NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

EVERLIGHT ELECTRONICS CO., LTD,

Plaintiff-Cross-Appellant

EMCORE CORPORATION,

Plaintiff

EVERLIGHT AMERICAS, INC.,

Counterclaim Defendant-Cross-Appellant

v. 

NICHIA CORPORATION, NICHIA AMERICA 

CORPORATION,

Defendants-Appellants

______________________ 

2016-1577, 2016-1611

______________________ 

Appeals from the United States District Court for the 

Eastern District of Michigan in No. 4:12-cv-11758-GADMKM, Judge Gershwin A. Drain.

______________________ 

Decided: January 4, 2018

______________________ 

RAYMOND N. NIMROD, Quinn Emanuel Urquhart & 

Sullivan, LLP, New York, NY, argued for plaintiff-crossappellant and counterclaim defendant-cross-appellant. 
2 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

Also represented by RICHARD WOLTER ERWINE, ANASTASIA 

M. FERNANDS, MATTHEW A. TRAUPMAN. 

KENNETH A. GALLO, Paul, Weiss, Rifkind, Wharton & 

Garrison LLP, Washington, DC, argued for defendantsappellants. Also represented by DIANE GAYLOR; DANIEL 

KLEIN, CATHERINE NYARADY, PETER SANDEL, New York, 

NY.

______________________ 

Before WALLACH, CHEN and HUGHES, Circuit Judges.

CHEN, Circuit Judge. 

Everlight brought a declaratory judgment suit against 

Nichia seeking a determination of non-infringement, 

invalidity, or unenforceability of U.S. Patent Nos. 

5,998,925 (the ’925 patent) and 7,531,960 (the ’960 patent)

(together, the Patents-in-Suit). Nichia filed counterclaims 

for infringement against Everlight. In April 2015, a jury 

returned a verdict that claims 2, 3 and 5 of the ’925 patent and claims 2, 14, and 19 of the ’960 patent1 were 

invalid due to obviousness. In June 2015, the district 

court held a bench trial and determined that Everlight 

failed to establish its inequitable conduct claim. See 

Everlight Elecs. Co. v. Nichia Corp., 143 F. Supp. 3d 644, 

646 (E.D. Mi. 2015); J.A. 65−66 (Final Judgment). Following the trials, Nichia moved for judgment as a matter

of law (JMOL) of validity and/or a new trial, which the 

district court denied, holding that substantial evidence 

supported the jury verdict of invalidity. See Everlight 

Elecs. Co. v. Nichia Corp., No. 12-cv-11758, 2016 WL 

8232553, at *1 (E.D. Mi. Jan. 19, 2016); J.A. 34−35 (Final 

Judgment). Nichia appeals this ruling. Everlight cross1 Nichia does not appeal the verdict with respect to 

claims 14 and 19 of the ’960 patent. See Appellant’s Br. 

1–2.

 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 3

appeals the ruling of no inequitable conduct. We have 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Because 

the jury verdict is supported by substantial evidence, and 

because the district court did not err in denying Everlight’s inequitable conduct claim, we affirm on all 

grounds.

DISCUSSION

I. The Jury Verdict of Invalidity

We review a denial of JMOL under the law of the regional circuit. Comcast IP Holdings I LLC v. Sprint 

Commc’ns Co., L.P., 850 F.3d 1302, 1309 (Fed. Cir. 2017). 

“[The Sixth Circuit] review[s] de novo a district court’s 

denial of a motion for judgment as a matter of law.” 

Imwalle v. Reliance Med. Prod., Inc., 515 F.3d 531, 543 

(6th Cir. 2008). “This court reviews a jury’s conclusions 

on obviousness de novo, and the underlying findings of 

fact, whether explicit or implicit in the verdict, for substantial evidence.” Pregis Corp. v. Kappos, 700 F.3d 1348, 

1354 (Fed. Cir. 2012). Substantial evidence is “such 

relevant evidence as a reasonable mind might accept as 

adequate to support a conclusion.” Consol. Edison Co. v. 

NLRB, 305 U.S. 197, 229 (1938). 

