from the United States District Court for the Northern
District of California in No. 3:13-cv-05038-NC, Magistrate
Judge Nathanael M. Cousins.
C. Rozendaal, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for plaintiff-appellant. Also
represented by Michael E. Joffre.
Lawrence J. Gotts, Latham & Watkins LLP, Washington, DC,
argued for defendant-appellee. Also represented by Gabriel
Bell; Charles Sanders, Boston, MA; Ryan Owens, Costa Mesa,
Newman, Hughes, and Stoll, Circuit Judges.
Display Device Corporation appeals the district court's
summary judgment that claim 20 of Seoul Semiconductor
Company, Ltd.'s ("SSC") U.S. Patent No. 6, 007,
209 is not anticipated. Following a jury trial on the
remaining infringement and invalidity issues, Enplas also
appeals the district court's denial of judgment as a
matter of law ("JMOL") that SSC's U.S. Patent
No. 6, 473, 554 is anticipated; denial of JMOL of no induced
infringement; and denial of JMOL that the jury's damages
award is excessive and not supported by the trial evidence.
reasons below, we affirm the district court's judgment
that claim 20 of the '209 patent and the asserted
'554 patent claims are not anticipated. Although a close
question, we also affirm the district court's denial of
JMOL of no inducement. We hold, however, that the district
court erred when it denied JMOL that the damages award was
not supported by substantial evidence. We therefore vacate
the jury's damages award, and remand for further
asserted '209 and '554 patents are directed to
methods of backlighting display panels, particularly LED
displays used in televisions, laptop computers, and other
electronics. In such displays, the '209 patent teaches,
"uniform illumination is difficult to achieve, and prior
art devices frequently fail[ed] to provide a sufficiently
uni- form source of illumination for LCD displays."
'209 patent col. 1 ll. 36-38. The invention claimed in
the '209 patent purports to solve this problem by
providing a light source that uniformly backlights the rear
surface of the display panel. Id. at col. 1 ll.
45-48. The light source includes "a housing having a
cavity formed by diffusely reflective bottom and side
interior surfaces." Id. at col. 1 ll. 46-48.
"Illumination is provided by [LEDs] that are shielded by
shielding elements." Id. at col. 1 ll. 50-51.
The LEDs and shielding elements are "positioned such
that the emitted light is substantially uniformly distributed
throughout the cavity, thereby eliminating bright spots
(i.e., 'hot spots') in the display panel."
Id. at col. 1 ll. 52-55.
20 of the '209 patent recites:
method of backlighting a display panel, comprising:
producing illumination from a substantially lambertian light
source comprising a cavity with internal side walls, an
internal bottom wall, and an aperture, said step of producing
illumination comprising the step of directing light rays
emitted by plural light sources mounted on said internal
bottom wall and around the perimeter of the aperture
into the cavity such that the light exiting the aperture is
substantially uniform in intensity and color;
using a diffuser to diffuse light from said substantially
lambertian light source;
using a brightness enhancing film to concentrate the diffused
light into a predetermined angular range without
significantly reducing the uniformity of the diffused light;
directing the concentrated, diffused light onto said display
Id. at col. 9 l. 18-col. 10 l. 8 (emphasis added).
'554 patent, however, purports to solve the illumination
uniformity problem in a different way. The patent discloses a
lighting apparatus using a "waveguide coupled to a light
source for injecting light into the waveguide." '554
patent, Abstract. Embedded within the waveguide is "an
illumination coupler." Id. at col. 3 ll. 18-20.
The illumination coupler "comprises a refractive index
interface configured to capture light rays propagating along
a line that forms less than the critical angle of total
internal reflection with respect to at least one of the top
and bottom surfaces, such that the captured light rays are
injected therebetween for propagation outside of the interior
region." Id. at col. 3 ll. 23-29. The
illumination coupling element has two curved surfaces in its
top surface that form the total internal reflection
("TIR") region above the LED and a bottom surface
above the LED. Id. at col. 16 ll. 14-24. The bottom
surface works with the TIR region to distribute light within
the waveguide. Id. at col. 16 ll. 27-48.
TIR, the '554 patent solves the bright spot problem by
preventing light from shining directly from the light source
through the display. The curved portions of the TIR region,
however, also create a "dark spot" by completely
redirecting light above the LED. Id. at col. 14 ll.
58-61. To counter this problem, the '554 patent discloses
a rounded bottom TIR surface that is configured to allow a
small amount of light to "leak" through its top
surface to ensure uniformity in the display. Id. at
col. 14 l. 61-col. 15 l. 3. This is known as "leaky
TIR." Id. at col. 15 ll. 1-3.
