three patents
`use a shared set of vocabulary known in the art, as shown
`below on a common configuration of an LED:
`
`Id. at *4; J.A. 11. The court explained that this LED
`includes the following parts:
`(i) the “leads,” which are used to conduct the elec-
`trical current to the LED chip; (ii) the “resin hous-
`ing,” which is made out of a reflective resin and
`includes a recess in which the LED chip is placed;
`(iii) the “LED chip” or “LED die” (about the size of
`a grain of salt), which is mounted in the recess
`typically by using an adhesive material in a pro-
`cess known as die bonding; (iv) one or more “bond
`wires” that connect the LED chip to the leads; and
`(v) an “encapsulation material” that encapsulates
`the LED chip and protects it from the environ-
`ment.
`Nichia, 2016 WL 310142, at *4.
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` NICHIA CORPORATION v. EVERLIGHT AMERICAS, INC.
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`The LEDs in suit are miniscule; they are typically
`smaller than 1 millimeter in height. Id. They are used in
`LCD backlights, video displays, automotive applications,
`and general lighting applications. Id.
`The court found that LED design technology is a com-
`plex technological space, where many design considera-
`tions pull in different directions simultaneously. It found
`that “LED package design involves the simultaneous
`integration and balancing of multiple design considera-
`tions, including electrical, optical, thermal, and mechani-
`cal design challenges.” Id. The court emphasized that:
`[m]ultiple challenges must be addressed when de-
`signing an LED package: (i) electrical design chal-
`lenges: We have to conduct a relatively high-
`current density through the small LED chip and
`connect the LED chip to the leads; (ii) optical de-
`sign challenges: The intensities are very high, be-
`cause the LED chip is very small and the power
`emitted by the LED is quite high. And, therefore,
`we need to handle a very high-optical radiation
`density; (iii) thermal design challenges: The LED
`chip inevitably creates heat, and this heat needs
`to be conducted away; and (iv) mechanical design
`challenges: includes protecting the LED chip from
`any external effect, such as moisture or mechani-
`cal intrusion. These multiple requirements can
`be contradictory and can pull the design in differ-
`ent directions.
`Id. (internal emphases, citations, and quotations omitted).
`The district court held a bench trial and found that
`Everlight infringed all three patents and had failed to
`prove by clear and convincing evidence that the asserted
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`claims of the three patents are invalid.1 Id. at *1. De-
`spite finding the patents valid and infringed, the court
`refused Nichia’s request for prospective relief in the form
`of a permanent injunction. Id. The court explained that
`“Nichia has not demonstrated that Defendants’ past and
`continuing infringement of Nichia’s Patents has caused,
`and will continue to cause, irreparable harm to Nichia.”
`Id. It also reasoned that monetary damages could ade-
`quately compensate Nichia for Everlight’s infringement.
`The court thus concluded that Nichia was not entitled to
`injunctive relief. Id.
`Nichia timely appealed, and Everlight cross-appealed.
`Nichia appeals the district court’s refusal to grant the
`injunction. Everlight cross-appeals the district court’s
`judgment that Everlight infringes and that it failed to
`prove the patents invalid with respect to all of the assert-
`ed claims of Nichia’s three asserted patents. We have
`jurisdiction under 28 U.S.C. § 1292(c)(2).
`DISCUSSION
`I.
`We begin with Everlight’s appeal of the district court’s
`finding that Everlight infringed the asserted claims of
`Nichia’s three patents and its conclusion that Everlight
`failed to prove those claims invalid by clear and convinc-
`ing evidence.
`We review the court’s findings of fact for clear error
`and its legal conclusions de novo. Allergan, Inc. v. Apotex
`Inc., 754 F.3d 952, 961 (Fed. Cir. 2014). “A finding is
`
`1 The district court’s opinion contains a thorough
`background of this case and explanation of LED manufac-
`turing technology. See Nichia, 2016 WL 310142. This
`opinion includes an abbreviated recitation of the facts
`relevant to our disposition.
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`‘clearly erroneous’ when although there is evidence to
`support it, the reviewing court on the entire evidence is
`left with the definite and firm conviction that a mistake
`has been committed.” United States v. U.S. Gypsum Co.,
`333 U.S. 364, 395 (1948). “Where the district court’s
`claim construction relies only on intrinsic evidence, the
`construction is a legal determination reviewed de novo.”
`Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC,
`824 F.3d 999, 1002 (Fed. Cir. 2016) (citing Teva Pharm.
`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)).
`Infringement is a question of fact. Golden Blount, Inc. v.