A patent claim is unpatentable when “the differences 

between the subject matter sought to be patented and the 

prior art are such that the subject matter as a whole 

would have been obvious at the time the invention was 

made to a person having ordinary skill in the art to which 

said subject matter pertains.” 35 U.S.C. § 103(a).2 Obvi2 Congress amended § 103 when it passed the LeahySmith America Invents Act (“AIA”). Pub. L. No. 112-29, 

§ 3(c), 125 Stat. 284, 287 (2011). However, because the 

application that led to the Patents-in-Suit never contained (1) a claim having an effective filing date on or 

after March 16, 2013 or (2) a reference under 35 U.S.C. 

 
4 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

ousness “is a question of law based on underlying findings 

of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 

2000). The underlying factual findings include (1) “the 

scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level 

of ordinary skill in the pertinent art,” and (4) the presence 

of secondary considerations of nonobviousness such “as 

commercial success, long felt but unsolved needs, failure 

of others,” and unexpected results. Graham v. John Deere 

Co. of Kan. City, 383 U.S. 1, 17 (1966); see United States v. 

Adams, 383 U.S. 39, 50–52 (1966). 

A. The ’925 Patent

Both Patents-in-Suit are directed to the combination 

of a blue light-emitting diode (LED) and a blue-to-yellow 

phosphor—a chemical which absorbs one color of light and 

emits another—to produce a white LED. Claim 2 is 

representative of the ’925 patent claims and can be written in independent form as follows:

2. A light emitting device, comprising a light emitting component and a phosphor capable of absorbing a part of light emitted by the light emitting 

component and emitting light of wavelength different from that of the absorbed light; 

wherein said light emitting component comprises 

a nitride compound semiconductor represented by 

the formula: IniGajAlkN where 0≤i, 0≤j, 0≤k and 

i+j+k=1; and

wherein the phosphor used contains an yttriumaluminum-garnet fluorescent material containing 

Y and Al.

§§ 120, 121, or 365(c) to any patent or application that 

ever contained such a claim, the pre-AIA § 103 applies. 

See id. § 3(n)(1), 125 Stat. at 293.

 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 5

’925 patent col. 31, ll. 25–40. At the jury trial, Everlight 

presented Japanese Patent Application No. H05-152609

(Tadatsu) and U.S. Patent No. 6,600,175 (Baretz) to 

demonstrate that the use of phosphors with blue LEDs to 

alter the light profile emitted by the LED was known in 

the art. Tadatsu discloses use of a phosphor with a gallium nitride blue LED to achieve “conversion of a light of a 

number of wavelengths” or “color correction of blue LED.” 

J.A. 19827–28. Baretz discloses a “monochromatic blue or 

UV” LED which is “down-converted to white light by 

packaging the diode with . . . inorganic fluorescers and 

phosphors in a polymeric matrix.” J.A. 19759; see also

J.A. 19768 col. 9, ll. 9–29 (disclosing use of phosphors to 

produce white light from a gallium nitride blue LED). 

In conjunction, Everlight presented Mary V. Hoffman, 

Improved color rendition in high pressure mercury vapor 

lamps, 6 J. Illuminating Engineering Soc’y 89 (1977) 

(Hoffman), and U.S. Patent No. 4,727,283 (Philips) to 

demonstrate that the use of yttrium-aluminum-garnet 

(YAG) phosphors to downconvert blue light to yellow light 

was known in the context of mercury vapor lamps. Hoffman discloses use of a YAG phosphor to downconvert blue 

light with a wavelength of 436nm to yellow light with a 

wavelength of 560nm. J.A. 20408–09. Philips discloses 

use of a YAG phosphor to absorb “radiation having a 

wavelength between about 400 and 480 nm and convert it 

into radiation in a wide emission band . . . with a maximum [wavelength] at about 560 nm.” J.A. 19785 col. 2, ll. 

51–55. Based on the above references and expert testimony from both parties, the jury rendered its verdict of 

obviousness.

The district court determined that the jury verdict 

was supported by substantial evidence because (1) the 

prior art demonstrated that both gallium nitride blue 

LEDs and YAG phosphors were known in the art; 

(2) evidence was presented at trial that a person of ordinary skill in the art would have desired to combine a blue-
6 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

to-yellow phosphor with a blue LED to produce a white 

LED; and (3) a reasonable jury could have found secondary considerations to fail to weigh in favor of patentability. See Everlight, 2016 WL 8232553, at *8−9. In 

particular, the court noted evidence presented at trial 

that blue LEDs were “well known in the art,” that “it was 

known that blue LEDs could be combined with phosphors 

to change the color of the light emitted by the LED,” that 

“it has been known for over 300 years that mixing blue 

and yellow light results in white light,” and that “YAG 

was used in conjunction with blue light sources, including 

cathode ray tubes, blue lasers and blue mercury vapor 

lamps, to make white light.” Id. at *9. Thus, the court 

concluded that substantial evidence supported the conclusion that all of the elements of claims 2, 3, and 5 of the 

’925 patent were present in the prior art. 

