Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 1 of 181
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`HANSON BRIDGETT LLP
`RUSSELL C. PETERSEN (SBN 264245)
`russ.petersen@hansonbridgett.com
`425 Market Street, 26th Floor
`San Francisco, California 94105
`Telephone:
`(415) 777-3200
`Facsimile:
`(415) 541-9366
`
`CHEN MALIN LLP
`LI CHEN (admitted pro hac vice)
`lchen@chenmalin.com
`STEVEN MALIN (admitted pro hac vice)
`smalin@chenmalin.com
`KRISTOFFER LEFTWICH (admitted pro hac vice)
`kleftwich@chenmalin.com
`1700 Pacific Avenue, Suite 2400
`Dallas, TX 75201
`Telephone:
`(214) 627-9950
`Facsimile:
`(214) 627-9940
`
`Attorneys for Plaintiff
`EVERLIGHT ELECTRONICS CO., LTD.
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA, OAKLAND DIVISION
`
`EVERLIGHT ELECTRONICS CO., LTD.,
` Case Number: 4:17-cv-3363-JSW
`
`
`PUBLIC REDACTED VERSION
`Plaintiff,
`
`
`EVERLIGHT ELECTRONICS CO.’S
`v.
`SECOND AMENDED COMPLAINT FOR
`
`PATENT INFRINGEMENT
`BRIDGELUX, INC.,
`
`
`DEMAND FOR JURY TRIAL
`Defendant.
`
`
`
`Judge: Hon. Jeffrey S. White
`Courtroom 5
`Dept.:
`
`
`
`
`
`June 10, 2017
`
`Complaint Filed:
`Am. Answer/Countercl. Filed: July 31, 2017
`
`
`BRIDGELUX, INC.,
`
`Counterclaim Plaintiff,
`
`v.
`
`EVERLIGHT ELECTRONICS CO., LTD.
`and EVERLIGHT AMERICAS, INC.,
`
`Counterclaim Defendants.
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 2 of 181
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`Plaintiff Everlight Electronics Co., Ltd. (“Everlight”), for its Second Amended Complaint for
`Patent Infringement against Defendant Bridgelux, Inc. (“Bridgelux”), alleges as follows:
`I.
`INTRODUCTION
`1.
`Everlight brings this patent infringement action to protect its investment in valuable
`patented technology relating to light-emitting diodes (LEDs) and LED lighting. An LED is a
`semiconductor device that converts electrical energy into light. LEDs have many advantages over
`conventional light sources, including lower energy consumption, longer lifetime, and smaller size.
`2.
`Everlight was founded by Robert Yeh in 1983, and by 2006, Everlight had become
`Taiwan’s largest manufacturer of LEDs. Everlight remains one of the world’s leading manufacturers
`in the field of optoelectronics, providing lighting solutions for various applications and industries,
`such as the computer, general lighting, and automotive industries. Everlight holds crucial patents
`covering core and supporting technologies for the manufacture and design of LED devices.
`II.
`PARTIES
`3.
`Plaintiff Everlight is a Taiwanese company with its principal place of business at No.6-
`8, Zhonghua Rd., Shulin Dist., New Taipei City 23860, Taiwan.
`4.
`On information and belief, Defendant Bridgelux is a company organized and existing
`under the laws of the State of Delaware, with its headquarters and principal place of business at 46430
`Fremont Boulevard, Fremont, CA 94538.
`III.
`JURISDICTION
`5.
`This is an action for patent infringement, under the patent laws of the United States,
`35 U.S.C. § 271 et seq. This Court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
`6.
`This Court has personal jurisdiction over Bridgelux. On information and belief,
`Bridgelux has its headquarters and principal place of business within the State of California and within
`this District. On information and belief, a substantial part of the events giving rise to Everlight’s
`claims against Bridgelux, including acts of patent infringement, have occurred in the State of
`California and this District, including manufacturing, selling, offering for sale, and/or importing
`infringing LED products within the State of California and this District. On information and belief,
`Bridgelux is engaged in substantial and continuous contacts with the State of California and this
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 3 of 181
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`District. On information and belief, Bridgelux is registered with the Secretary of State for the State
`of California as Entity No. C3100854 to transact and conduct business within the State of California.