`Robert H. Peterson Co., 438 F.3d 1354, 1361 (Fed. Cir.
`2006). “Obviousness is a question of law based on under-
`lying questions of fact.” Daiichi Sankyo Co. v. Apotex,
`Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`A.
`We begin with the ’250 patent. The district court
`found claims 1, 7, 17, 19, and 21 of the patent infringed
`and not proven invalid. Everlight first challenges the
`court’s construction of the claim term “lead” and its find-
`ing of infringement under its proposed construction.
`Second, it challenges the court’s construction of “planar”
`and the court’s finding of infringement under either its
`proposed construction or the court’s. Finally, Everlight
`challenges the court’s conclusion that it failed to prove the
`patent obvious.
`
`1.
`The ’250 patent is directed to a process for manufac-
`turing LEDs that purportedly improves production effi-
`ciency. The patent describes making a continuous sheet
`of LEDs and separating, or “singulating,” them to make
`the final product. ’250 patent col. 2 ll. 49–53. During
`singulation, LEDs often break. So to reduce breakage,
`the patent suggests manufacturing LEDs by fitting a lead
`frame between an upper and lower mold, filling the molds
`with resin, and then singulating the LEDs. This, the
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`patent suggests, is a “simple and low-cost method for
`manufacturing, in a short time, multiple light emitting
`devices which ha[ve] high adhesion between a lead frame
`and a thermosetting resin composition.” Id. The district
`court noted that, “[b]etween 2010 and 2013, Nichia’s sales
`of the products that practice the ’250 patent increased
`from three percent of Nichia’s total sales volume, to 27
`percent.” Nichia, 2016 WL 310142, at *24. The court also
`explained that, “[i]n 2013, Nichia sold over 13.9 billion
`units, with revenues of $1.7 billion.” Id.
`The ’250 patent’s first claim is reproduced below:
`1. A method of manufacturing a light emitting de-
`vice, the method comprising:
`providing a lead frame comprising at least one
`notch;
`plating the lead frame;
`after plating the lead frame, providing an up-
`per mold on a first surface of the plated lead
`frame and a lower mold on a second surface of
`the plated lead frame, and transfer-molding a
`thermosetting resin containing a light reflect-
`ing 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 cut-
`ting 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,
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`wherein the plated lead frame is cut so as to
`form an unplated outer side surface on the
`lead.
`’250 patent col. 19 ll. 37–55.
`2.
`Everlight argues that the court misconstrued the term
`“lead” when it interpreted “lead” to mean “the portion of
`the device that conducts electricity.” J.A. 10054–55.
`Everlight contends that a lead must be more than simply
`conductive, it must be “the conductive portion of the
`device that makes an electrical connection to a structure
`outside of the device.” J.A. 10054 (originally proposing
`this construction). The district court rejected Everlight’s
`request to add a requirement that the lead electrically
`connect to a structure outside of the device because, while
`the court “generally agree[d] with the conductive portion
`of [Everlight’s] construction,” it found “the remaining
`language problematic and not as concise as the Court’s
`construction.” J.A. 10056.
`We agree with the district court that a lead, as em-
`ployed in the asserted claims of the ’250 patent, is “the
`portion of the device that conducts electricity.” The
`specification discloses leads 22 in Figure 1:
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`’250 patent, Fig. 1. The specification explains that “[t]he
`light emitting element 10 is electrically connected with
`the leads 22 through wires 50.” Id. at col. 6 ll. 20–21. It
`explains that the lead frame “is formed using an electrical
`[sic] good conductor such as iron, phosphor bronze or a
`copper alloy.” Id. at col. 9 ll. 21–22. These disclosures
`explain that the claimed leads conduct electricity. But we
`find no compelling support in the intrinsic evidence for
`Everlight’s proposed requirement that the leads conduct
`electricity from outside the device. We thus agree with
`the district court that the person of ordinary skill would
`understand a lead to be “the portion of the device that
`conducts electricity.”
`Because we agree with the court’s construction, and
`because Everlight does not challenge the court’s finding of
`infringement under that construction, we affirm the
`court’s finding that the accused products meet this limita-
`tion.
`
`3.
`We next turn to Everlight’s contention that the dis-
`trict court misconstrued “planar” when it interpreted the
`term “planar” as “in a substantially same plane.”
`J.A. 10069. The ’250 patent’s claims require that “at least
`one lead [be] planar at an outer side surface of the resin
`package.”