As to motivation to combine, the district court noted 

that evidence was presented to the jury that (1) there was 

a large market demand for white LEDs; (2) the gallium 

nitride blue LED was a revolutionary breakthrough which 

was necessary to the development of a white LED; 

(3) testimony from both parties indicated that the invention of the blue LED naturally led to the use of a blue-toyellow phosphor to produce a white LED; (4) there were a 

limited number of blue-to-yellow phosphors; and 

(5) YAG’s properties were well-known to skilled artisans 

at the time of the alleged invention. Id. at *10. Thus, the 

district court found that a reasonable jury could have 

concluded that the alleged invention was no more than 

the “combination of familiar elements according to known 

methods” to “yield predictable results.” Id. (citing KSR 

Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). 

On secondary considerations, the district court noted 

that although Nichia had presented evidence of commercial success, a reasonable jury could have found that 

evidence to be undermined by credible doubts raised at 

trial as to the nexus between the patented features and 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 7

the success. See Pregis, 700 F.3d at 1356 (“The lack of 

nexus between the claimed subject matter and the commercial success or purportedly copied features . . . renders 

[] proffered objective evidence uninformative to the obviousness determination.”). Furthermore, the court noted, 

Everlight had presented substantial evidence of simultaneous invention of the alleged invention by Osram, a 

competitor of Nichia. Everlight, 2016 WL 8232553, at 

*12−13 (citing Geo. M. Martin Co. v. All. Mach. Sys. Int’l 

LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010)). Thus, a 

reasonable jury could have found that secondary considerations did not weigh in favor of nonobviousness.

We agree with the district court that substantial evidence supports the jury verdict of invalidity. Every 

element of the claimed invention was separately present 

in the prior art, and the jury heard evidence that a person

of ordinary skill at the time of invention would have 

desired to combine a blue-to-yellow phosphor with a blue 

LED to produce white light, and would have been aware 

of YAG as a useful blue-to-yellow phosphor. This evidence is sufficient for a reasonable jury to conclude that 

the asserted claims would have been obvious. As to 

secondary considerations, the jury heard evidence which 

weighed in both directions and evidence attacking the 

credibility of the various asserted secondary considerations. For example, the jury heard evidence of independent development by Osram of a white LED “within weeks 

of Nichia.” Id. at *12; see J.A. 17817−19, 20353−55. 

Furthermore, the jury heard evidence undermining 

whether Nichia’s evidence of commercial success and 

contemporary praise were actually due to the claimed 

invention and whether Nichia’s expert was unbiased. See 

Everlight, 2016 WL 8232553, at *12−13; see also J.A. 

18019, 21808, 22447−49 (awards and licenses that cover 

products beyond the inventions in the Patents-in-Suit). A 

reasonable jury could have drawn a variety of conclusions 

regarding the strength and credibility of the evidence. We 
8 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

will not reweigh that evidence here. See In re Inland 

Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001); cf. Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) 

(“Because the district court duly instructed the jury to 

consider and weigh evidence of secondary considerations, 

this court sees no reason to disturb the jury’s determination that this important factual evidence did not outweigh 

its assessment of obviousness in light of the prior art.”).

Nichia argues before this court that a person of ordinary skill would not have been motivated to combine a 

blue LED with a YAG phosphor because (1) the disclosure 

of blue LEDs in the prior art focused on a so-called “threecolor” solution in which multiple phosphors produced a 

combination of red, green, and blue light to achieve white 

light rather than the “two-color” solution of the ’925 

patent (i.e. blue + yellow), Appellant’s Br. 30−33; (2) a 

person of ordinary skill would not have recognized useful 

properties of YAG phosphors such as moisture resistance, 

id. at 30−33, 47−48; and (3) the prior art discouraged use 

of YAG with a blue light source because of poor color 

rendering, id. at 43−47. We disagree on all points. 

