UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NORTH CAROLINA STATESVILLE DIVISION
`CIVIL ACTION NO. 5:16-CV-142
`
`Nichia Corporation,
`
`Plaintiff,
`
`v.
`
`Lowe’s Companies, Inc., Lowe’s Home
`Centers, LLC, and L G Sourcing, Inc.,
`
`Defendants.
`
`DEFENDANTS’ INITIAL
`INVALIDITY CONTENTIONS
`(Jury Trial Demanded)
`
`Defendants Lowe’s Companies, Lowe’s Home Centers, LLC and L G Sourcing, Inc.
`
`(collectively, “Lowe’s”) serve these Initial Invalidity Contentions in accordance with the Amended
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`Utility Patent Claim Construction Scheduling Order (Dkt 28) filed on February 24, 2017 in accordance
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`with the Local Civil Rules of the Western District of North Carolina, Rule 3.3 of the Local Patent Rules
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`and pursuant to Rule 16 of the Federal Rules of Civil Procedure. Lowe’s Initial Invalidity Contentions
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`are made without the benefit of complete discovery and are based on Lowe’s good faith
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`understanding of Plaintiff Nichia Corporation’s (“Nichia”) disclosure of asserted patents and
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`claims in its P.R. 3.1 Preliminary Infringement Contentions to Lowe’s.
`
`Lowe’s P.R. 3.3 Initial Invalidity Contentions address claims 1-2 and 6-11 of U.S. Patent
`
`No. 7,915,631 (“the ‘631 patent”) and claim 3 of U.S. Patent No. 8,120,057 (“the ‘057 patent”),
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`the only patents and claims asserted in Nichia’s P.R. 3.1 Preliminary Infringement Contentions.
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`Lowe’s continues to pursue discovery and investigate prior art relevant to the ‘631 patent and the
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`‘057 patent. Lowe’s reserves the right to modify, amend, and/or supplement its Initial Invalidity
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`Contentions based on additional information, in accordance with P.R. 3.6 and any applicable Court
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`order.
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`Lowe’s Initial Invalidity Contentions depend on the construction of the claims of the ‘631
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`patent and the ‘057 patent. Claim construction, which is a question of law reserved for the Court,
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`has not yet occurred. Because the claims have not yet been construed, Lowe’s has not had the
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`opportunity to compare the asserted claims of the ‘631 patent, as construed by the Court, with the
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`prior art. Lowe’s disclosure of its Initial Invalidity Contentions is not intended as a waiver of any
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`claim construction argument or non-infringement position. Additionally, Lowe’s reserves the right
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`to amend, supplement, or modify its invalidity contentions after the claims have been construed by
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`the Court. Lowe’s Initial Invalidity Contentionsmay be based in part on Nichia’s Infringement
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`allegations, and Lowe’s reserves the right to amend, supplement, or modify its invalidity
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`contentions based on any claim construction positions that Nichia may take in this case. Further,
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`Lowe’s reserves the right to assert that a claim is indefinite, not enabled, or fails to meet the written
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`description requirement based on any claim construction position that Nichia may take in this case
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`or based on any claim construction the Court may adopt in this case.
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`I.
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`IDENTIFICATION OF PRIOR ART REFERENCES
`
`Lowe’s identifies the following references as prior art that anticipates and/or renders
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`obvious the asserted claims of the ‘631 patent and ‘057 patent under 35 U.S.C. §§ 102 and/or 103.1
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`Lowe’s contends that at least the prior-art references identified below anticipate and/or render
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`obvious, either alone or in combination, the asserted claims of the ‘631 patent and the ‘057 patent.
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`Lowe’s also incorporates by reference all prior-art references cited in the ‘631 patent and the ‘057
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`patent or cited by any defendant sued by Nichia for infringement of the ‘631 patent or the ‘057 patent.
`
`1 Nichia’s Amended Preliminary Infringement Contentions assert that the ‘631 patent “claims
`priority to various Japanese patent applications, the earliest of which is dated July 29, 1996.” This
`priority date generally is used in Lowe’s Initial Invalidity Contentions, but as discussed infra,
`Lowe’s does not believe the ‘631 Patent is entitled to this priority date. For this reason, Lowe’s
`includes at least one prior art reference which does not predate July 29, 1996.