`Everlight argues that “planar” means that there is “no
`measurable surface variation.” J.A. 10068. Everlight
`asserts that this construction is mandated by the specifi-
`cation’s distinction between “planar” and “in the same
`plane.” Everlight Br. 23. Namely, the patent uses “in a
`substantially same plane” in the specification but “planar”
`in the claims. The specification states that “a resin part
`and a lead are formed in a substantially same plane in an
`outer side surface.” ’250 patent col. 2 l. 63 – col. 3 l. 1.
`The claims, however, recite “an outer surface of the resin
`part and an outer surface of the at least one lead are
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`planar at an outer side surface.” Id. at col. 19 ll. 50–52
`(claim 1) (emphasis added). Everlight argues that the
`patent owner’s choice to use “in a substantially same
`plane” in the specification but “planar” in the claims
`mandates that we treat the two terms differently.
`We disagree. First, Everlight’s argument implies a
`rule that we decline to adopt here, namely, that if differ-
`ent words are used in the claim and specification, then we
`must read that distinction as an intended difference. We
`recognize that, in some patents, a distinction between
`terms may imply a difference in meaning, but this is no
`hard-and-fast rule. Rather, some inventors might use one
`term in the specification to inform the meaning of another
`term in the claims. See SAS Inst., Inc. v. Complemen-
`tSoft, LLC., 825 F.3d 1341, 1348 (Fed. Cir. 2016). For one
`word to inform the meaning of another, the words need
`not be identical. See id. For example, in SAS Institute,
`we held that the term “graphical representation of a data
`flow” in the claims and the term “data flow diagram” in
`the specification were commensurate in scope. Id. So too
`here. Reading the claims in light of the specification, we
`conclude that the claimed term “planar” is commensurate
`in scope with the specification’s discussion of “in a sub-
`stantially same plane.” We therefore agree with the
`court’s conclusion that “planar” means “in a substantially
`same plane.”
`Because we agree with the court’s construction, we
`next consider Everlight’s argument that it does not in-
`fringe even under that construction. Everlight Br. 23.
`Everlight argues that “the outer side surfaces of the three
`package groups are not ‘planar’ because each of the outer
`side surfaces of the LED packages has a significant con-
`cave portion.” Id. at 23–24 (citing J.A. 10347–57). Ever-
`light presents three cross-sectional views of the alleged
`infringing devices, each showing two leads with flat
`sections connected by slight concavities.
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`We find Everlight’s argument unconvincing. Under
`the correct construction, the leads need not be perfectly
`flat; they need only be “in a substantially same plane” as
`the outer surface of the resin. The leads here are “in a
`substantially same plane” as the outer surface of the
`resin; slight concavities do not mandate a finding other-
`wise. We thus see no clear error in the court’s finding
`that Everlight’s accused products infringe the “planar”
`limitation.2
`
`4.
`Everlight also argues it proved the ’250 patent invalid
`for obviousness, despite the district court’s holding other-
`wise. Specifically, Everlight asserts that the patent is
`rendered obvious by “Hitachi,” Japanese Patent Pub.
`Tokukai No. 2007-235085, in combination with “Sanyo,”
`Japanese Patent Pub. Tokukaihei 2011-191562, or
`“Glenn,” U.S. Patent No. 6,433,277.
`Hitachi discloses a method for producing a semicon-
`ductor device on a circuit board or lead frame. Nichia,
`2016 WL 310142, at *8. The district court found that
`Hitachi failed to disclose several elements of the ’250
`patent’s claims. Claim 1 requires a “notch” and “cutting
`the resin-molded body and the plated lead frame along
`the at least one notch to form a resin package,” ’250
`patent col. 19 ll. 47–48 (claim 1), neither of which Hitachi
`discloses. Nichia, 2016 WL 310142, at *17. These find-
`ings are supported by expert testimony, J.A. 20797–98
`(Schubert), and by Hitachi itself, J.A. 10249 (Fig. 6,
`showing dicing lines, 20). Indeed, Hitachi is criticized in
`
`
`2 Everlight also argues that the district court
`wrongly found it infringed claims 1 and 7 under § 271(g).
`Because Everlight’s products directly infringe claims of
`the ’250 patent under § 271(a), we do not reach whether
`Everlight also infringed claims under § 271(g).
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`the ’250 patent’s specification for having a design that
`results in detachment of the packaging resin from the
`lead frame during singulation. See ’250 patent col. 2
`ll. 18–19, 30–35 and Fig. 19(a) (reproduced from Hitachi).