`On information and belief, Bridgelux transacts and does business within the State of California and
`this District. On information and belief, Bridgelux’s website at https://www.bridgelux.com/where-
`buy directs potential customers to contact the Bridgelux headquarters at 46430 Fremont Blvd,
`Fremont, CA 94538, Tel: 925-583-8400, Sales Support: 925-583-8452, for “more information about
`where to buy our products, and for fixture manufacturers that use our products.” On information and
`belief, Bridgelux also places, or causes to have placed, infringing products into the stream of
`commerce, and directs potential customers to outlets for the purchase of those products, including by
`way of its website, https://www.bridgelux.com/where-buy, with the knowledge that such products
`will be made, imported, sold, offered for sale, and/or used in the State of California and this District.
`As such, Bridgelux has purposefully availed itself of the privilege of conducting business within the
`State of California; has established sufficient minimum contacts with the State of California such that
`it should reasonably and fairly anticipate being haled into court in the State of California; has
`purposefully directed activities at residents of the State of California; and at least a portion of the
`patent infringement claims alleged herein arise out of or are related to one or more of the foregoing
`activities.
`
`IV. VENUE
`7.
`Venue is proper within this judicial district under 28 U.S.C. §§ 1391(b) and 1400(b).
`On information and belief, Bridgelux has a regular and established place of business within this
`District at 46430 Fremont Blvd, Fremont, CA 94538 and has committed acts of patent infringement
`within this District, including manufacturing, selling, offering for sale, and/or importing infringing
`LED products. For example, Bridgelux’s website at https://www.bridgelux.com/where-buy directs
`potential customers to contact the Bridgelux headquarters at 46430 Fremont Blvd, Fremont, CA
`94538, Tel: 925-583-8400, Sales Support: 925-583-8452, for “more information about where to buy
`our products, and for fixture manufacturers that use our products.”
`V.
`INTRADISTRICT ASSIGNMENT
`This is an intellectual property case, and therefore shall be assigned on a district-wide
`
`8.
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 4 of 181
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`basis pursuant to Civil L.R. 3-2(c). This case has been assigned to Hon. Jeffrey S. White in the
`Oakland Division.
`
`VI.
`PATENTS-IN-SUIT
`9.
`On January 1, 2002, the United States Patent and Trademark Office (USPTO) duly
`and legally issued U.S. Patent No. 6,335,548 (“the ’548 Patent”), entitled “Semiconductor Radiation
`Emitter Package,” to John K. Roberts, et al. Everlight is the owner of all right, title, and interest in
`and to the ’548 Patent, including the right to sue for past damages. A true and correct copy of the
`’548 Patent is attached hereto as Exhibit I.
`10.
`On August 7, 2007, the USPTO duly and legally issued U.S. Patent No. 7,253,448
`(“the ’448 Patent”), entitled “Semiconductor Radiation Emitter Package,” to John K. Roberts, et al.
`Everlight is the owner of all right, title, and interest in and to the ’448 Patent, including the right to
`sue for past damages. A true and correct copy of the ’448 Patent is attached hereto as Exhibit J.
`11.
`Upon issuance, both the ’548 Patent and the ’448 Patent were assigned to Gentex
`Corporation (“Gentex”). Gentex assigned to Everlight all rights, title and interest, including the right
`to past damages, in and to the ’548 Patent and the ’448 Patent.
`VII. COUNT 1 – INFRINGEMENT OF THE ’548 PATENT
`12.
`Everlight re-alleges and incorporates the allegations set forth in the paragraphs above
`as if fully set forth herein.
`13.