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`P.R. 3.3 (A) Prior Art References Against the ‘631 Patent
`U.S. Patent No. 6,600,175 B1 to Baretz, et al. (filed on March 26, 1996, issued on July 29, 2003)
`(“Baretz”)
`JP 01-260707 to Usuda et al. (filed on April 11, 1988, published on October 18, 1989) (“Usuda”)
`JP S50-79379 to Tabuchi (published on November 24, 1973) (“Tabuchi”)
`JP H7-99345 to Matoba (filed on September 28, 1993, published on April 11, 1995) (“Matoba”)
`JP H05-152609 to Tadatsu et al. (filed on November 25, 1991, published on June 18, 1993)
`(“Tadatsu”)
`“High-power InGaN single-quantum-well-structure blue and violet light-emitting diodes,” Shuji
`Nakamura et al., Applied Physics Letters, Vol. 67, No. 13 (Sept. 1995) (“Nakamura”)
`“Large-band-gap SiC, III-V nitride, and II-VI ZnSe-based semiconductor device technologies,”
`H. Morkoç et al., University of Illinois, Materials Research Laboratory and Coordinated Science
`Laboratory (Aug. 1, 1994) (“Morkoç”)
`U.S. Patent No. 3,691,482 to Pinnow et al. (filed on January 19, 1970, issued on September 12,
`1972) (“Pinnow ‘482”)
`U.S. Patent No. 3,699,478 to Pinnow et al. (filed on May, 26, 1969, issued on October 17, 1972)
`(“Pinnow ‘478”)
`“Photoluminescent Conversion of Laser Light for Black and White and Multicolor Displays,” L.
`G. Van Uitert, et al., Applied Optics, Vol. 10, No. 1 (January 1971) (“Van Uitert”)
`C.J. Nuese and J.I. Pankove “Chapter 2. Light-Emitting Diodes - LEDs” in Topics in Applied
`Physics, p. 35 (Book 40) (J.I. Pankove ed., 1980) (“Nuese”).
`U.S. Patent No. 5,907,222 to Lengyel et al. (filed on November 3, 1993, issued on May 25, 1999)
`(“Lengyel”)
`U.S. Patent No. 4,678,338 to Kitta et al. (filed on November 22, 1983, issued on July 7, 1987)
`(“Kitta”)
`U.S. Patent No. 5,118,985 to Patton et al. (filed on July, 9, 1991, issued on June 2, 1992) (“Patton”)
`
`JP Patent Pub. No. H52-40959 (published on October 15, 1977) (“Hasetani”)
`
`DE Patent Application Publication No. 19638667 (filed on September 20, 1996, published on April
`2, 1998) (“Schlotter”)
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`P.R. 3.3(A) Prior Art References Against the ‘057 Patent
`U.S. Patent No. 7,105,861 to Erchak, et al. (published on March 10, 2005, issued on September 12,
`2006) (“Erchak”)
`U.S. Patent No. 6,455,343 to Chen, et al. ( issued on September 24, 2002) (“Chen”)
`
`U.S. Patent No. 6,621,106 to Murakami, et al. (issued on September 16, 2003) (“Murakami”)
`
`U.S. Patent No. 7,288,797 to Deguchi, et al. (published on July 21, 2005, issued on October 30,
`2007) (“Deguchi”)
`U.S. Patent Pub. No. 2006/0255358 to Shum (published on November 16, 2006, effective filing date
`of May 19, 2006) (“Shum”)
`
`U.S. Patent No. 5,972,731 to Dutta (issued on October 26, 1999) (“Dutta”)
`
`U.S. Patent No. 4,864,370 to Gaw, et al. (issued on September 5, 1989) (“Gaw”)
`
`U.S. Patent No. 6,169,296 to Kamiyama, et al. (issued on January 2, 2001) (“Kamiyama”)
`
`U.S. Patent Pub. No. 2006/0261355 to Kususe (published on November 23, 2006, effective filing
`date of May 18, 2006) (“Kususe”)
`
`U.S. Patent No. 6,796,108 to Lin, et al. (issued on September 28, 2004) (“Lin”)
`
`U.S. Patent No. 5,578,839 to Nakamura, et al. (issued on November 26, 1996) (“Nakamura ‘839”)
`
`U.S. Patent No. 5,652,434 to Nakamura, et al. (issued on July 29, 1997) (“Nakamura ‘434”)
`
`U.S. Patent Pub. No. 2005/0212002 to Sanga (published on September 29, 2005, effective filing date
`of March 29, 2005) (“Sanga”)
`
`U.S. Patent No. 7,075,115 to Sakamoto, et al. (published on July 1, 2004, issued on July 11, 2006)
`(“Sakamoto”)
`
`U.S. Patent No. 7,112,825 to Shakuda, et al. (published on July 7, 2005, issued on September 26,
`2006) (“Shakuda”)
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`U.S. Patent No. 5,309,001 to Wantanabe, et al. (issued on May 3, 1994) (“Wantanabe ‘001”)
`
`U.S. Patent No. 6,121,635 to Wantanabe, et al. (issued on September 19, 2000) (“Wantanabe
`‘635”)
`
`Light Emitting Diodes, First Edition, Schubert (published in 2003) (“Schubert”)
`
`High Brightness Light Emitting Diodes: Semiconductors and Materials, Vol. 48, 1997, Stringfellow
`et al. (“Stringfellow”)
`
`JP H07326793 to Takashi (published on December 12, 1995 (“Takashi”)
`
`U.S. Patent No. 6,417,525 to Hata (issued July 9, 2002) (“Hata”)
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`II.