`The ’250 patent solves this problem by providing a manu-
`facturing method and LED device in which the lead frame
`has “notch[es]” and “the thermosetting resin is filled in
`the notch parts, and therefore an adhering area between
`the lead frame and the thermosetting resin becomes large,
`so that it is possible to improve adhesion.” Id. at col. 3
`ll. 8–12. We thus conclude that, despite Everlight’s
`arguments to the contrary, these findings are not clearly
`erroneous.
`Everlight argues that it would have been obvious to
`combine Hitachi with Glenn and Sanyo to achieve the
`claimed invention. Glenn discloses a method of making
`packages for integrated circuit dies. Nichia, 2016 WL
`310142, at *19. Sanyo is directed to a method for produc-
`ing a semiconductor device. Id.
`The court found that a person of ordinary skill would
`not have considered Glenn or Sanyo to modify Hitachi
`because “the different considerations in the design and
`manufacture of electronic and optoelectronic [e.g., LED]
`devices result in substantial differences in the manufac-
`turing processes and materials used in the different
`technologies,” and “a change in the design or manufacture
`of an LED or other optoelectronic device requires the
`consideration of factors—including factors such as light
`emission, and the effects of heat and emitted radiation on
`different resins and other materials—that are not rele-
`vant to the design and manufacture of electronic semicon-
`ductor devices.” Id. at *21.
`These findings are supported by expert testimony, in-
`cluding Everlight’s expert’s admission that electronic
`device technology is not particularly relevant to LED
`technology. J.A. 20543–44. Because the weight of the
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`evidence supports the court’s finding that there was no
`motivation to combine these references, we affirm the
`court’s conclusion that Everlight failed to prove that the
`’250 patent would have been obvious.
`B.
`We next examine the ’870 patent. Again, Everlight
`challenges the district court’s determination that it in-
`fringes and that it did not prove the patent obvious.
`1.
`The ’870 patent discloses an LED design that pur-
`portedly minimizes structural problems caused by compo-
`nents expanding and contracting at different rates during
`thermal cycling. ’870 patent col. 1 ll. 38–49. The design
`is a molded package with “a specific feature, a wall por-
`tion,” that separates the positive and negative leads.
`Nichia, 2016 WL 310142, at *36 (internal quotation
`omitted). “[T]his wall portion improves structural integri-
`ty, particularly if the device is subject to temperature
`variations so that package cracking, detachment of the
`encapsulation material, and warping of the package is
`reduced or avoided.” Id. (internal quotation omitted).
`The package also includes a semiconductor, such as a
`light emitting semiconductor. Claim 7 is reproduced
`below:
`7. A light emitting device comprising:
`a light emitting element;
`a molded member having a recess formed
`therein by a bottom surface and a side surface
`so as to mount said light emitting element in
`substantially a center of the recess;
`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;
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`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;
`means for electrically connecting said light
`emitting element to said positive lead elec-
`trode, and said light emitting element to said
`negative lead electrode;
`wherein a portion of said positive lead elec-
`trode and a portion of said negative lead elec-
`trode in the recess are separated from each
`other by a wall portion; wherein said wall por-
`tion extends inwardly in a direction toward
`the center of the recess.
`’870 patent col. 35 ll. 22–42.
`2.
`Everlight argues that its products do not meet the
`’870 patent’s requirement that its positive and negative
`lead electrodes are “partially disposed” on the bottom
`surface of a recess. Specifically, Everlight claims that the
`court wrongly defined the “bottom” of the recess in its
`products. The recess’s bottom, it argues, extends to the
`uppermost extension of resin. This bottom is a flat line.
`Everlight does not dispute, however, that shallow gaps in
`the resin expose the leads.
`The court repeatedly rejected Everlight’s position and
`found the disputed element met. Nichia, 2016 WL
`310142, at *39–48. In reaching this conclusion, the court
`repeatedly credited Nichia’s expert. See, e.g., id. at *30.
`We discern no clear error in the court’s conclusion. But
`even more, we find Everlight’s position belied by the
`patent itself. The ’870 patent discloses several embodi-
`ments where the bottom of the recess is multi-featured.
`See, e.g., ’870 patent Figs. 1, 6, 11. Despite Everlight’s
`claim to the contrary, the recess is not flat. See id. The
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`bottom of the recess, then, is also not flat. Everlight’s
`straight-line recess oversimplifies the analysis—the
`recess need not be perfectly flat. In turn, the court cor-
`rectly concluded that Everlight’s products infringe where
`the leads are exposed through gaps in the resin. Ever-
`light’s products include these gaps, and thus the district
`court properly concluded that the products meet this
`claim limitation. As Everlight brings no other challenge
`on this issue, we affirm the district court as to Everlight’s
`infringement of the ’870 patent.