`On information and belief, Bridgelux has infringed, and continues to infringe, one or
`more claims of the ’548 Patent pursuant to 35 U.S.C. § 271(a) by, without authority, importing into
`the United States and/or making, selling, offering to sell, and/or using within the United States
`packaged LED products falling within the scope of the claims of the ’548 Patent, either literally or by
`equivalents.
`14.
`By way of example, on information and belief, the Bridgelux 2835 series of packaged
`LEDs, including but not limited to the SMD 2835 0.2W 3V, SMD 2835 0.5W 3V, SMD 2835 1W
`9V Gen2, Gen2 SMD2835 0.2W 3V HE, SMD 2835 0.2W 3V Gen 2, and SMD 2835 1W 12V
`(collectively, the “Bridgelux 2835 LEDs”), comprise, either literally or by equivalents, each of the
`elements recited in claim 1 of the ’548 Patent.
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 5 of 181
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`15.
`Claim 1 of the ’548 Patent recites:
`A semiconductor radiation emitter package comprising:
`a heat extraction member having a low thermal resistance;
`at least one semiconductor radiation emitter in thermal contact with the heat extraction
`member, said at least one semiconductor radiation emitter having an anode and a
`cathode for energizing the semiconductor radiation emitter;
`at least one anodic electrical lead coupled to an anode of at least one of said semiconductor
`radiation emitters, said at least one anodic electrical lead having a high thermal
`resistance;
`at least one cathodic electrical lead coupled to a cathode of at least one of said
`semiconductor radiation emitters, said at least one cathodic electrical lead having a
`high thermal resistance; and
`an encapsulant substantially transparent to radiation from said at least one semiconductor
`radiation emitter, the encapsulant formed to cover each semiconductor radiation
`emitter, a portion of said at least one anodic electrical lead, a portion of each cathodic
`electrical lead, and a portion of the heat extraction member.
`16.
`On information and belief, each of the Bridgelux 2835 LEDs comprise a
`semiconductor radiation emitter package. Each is a packaged LED product comprising an LED chip,
`and an LED chip is a semiconductor device that emits light, which is optical radiation.
`17.
`On information and belief, each of the Bridgelux 2835 LEDs comprise a heat
`extraction member to withdraw heat from the packaged LED chip.
`18.
`On information and belief, the heat extraction component in each of the Bridgelux
`2835 LEDs has a low thermal resistance. The passage at column 10, line 43 through column 11, line
`5 of the ’548 Patent discusses how to achieve a low thermal resistance in a heat extraction member.
`Among other options, it advises “[c]onstruction with substantially high thermal conductivity material
`such as copper, copper alloys such as beryllium copper, aluminum, soft steel, or other metal” and
`“[c]onstruction with a substantially high cross-sectional area in one or more directions leading away
`from the surface region where the semiconductor optical emitter is attached” and “[c]onstruction with
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 6 of 181
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`a relatively short path length in one or more direction[s] from the surface region where the
`semiconductor optical emitter is attached to the ambient environment or adjacent structures.” On
`information and belief, the heat extraction member in each of the Bridgelux 2835 LEDs is made of
`metal having a high thermal conductivity. On information and belief, in each of the Bridgelux 2835
`LEDs, the cross-sectional area of the heat extraction member in the direction leading from the LED
`chip to the bottom surface of the heat extraction member is higher than the cross-sectional area of the
`electrical leads in the direction leading from the LED chip to the edges or solder points of the LED
`package. On information and belief, in each of the Bridgelux 2835 LEDs, the path length from the
`LED chip to the bottom surface of the heat extraction member is shorter than the path length along
`the electrical leads from the LED chip to the edges or solder points of the LED package.
`19.
`On information and belief, each of the Bridgelux 2835 LEDs comprises at least one
`semiconductor radiation emitter in thermal contact with the heat extraction member, said at least one
`semiconductor radiation emitter having an anode and a cathode for energizing the semiconductor
`radiation emitter. In particular, each of the Bridgelux 2835 LEDs comprises an LED chip having an
`anode and a cathode for energizing the LED to emit light. On information and belief, in each of the
`Bridgelux 2835 LEDs, the LED chip is mounted on the top surface of the heat extraction member.