First, it is not necessary that the prior art teach a 

two-color solution in order for the jury verdict to be supported by substantial evidence.3 It is sufficient that the 

prior art recognize that blue LEDs can be combined with 

phosphors to produce varying light profiles,4 that combi3 Although we do not reach this point, we recognize 

that both the district court and Everlight pointed to 

statements in the prior art which suggest a two-color 

solution. See, e.g., J.A. 18524−27; J.A. 19759 col. 9, ll. 

45−50, col. 10, l. 66 − col. 11, l. 6; see also ’925 patent col. 

1, l. 56 − col. 2, l. 7 (describing prior art).

4 We recognize that Everlight’s expert made arguably 

inaccurate statements at trial regarding whether Baretz 

and Tadatsu disclose a blue-to-yellow phosphor. See J.A. 

 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 9

nation with a blue-to-yellow phosphor would yield white 

light, and that a strong market demand existed for a 

white LED. See Everlight, 2016 WL 8232553, at *9 (“[I]t 

was known that blue LEDs could be combined with phosphors to change the color of light emitted by the LED.” 

(citing trial exhibits and transcript)), id. (“[I]t has been 

known for over 300 years that mixing blue and yellow 

light results in white light (citing trial transcript)), id. at 

*10 (“[It was an] undisputed fact that there was a large 

market demand for white LEDs. . . . Nichia’s expert 

conceded [that] the development of a commercially viable 

blue LED ‘gave everyone the inventive to move forward to 

create a simple blue plus yellow LED that emits white 

light.’” (quoting trial transcript)).

We further disagree that a person of ordinary skill 

needed to be aware of the moisture-resistant properties of 

YAG to satisfy the motivation to combine requirement. It 

is sufficient to support the jury verdict that a person of 

ordinary skill would desire to combine a blue-to-yellow 

phosphor with a blue LED and that YAG was one of a 

limited number of available blue-to-yellow phosphors. See 

KSR, 550 U.S. at 421 (“When there is a design need . . . to 

solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in 

the art has good reason to pursue the known options 

within his or her technical grasp.”). Given that significant motivation to use a YAG phosphor, it does not matter 

17581−82 (stating that Baretz discloses using blue light 

and yellow phosphor to achieve white light); see also J.A. 

17600−08 (making similar statements with respect to 

Tadatsu). Because other evidence before the jury was 

sufficient to support a finding of obviousness, and because 

Nichia had the opportunity to cross-examine Everlight’s 

expert, we decline to reweigh the evidence presented to 

the jury.

 
10 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

that YAG may provide properties unappreciated at the 

time of invention which are superior to other blue-toyellow phosphors; even if the prior art did not identify all 

of the problems identified by Nichia in the ’925 patent’s 

specification, we have never required a party to prove 

that all possible problems solved by an invention were 

known in the prior art. Proof of one motivation to combine, as shown here, is sufficient.5 

We also disagree that the statements in the prior art 

that YAG phosphors provided poor color rendering taught 

away from the claimed invention.6 See Appellant’s Br. 43 

(quoting J.A. 19786 (stating YAG “is detrimental to the 

colour rendition properties”), 20410 (“The emission contribution of YAG . . . would definitely result in a lower 

5 Nichia also does not contest that Baretz sought to 

solve the problem of general degradation by elements 

such as heat and light, see Appellant’s Br. 30–31; see also 

Baretz col. 5 ll. 2−8, col. 9 ll. 65−66 (discussing degradation), nor that YAG was known in the prior art to be 

resistant to at least intense light degradation, see Appellant’s Br. 12 (“YAG had previously been used in cathode 

ray tubes but its resistance to light and moisture had not 

been appreciated because, unlike LEDs, cathode ray tubes 

are hermitically sealed against moisture.”). “[A]ny need or 

problem known in the field of endeavor at the time of 

invention and addressed by the patent can provide a 

reason for combining the elements in the manner 

claimed.” KSR, 550 U.S. 398, 420 (2007) (emphasis 

added).

6 Nichia makes the same arguments for color rendering with respect to lack of reasonable expectation of 

success and unrecognized problem in the field as with the 

moisture resistant properties of YAG. See Appellant’s Br. 

47−48. For the reasons stated above, we find these arguments unpersuasive.