`3.
`Everlight also challenges the court’s conclusion that it
`failed to prove the ’870 patent invalid. Everlight had
`asserted that the ordinary artisan would have combined
`“Waitl,” U.S. Patent No. 6,624,491, and “Nitta,” U.S.
`Patent No. 6,747,293, to render the ’870 patent claims
`obvious. Everlight first challenges the court’s conclusion
`that Waitl does not disclose all of the claim elements. It
`second challenges the court’s conclusion that the artisan
`would not have looked to Nitta to remedy Waitl’s deficien-
`cies.
`Waitl notes that separation can result when different
`materials expand at different rates, so it teaches designs
`to help minimize separation. Nichia, 2016 WL 310142, at
`*49. Entitled “diode housing,” Waitl “is directed to prob-
`lems in the operation of a device stemming from delami-
`nation—a situation in which the ‘window’ encapsulant
`material separates from the metal frame of the device.”
`Id.
`Waitl’s device includes a lead electrode with a single
`exposed area, id., but the claims require the lead elec-
`trode to have two exposed portions, one positive and one
`negative, separated by a wall. The court found that Waitl
`failed to disclose elements related to these positive and
`negative electrodes as claimed in the ’870 patent. Ever-
`light does not challenge the court’s reading of Waitl.
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`Everlight instead argues that a person of ordinary
`skill in the art would have been motivated to modify Waitl
`in light of Nitta to achieve the claimed invention. Nitta
`appears to disclose a wall between two electrodes, as it is
`directed to a light emitting device with a “plurality of
`chips efficiently disposed” in a housing with a “lead hav-
`ing a slit formed between a portion for bonding a wire to
`and a portion for mounting chips on, thereby to prevent
`extrusion of an adhesive and eliminate defective bonding.”
`Id. at *50 (quoting Nitta, Abstract).
`But the court found that a person of ordinary skill in
`the art would have had no motivation to modify Nitta in
`light of Waitl. We agree. The court found that the refer-
`ences disclose different structures, resolve dissimilar
`problems, and propose dissimilar solutions. Id. at *51–53.
`The court’s conclusion derives further support from its
`earlier finding that artisans in this field face myriad
`design challenges because small design changes may
`cause unpredictable results and because design considera-
`tions often pull in multiple directions. Id. at *4. We
`determine that the court’s finding on motivation to com-
`bine is not clearly erroneous. We thus affirm the district
`court’s conclusion that Everlight failed to prove the ’870
`patent invalid as obvious.
`
`C.
`We now reach the ’589 patent, the third and final pa-
`tent Nichia asserted against Everlight. The court found
`Everlight infringed claims 1 and 2 of the ’589 patent and
`that Everlight had failed to prove the patent invalid.
`Everlight again appeals the court’s holdings on infringe-
`ment and validity.
`
`1.
`The ’589 patent is also directed to the design of a sem-
`iconductor device. The disclosed design seeks to prevent
`adhesive from overflowing into other areas of the device.
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`Specifically, the ’589 patent states that “an object of the
`present invention is to provide a semiconductor device
`wherein the adhesive components do not overflow nor
`leak to the wire bonding area even when . . . adhesive
`components having low surface tension [are] used in the
`adhesive layer for die bonding, and the overflow and leak
`preventing function can be maintained satisfactorily even
`when
`the device
`is made smaller and
`thinner.”
`’589 patent col. 2 ll. 60–67. Claim 1 of the ’589 patent
`requires the following:
`1. A semiconductor device comprising:
`a semiconductor element having a pair of elec-
`trodes;
`a housing having a recess for accommodating
`the semiconductor element;
`a first lead electrode and a second lead elec-
`trode exposed on the bottom surface of said re-
`cess;
`an adhesive layer for die bonding between the
`semiconductor element and the first lead elec-
`trode; 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
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`the first lead electrode and located at least
`just below the wall; and
`the wall and the bottom portion of said hous-
`ing are connected to each other through the
`notch.
`Id. at col. 15 l. 59 – col. 16 l. 13.
`2.
`Everlight challenges the court’s finding that it in-
`fringes the ’589 patent with the same arguments that it
`made against its infringement of the ’870 patent. Ever-
`light Br. 32–33. For the same reasons we affirmed the
`court’s infringement finding with respect to the ’870
`patent, we affirm its finding of infringement with respect
`to the ’589 patent. See, supra, Discussion B.2.
`3.
`Everlight also challenges the court’s conclusion that it
`did not prove the ’589 patent invalid by asserting that it
`would have been obvious