`20.
`On information and belief, each of the Bridgelux 2835 LEDs comprises at least one
`anodic electrical lead coupled to an anode of at least one of said semiconductor radiation emitters. In
`particular, on information and belief, each of the Bridgelux 2835 LEDs comprises an anodic electrical
`lead wire bonded to the anode of an LED chip.
`21.
`On information and belief, the anodic electrical lead in each of the Bridgelux 2835
`LEDs has a higher thermal resistance than the heat extraction member. The passage at column 4,
`lines 45 through 61 of the ’548 Patent discusses how to achieve an elevated thermal resistance in an
`electrical lead. Among other options, it suggests “increasing the stand-off length of the leads (distance
`between solder contact and the device body)” and “decreasing the cross-sectional area of the leads.”
`On information and belief, in each of the Bridgelux 2835 LEDs, the path length along the electrical
`leads from the LED chip to the edges or solder points of the LED package is longer than the path
`length from the LED chip to the bottom surface of the heat extraction member. On information and
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`belief, in each of the Bridgelux 2835 LEDs, the cross-sectional area of the electrical leads in the
`direction leading from the LED chip to the edges or solder points of the LED package is smaller than
`the cross-sectional area of the heat extraction member in the direction leading from the LED chip to
`the bottom surface of the heat extraction member.
`22.
`On information and belief, each of the Bridgelux 2835 LEDs comprises at least one
`cathodic electrical lead coupled to a cathode of at least one of said semiconductor radiation emitters.
`In particular, on information and belief, each of the Bridgelux 2835 LEDs comprises a cathodic
`electrical lead wire bonded to the cathode of an LED chip.
`23.
`On information and belief, the cathodic electrical lead in each of the Bridgelux 2835
`LEDs has a higher thermal resistance than the heat extraction member. The passage at column 4,
`lines 45 through 61 of the ’548 Patent discusses how to achieve an elevated thermal resistance in an
`electrical lead. Among other options, it suggests “increasing the stand-off length of the leads (distance
`between solder contact and the device body)” and “decreasing the cross-sectional area of the leads.”
`On information and belief, in each of the Bridgelux 2835 LEDs, the path length along the electrical
`leads from the LED chip to the edges or solder points of the LED package is longer than the path
`length from the LED chip to the bottom surface of the heat extraction member. On information and
`belief, in each of the Bridgelux 2835 LEDs, the cross-sectional area of the electrical leads in the
`direction leading from the LED chip to the edges or solder points of the LED package is smaller than
`the cross-sectional area of the heat extraction member in the direction leading from the LED chip to
`the bottom surface of the heat extraction member.
`24.
`On information and belief, each of the Bridgelux 2835 LEDs comprises an encapsulant
`substantially transparent to radiation from said at least one semiconductor radiation emitter. On
`information and belief, each of the Bridgelux 2835 LEDs is a packaged LED product comprising an
`encapsulated LED chip. On information and belief, the LED chip in each of the 2835 LEDs emits
`light that is transmitted through the encapsulant.
`25.
`On information and belief, the encapsulant in each of the Bridgelux 2835 LEDs is
`formed over and covers each LED chip, a portion of said at least one anodic electrical lead, a portion
`of each cathodic electrical lead, and a portion of the heat extraction member.
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`26.
`On information and belief, other packaged LED products imported, made, sold,
`offered for sale, and/or used by Bridgelux infringe claims of the ’548 Patent in a manner similar to
`the Bridgelux 2835 LEDs, as described in the paragraphs above. For example, such products include
`the product lines and part numbers falling within Bridgelux’s 2835, 3030, and 5050 product groups
`identified in Exhibit C to Everlight’s Patent L.R. 3-1 Disclosure of Asserted Claims and Infringement
`Contentions, served on Bridgelux on October 27, 2017. (All such products, including the Bridgelux
`2835 LEDs, are collectively referred to herein as “the ’548 Patent Accused LED Packages.”)