1, 6, 30, and 33-35 of the '554 patent are reproduced
illumination device, comprising:
a waveguide having an illumination coupler embedded
in an interior region of said waveguide, said illumination
coupler adapted to receive light from a point source within
said interior region, and to direct light between generally
parallel top and bottom surfaces outside said interior
region, said illumination coupler comprising a refractive
index interface which is inclined relative to at least one of
said top and bottom surfaces said interface being configured
to reflect light rays emitted by the point source which
propagate along a line that forms less than the critical
angle of total internal reflection with respect to a line
lying in one of said top and bottom surfaces, such that light
rays which would otherwise pass out of said waveguide are
captured for propagation between said top and bottom
. . . .
6. The illumination device of claim 1, wherein the waveguide
and illumination coupler are integrally formed from a single
piece of material.
. . . .
30. An optical apparatus, comprising:
a light emitting diode (LED);
an optical element having top and bottom opposing sides and
an edge extending between the top and bottom opposing sides,
said LED mounted at a predetermined location beneath a
central portion of said optical element such that light
from the LED enters the optical element, said optical element
including a TIR surface spaced from said bottom side and
extending from a point above the LED outwardly towards said
edges, said TIR surface positioned to receive light emitted
by the LED, said TIR surface curving towards the LED so as to
form a cusp above the LED, the curving TIR surface totally
internally reflecting light rays such that reflected light
rays propagate from the TIR surface towards the edge of the
. . . .
33. The optical apparatus of claim 30, wherein said TIR
surface is leaky such that some light emitted by the LED
is transmitted therethrough.
34. The optical apparatus of claim 33, wherein said cusp is
contoured to permit leakage of light through said TIR
35. The optical apparatus of claim 34, wherein said cusp is
rounded to permit leakage of light through said TIR surface.
Id. at col. 19 ll. 2-17, col. 19 ll. 31-33, col. 21
ll. 8-23, col. 21 ll. 28-36 (emphases added).
is a Japanese manufacturer of plastic lenses used in
"light bars," which are used for backlighting
displays in flat-screen televisions. SSC is a Korean company
that manufactures and sells LEDs, which are also used in
light bars for backlighting flat-screen televisions, as well
as automotive, smartphone, and lighting applications. From
November 2010 to June 2011, SSC and Enplas collaborated to
manufacture lenses for SSC's light bars, which are
covered by SSC's '209 and '554 patents. SSC
presented testimony that, during this joint development
period, SSC employees informed Enplas that the end product,
including SSC's LEDs and Enplas's lenses, would be
covered by SSC's patents. SSC also presented testimony
that it had understood that it would have an exclusive
relationship with Enplas for sales of the lenses.
2012, however, SSC suspected that Enplas had provided the
lenses to SSC's competitors who sold light bar products
in the United States. SSC believed that those products
infringed the '209 and '554 patents. To confirm its
suspicion, SSC purchased several televisions from various
retailers in the United States and took them apart for
analysis. In particular, SSC purchased a Samsung Display LCD
television, which used a lens supplied to Lumens Co., Ltd.,
and an LG Electronics LED television, which used lenses
supplied to LG Innotek. SSC analyzed the televisions and
determined that they contained infringing light bars with
Enplas's lenses. As a result, SSC sent Enplas a letter
alleging that Enplas was inducing and contributing to the
infringement of the '209 and '554 patents in the
response, Enplas filed the present declaratory judgment
action against SSC, seeking a declaration that the '209
and '554 patents were invalid and not infringed. SSC
counterclaimed, asserting infringement and seeking damages.
SSC alleged that Enplas induced its direct and indirect
customers to import, use, sell or offer for sale products
infringing SSC's patents.