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`P.R. 3.3 (B) BASES FOR INVALIDITY OF ALL ASSERTED CLAIMS
`
`Nichia asserts claims 1-2 and 6-11 of the ‘631 patent and claim 3 of the ‘057 patent against
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`Lowe’s. Each of the asserted claims is invalid because they fail to meet one or more of the
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`statutory requirements for patentability. The specific bases for invalidity are provided below and in
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`the claim charts attached as Exhibits A through E and Exhibits 1 through 21. Each of the prior art
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`items qualify as prior art under 35 U.S.C. § 102.
`
`In the charts Lowe’s has cited representative portions of the identified references. An
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`identified reference may contain additional support for a particular claim limitation in addition to
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`the representative portions identified in the claim charts. Further, persons of ordinary skill in the
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`art generally read a prior-art reference as a whole and in the context of other publications and
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`literature. To understand and interpret any specific statement or disclosure within a prior-art
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`reference, a person of ordinary skill in the art would rely on other information within the reference,
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`along with other publications and his or her general knowledge and understanding of the field.
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`Lowe’s therefore reserves the right to rely on uncited portions of the identified prior-art references
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`and other publications and expert testimony to provide context and as an aid in understanding and
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`DATED: June 28, 2017
`
`SILL CUMMIS & GROSS P.C.
`
`/s/Tod M. Melgar
`Trent S. Dickey (Pro Hac Vice)
`Scott D. Stimpson (Pro Hac Vice)
`Tod M. Melgar (Pro Hac Vice)
`101 Park Avenue, 28th Floor
`New York, New York 10178
`Tel. (212) 500-1550
`Fax (212) 643-6500
`tdickey@sillscummis.com
`sstimpson@sillscummis.com
`tmelgar@sillscummis.com
`
`Jerry R. Selinger
`State Bar No. 18008250
`PATTERSON & SHERIDAN, LLP
`1700 Pacific Ave., Suite 2650
`Dallas, Texas 75201
`(214) 272-0957 (Telephone)
`(713) 623-4846 (Facsimile)
`jselinger@pattersonsheridan.com
`
`James B. Gatehouse
`RAYBURN COOPER & DURHAM, P.A
`State Bar No. 22811
`227 West Trade Street, Suite 1200
`Charlotte, NC 28202-1672
`Tel: (704) 334-0891
`Fax: (704) 377-1897
`bgatehouse@rcdlaw.net
`ATTORNEYS FOR DEFENDANTS LOWE’S
`COMPANIES, INC., LOWE’S HOMECENTERS, LLC
`AND L G SOURCING, INC.
`
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`NICHIA EX2018
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on this 28th day of June, 2017, a copy of the foregoing was
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`served by electronic mail as follows:
`
`Larry S. McDevitt
`David M. Wilkerson
`The Van Winkle Law Firm
`11 North Market Street
`Asheville, NC 28801
`Telephone: (828) 258-2991
`Fax: (828) 255-0255
`lmcdevitt@vwlawfirm.com
`dwilkerson@vwlawfirm.com
`
`Kenneth A. Gallo
`kgallo@paulweiss.com
`David E. Cole
`dcole@paulweiss.com
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`Telephone: (202) 223-7300
`Fax: (202) 223-7420
`
`Catherine Nyarady
`enyarady@paulweiss.com
`Daniel J. Klein
`daklein@paulweiss.com
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`1285 Avenue of the Americas
`New York, NY 10019-6064
`Telephone: (212) 373-3000
`Fax: (212) 757-3990
`
`Attorneys for Plaintiff
`
`/s/Tod M. Melgar
`Tod M. Melgar
`
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