`27.
`On information and belief, Bridgelux has, pursuant to 35 U.S.C. § 271(b), induced,
`and continues to induce, others to infringe one or more claims of the ’548 Patent both before and after
`the filing of the Complaint herein, by, without authority, importing into the United States and/or
`making, selling, offering to sell, and/or using within the United States packaged LED products falling
`within the scope of the claims of the ’548 Patent, either literally or by equivalents. On information
`and belief, Bridgelux has engaged in activity both before and after the filing of the Complaint herein
`designed to support, assist, facilitate, encourage, or otherwise induce companies purchasing the ’548
`Patent Accused LED Packages to import, sell, offer for sale, or use within the United States products
`incorporating the ’548 Patent Accused LED Packages.
`28.
`On information and belief, the great majority of products made or sold by Bridgelux
`infringes one or both of the Everlight Asserted Patents. The infringement contentions that Everlight
`served on Bridgelux contain an accused product list that spans 45 single-spaced pages. See Bridgelux
`Product Catalog 2017-18 attached hereto as Exhibit A at pp. 4-5 (Yellow highlighted portion of table
`identifies Accused Bridgelux Products). On information and belief, Bridgelux is actively promoting,
`marketing and/or selling the Accused Bridgelux Products to U.S. buyers, and encouraging U.S. buyers
`to import, re-sell, and/or use the Accused Bridgelux Products in the U.S. On information and belief,
`Bridgelux is engaged in the foregoing activities with knowledge that any importation, sale or use of
`the Accused Bridgelux Products in the U.S. constitutes infringement of the ‘548 and/or ‘448 patents.
`On information and belief, Bridgelux sells Accused Bridgelux Products into the U.S. through
`companies located in the U.S., such as Future Electronics and Digi-Key.
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`29.
`Everlight is asserting apparatus rather than method claims. Everlight contends that the
`infringing Accused Bridgelux Products meet every element of Everlight’s Asserted Claims at the
`point they are made. On information and belief, these devices infringe the Asserted Patents without
`any further modification or other action being taken by any third party. On information and belief,
`Bridgelux’s U.S. customers cannot engage in any commercial activity concerning the Accused
`Bridgelux Products (such as importing, selling, or offering to sell the Accused Bridgelux Products)
`without infringing the ’548 and ’448 patents.
`30.
`Because the accused devices, themselves, infringe and have no non-infringing
`configuration or use, Bridgelux on information and belief acts with intent to cause infringement
`whenever it encourages their importation into, or sale or use in the U.S. As the Supreme Court
`observed, “[o]ne who makes and sells articles which are only adapted to be used in a patented
`combination will be presumed to intend the natural consequences of his acts; he will be presumed to
`intend that they shall be used in the combination of the patent.” MGM Studios Inc. v. Grokster, Ltd.,
`545 U.S. 913, 932 (2005) (quoting New York Scaffolding Co. v. Whitney, 224 F. 452, 459 (8th Cir.
`1915)). Here, Bridgelux on information and belief is encouraging and facilitating the importation and
`sale of products known to be infringing simply by providing its accused LED devices to OEM
`manufacturers for incorporation into lighting products destined for sale in the United States.
`Bridgelux must be “presumed to intend the natural consequences of [its] acts,” that consequence being
`infringement. Id.
`31.