trial, Enplas moved for summary judgment that claim 20 of the
'209 patent is anticipated by U.S. Patent No. 5, 684, 354
to Gleckman ("Gleckman"). The district court denied
Enplas's motion but converted SSC's opposition into a
cross-motion for summary judgment. The district court granted
SSC's cross-motion, concluding that no reasonable juror
could find that Gleckman anticipates claim 20 of the '209
case proceeded to a jury trial on anticipation of the
asserted claims of the '554 patent, induced infringement
of the '209 and '554 patents, willfulness, and
damages. The jury found that Enplas induced infringement of
the '209 and '554 patents and that none of the
asserted claims of the '554 patent were anticipated by
U.S. Patent No. 3, 774, 021 to Johnson ("Johnson")
or Japanese Patent Application Publication No. S63-127161
("JP-161"). Based on SSC's damages expert
testimony, the jury awarded $4 million in damages for a
one-time freedom-to-operate payment for the '554 patent
and $70, 000 for the '209 patent. The jury verdict form
specifically indicated that the one-time freedom to operate
payment was for "all [Enplas] products," including
lenses that had not been accused of infringement. J.A. 119,
121. The district court denied Enplas's pre-trial motions
to exclude SSC's damages expert evidence on the basis
that it improperly considered products not alleged or shown
to infringe the '554 and '209 patents. The district
court also denied Enplas's post-trial motions for JMOL of
anticipation of the '554 patent, no inducement, and
appeals the district court's summary judgment and denial
of its post-trial motions. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
appeals the district court's summary judgment that claim
20 of the '209 patent is not anticipated by Gleckman and
the district court's denial of JMOL that the '554
patent is anticipated by Johnson and JP-161. We affirm both
Enplas asserts that the district court erred by granting
summary judgment that claim 20 of the '209 patent is not
anticipated by Gleckman. We review the district court's
grant of summary judgment under regional circuit law. MAG
Aerospace Indus., Inc. v. B/E Aerospace, Inc., 816 F.3d
1374, 1376 (Fed. Cir. 2016). The Ninth Circuit reviews a
grant of summary judgment de novo. Id. (citing
Greater Yellowstone Coal. v. Lewis, 628 F.3d 1143,
1148 (9th Cir. 2010)). Summary judgment is appropriate
"if the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment
as a matter of law." Fed.R.Civ.P. 56(a).
discloses a method of backlighting a display panel comprising
LEDs disposed around the periphery of a cavity having
reflective walls and an aperture. The question before us is
whether Gleckman discloses the "emitted by plural light
sources mounted on said internal bottom wall" limitation
of claim 20. Although Gleckman does not disclose mounting
light sources on the bottom wall as required by the claim,
Enplas nonetheless argues that a genuine issue of material
fact exists regarding whether Gleckman teaches light sources
mounted on the bottom wall. This is so, according to Enplas,
because the inventor of the '209 patent, Dr. Pelka,
testified that Gleckman "doesn't exclude the
mounting on the perimeter being on the bottom wall as long as
it's on the perimeter." J.A. 3413 at 59:12-14. We
most, Dr. Pelka's testimony suggests that Gleckman could
have been modified to include light sources on the bottom
wall. This is not enough, however, for anticipation.
Anticipation requires that a single reference disclose each
and every element of the claimed invention. In re Smith
Int'l, Inc., 871 F.3d 1375, 1381 (Fed. Cir. 2017)
("A patent claim is anticipated 'only if each and
every element is found within a single prior art reference,
arranged as claimed.'" (quoting Summit 6, LLC v.
Samsung Elecs. Co., 802 F.3d 1283, 1294 (Fed. Cir.
2015))). Prior art that must be modified to meet the disputed
claim limitation does not anticipate the claim. See,
e.g., In re Chudik, 851 F.3d 1365, 1374 (Fed.
Cir. 2017) ("Prior art that 'must be distorted from
its obvious design' does not anticipate a new
invention." (quoting In re Wells, 53 F.2d 537,
539 (CCPA 1931))). We therefore affirm the district
court's summary judgment of no anticipation of claim 20
of the '209 patent.
Enplas asserts that the district court erred by denying JMOL
that Johnson anticipates the asserted claims of the '554
patent. We review the district court's denial of JMOL de
novo under the law of the Ninth Circuit. ActiveVideo
Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d
1312, 1319 (Fed. Cir. 2012); Hangarter v. Provident Life
& Accident Ins. Co., 373 F.3d 998, 1005 (9th Cir.
2004). A motion for JMOL is properly granted "if the
evidence, construed in the light most favorable to the
nonmoving party, permits only one reasonable conclusion, and
that conclusion is contrary to the jury's verdict."
Escriba v. Foster Poultry Farms, Inc., 743 F.3d
1236, 1242 (9th Cir. 2014) (quoting Pavao v. Pagay,
307 F.3d 915, 918 (9th Cir. 2002)). Whether a claim is
anticipated is a question of fact. MPHJ Tech. Invs., LLC
v. Ricoh Ams. Corp., 847 F.3d 1363, 1378 (Fed. Cir.
2017). As a factual question, the "jury's verdict
must be upheld if it is supported by substantial evidence
that is adequate to support the jury's findings, even if
contrary findings are also possible." Escriba,
743 F.3d at 1242 (citation omitted).
generally discloses an LED module that couples light into a
planar light guide, e.g., a telephone faceplate, such that
discrete remote regions of the faceplate can be illuminated.
The issues at trial included whether Johnson discloses (1)
the "illumination coupler" required by claims 1 and
6; (2) an "LED mounted at a predetermined location
beneath a central portion of said optical element"
required by claims 30 and 33-35; and (3) a "TIR