`On information and belief, the United States is one of the world’s largest markets for
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`LED products and fixtures, and this market is rapidly growing. On information and belief, the
`installation of common home LED bulbs grew from approximately 400K in 2009 to approximately
`14 million in 2012, and to 78 million by 2014. On information and belief, significant percentages of
`the packaged LEDs sold in the U.S. are manufactured and incorporated into end-user lighting
`products (like LED fixtures) in China. On information and belief, all, or a substantial majority, of
`the ’548 Patent Accused LED Packages that are imported into and sold in the U.S. are manufactured
`and incorporated into end-user lighting products in China. On information and belief, companies
`such as Home Depot, Lowe’s Home Improvement, and IKEA both before and after the filing of the
`Complaint purchased and continue to purchase end-user lighting products incorporating Bridgelux’s
`packaged LEDs from China with the intention of importing those products and selling them in the
`U.S.
`
`32.
`On information and belief, both before and after the filing of the Complaint herein,
`Bridgelux targeted and continues to target U.S buyers and the U.S. market through a multi-pronged
`strategy, including at least: (a) participation in U.S trade-shows to market and promote Bridgelux
`products and brand; (b) acquiring necessary certification(s) to permit importation and sale of LED
`fixtures (incorporating the ’548 Patent Accused LED Packages) into the U.S.; and (c) positioning the
`’548 Patent Accused LED Packages for selection by the source of the LED supply chain by promoting
`them to China-based original equipment manufacturers (OEMs) and original design manufacturers
`(ODMs), or to the U.S. resellers negotiating with China-based OEMs and ODMs, with the
`understanding that the materials shared by Bridgelux will be provided to U.S.-based resellers of LED
`fixtures as a part of that reseller’s qualification process.
`33.
`On information and belief, Bridgelux, both before and after filing of the Complaint
`herein, targeted and continues to target the U.S. LED market and encourages and facilitates the sale
`of products incorporating the ’548 Patent Accused LED Packages in the U.S. market by companies
`purchasing such products from China-based OEMs and ODMs. For example, on information and
`belief, Bridgelux has participated in multiple trade shows over the past four years in the U.S. On
`information and belief, at these trade shows Bridgelux promotes, markets and/or sells one or more
`Accused Bridgelux Products to U.S. buyers, knowing that the Accused Bridgelux Products cannot be
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 11 of 181
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`imported, sold or used in the U.S. without infringing one or both of the ‘548 and ‘448 patents. In
`addition, Bridgelux’s website www.bridgelux.com/company claims a customer base of 1500+
`customers. On information and belief, that figure includes U.S. companies who are indirect
`purchasers of Bridgelux LED products both before and after the filing of the Complaint herein,
`including companies who purchase products from China-based OEMs and ODMs incorporating the
`’548 Patent Accused LED Packages.
`34.
`On information and belief, both before and after the filing of the Complaint herein,
`Bridgelux required and continues to require its suppliers and contract manufacturers to comply with
`U.S. laws and regulations to encourage and facilitate the sale of products incorporating the ’548 Patent
`Accused LED Packages in the U.S. market by companies purchasing such products from China-based
`OEMs and ODMs. For example, on information and belief, at least Section 10 of the Bridgelux
`Purchase Order Terms and Conditions requires all of Bridgelux’s suppliers and contract
`manufacturers to comply with U.S. laws and regulations and, on information and belief, these terms
`were and are in effect both before and after the filing of the Complaint herein.
`35.
`On information and belief, both before and after the filing of the Complaint herein,
`Bridgelux sought and continues to seek certification of the ’548 Patent Accused LED Packages, for
`example through Underwriters Laboratories (UL), to encourage and facilitate the approval for sale
`into the U.S. market of products incorporating the ’548 Patent Accused LED Packages. For example,
`in a press release dated June 15, 2010, Bridgelux’s Vice President of Marketing, Jason Posselt,
`claimed: “A significant number of LED lamp and luminaire manufacturers are seeking UL Listing in
`order to successfully sell their products into the U.S. market. By using Bridgelux Arrays, our
`customers can confidently design and manufacture with independent direction and support from UL
`and dramatically shorten the approval cycle.” On information and belief, the reference to “LED lamp
`and luminaire manufacturers” includes China-based OEMs and ODMs supplying end-user lighting
`products to U.S. resellers incorporating the ’548 Patent Accused LED Packages. The 2010 press
`release identified the Bridgelux ES, LS, and RS Arrays as being “compliant with UL8750, the
`standard for safety of light emitting diode (LED) equipment for use in lighting products.” As set forth
`in its infringement contentions (as amended) Everlight has accused products in Bridgelux’s ES Star
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 12 of 181
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`Array Series, ES Rectangle Array Series, and RS Array Series of infringing the ‘448 Patent. Similarly,
`a certificate of compliance issued by UL to Bridgelux Inc. and dated October 29, 2016 certifies that
`“representative samples of the product as specified on this certificate were tested according to the
`current UL requirements,” including LED Array products in the Vero 29 Series, Vero 18 Series, Vero
`13 Series, and Vero 10 Series of products. As set forth in its infringement contentions (as amended)
`Everlight has accused products in Bridgelux’s Vero 29 Series, Vero 18 Series, Vero 13 Series, and
`Vero 10 Series of infringing the ‘448 Patent.
`36.
`On information and belief, both before and after the filing of the Complaint herein,
`companies like Home Depot, Lowe’s Home Improvement, and IKEA required and continue to require
`their OEMs and ODMs to purchase components, such as packaged LEDs, for their LED lighting
`fixture products from approved component suppliers. On information and belief, Bridgelux both
`before and after the filing of the Complaint herein, participated in and continues to participate in this
`approval process, commonly referred to as the customer-qualification or qualification process, to
`support and assist OEMs and ODMs in seeking approval for lighting products incorporating the ’548
`Patent Accused LED Packages, and thereby to facilitate and encourage the importation and sale within
`the United States of products incorporating the ’548 Patent Accused LED Packages. On information
`and belief, Bridgelux both before and after filing of the Complaint herein participated in and continues
`to participate in the qualification process by submitting documentation or information to the U.S.
`reseller of OEM and ODM products, providing documentation or information to OEMs and ODMs
`with the expectation and intent that such information will be passed along and submitted to the U.S.
`reseller of OEM and ODM products for review, or by otherwise providing support during the U.S.
`reseller’s qualification process.
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`Case No. 4:17-cv-3363-JSW (EDL)
`PLTF EVERLIGHT ELECTRONICS CO.’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`14922844.1
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`

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`Case 4:17-cv-03363-JSW Document 157 Filed 10/04/18 Page 13 of 181
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`37. On information and belief, Bridgelux employee and General Counsel Mr. Jesus Del
`Castillo is registered to practice before the U.S. Patent and Trademark Office (“PTO”). On
`information and belief, Mr. Del Castillo actively prosecutes patent applications on behalf of
`Bridgelux, including two of the patents Bridgelux is asserting in this case, as set forth in the
`following examples:
` On May 28, 2013, in application 12/240,011 (which became the Bridgelux ‘988
`patent) Mr. Del Castillo submitted arguments on behalf of Bridgelux seeking to
`overcome a prior art rejection. Exhibit C.
` On November 14, 2012, in application 12/240,011 (which became the Bridgelux
`‘988 patent), Mr. Del Castillo conducted a telephonic interview with PTO examiner
`James Cranson, Jr. covering prior art and several aspects of the pending application.
`Exhibit D.
` On May 14, 2012, in application 13/327,219 (which became the Bridgelux ‘929
`patent) Mr. Del Castillo submitted amended patent claims and arguments on behalf
`of Bridgelux seeking to overcome a double patenting rejection. Exhibit E.
` On May 14, 2012, in application 13/327,219 (which became the Bridgelux ‘929
`patent) Mr. Del Castillo submitted a terminal disclaimer on behalf of Bridgelux
`limiting enforcement of the granted patent to a period stated therein. Exhibit F.
`On information and belief, Mr. Jesus Del Castillo substantially and substantively participates in the
`prosecution of Bridgelux patent applications before the PTO, makes substantive decision