 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 11

CRI [color rendering index].”)). Teaching away is a question of fact and requires a showing that a skilled artisan

“would be discouraged from following the path set out in 

the reference, or would be led in a direction divergent 

from the path that was taken by the applicant.” In re 

Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). A person of 

ordinary skill desiring to create a white LED could plausibly look to the cited prior art references despite their 

statements on color rendition because they aided in the 

creation of a white LED, which was a highly desired goal. 

Without additional evidence, the jury could reasonably

have found that the color rendition properties of the prior 

art would not have taught away from the creation of a 

white LED. 

B. The ’960 Patent

The ’960 patent is directed to a similar LED/phosphor 

system as the ’925 patent without the YAG phosphor 

limitation. Instead, the ’960 patent teaches that the 

phosphor is concentrated near the surface of the LED chip 

to minimize environmental degradation. Claim 2 of the 

’960 patent, the only claim at issue in this appeal, can be 

written in independent form as follows:

2. A light emitting device which comprises;

a light emitting component having a gallium nitride based semiconductor; and

a resin containing at least one phosphor capable of 

absorbing a part of a first light of blue color emitting from the light emitting component and emitting a second light of wavelength different from 

that of the absorbed first light, said emission of 

the second light emitted from at least one fluorescent material and a light of an unabsorbed first 

light passes through said fluorescent material 

from said light emitting component, said unab-
12 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

sorbed first light and said second light are capable 

of overlapping each other to make white light;

wherein a concentration of the phosphor increases 

from the surface of a resin that contains the phosphor toward the light emitting component. 

’960 patent col. 30, l. 65 – col. 31, l. 19. In addition to 

Baretz and Tadatsu, Everlight presented Japanese Patent 

Publication No. 52-40959 (JP-959) to demonstrate that 

the fabrication of resins with a phosphor gradient was 

known in the prior art. JP-959 describes a process for 

curing phosphor-infused resins in which gravity is allowed to concentrate the phosphor. Figure 1C of that 

reference shows that when the resin/chip combination is 

placed with the chip below the resin, the phosphor concentrates on the surface of the chip. The reference further 

teaches that the phosphor within the resin “settles downward” and “is concentrated.” J.A. 19881–82. Based on 

JP-959, Baretz, Tadatsu, and expert testimony from both 

parties, the jury rendered its verdict of obviousness.

The district court determined that the jury verdict 

was supported by substantial evidence because JP-959 

disclosed a phosphor gradient in Figure 1C and taught 

that the phosphor “settles downward” and “is concentrated.” With regard to motivation to combine, the district 

court found that the jury had heard evidence that Baretz 

discussed various configurations of the phosphor to avoid 

degradation, and that there were a limited number of 

ways to disperse the phosphor within the resin. See 

Everlight, 2016 WL 8232553, at *13.

On appeal, Nichia argues that JP-959 did not in fact 

disclose the gradient of claim 2 of the ’960 patent because 

Figure 1C was only an intermediate step, and the goal of 

JP-959 was to concentrate the phosphor on the outer 

surface of the resin, rather than the inner surface. We 

agree with Nichia that a person of ordinary skill following 

the steps of the JP-959 reference to completion would not 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 13

produce the ’960 patent’s claimed gradient. However, we 

conclude that a reasonable jury could find that an artisan 

of ordinary creativity would be drawn to use the teachings 

of the JP-959 patent, including that the phosphor “settles 

downward” and “is concentrated,” and the teachings of 

Baretz that the phosphor should be configured away from 

the surface to avoid degradation to produce the phosphor 

gradient of the ’960 patent.

Nichia also argues that a skilled artisan would not be 

motivated to combine Baretz and JP-959 because Baretz’s 

teachings to avoid “degradation” are insufficient guidance 

and the specific problem which the phosphor gradient 

solved, degradation due to moisture, was not identified in 

the prior art. See Appellant’s Br. 57−59. We disagree. 

Baretz teaches that the phosphor should be deployed 

within the LED assembly in a way that it is “not subject 

to abrasion, or degradation,” and gives several examples 

of the ways in which it can be so deployed. J.A. 19768 col. 

9, l. 51 – col. 10, l. 19. A reasonable jury could conclude 

that an artisan of ordinary creativity would assess the 

phosphor location according to the guidance of Baretz and 

deploy it near the surface of the LED chip according to the 

teachings of JP-959.7

II. Inequitable Conduct

We review the district court’s factual findings regarding inequitable conduct for clear error, and the ultimate 

7 Nichia also reiterates its arguments regarding the 

jury’s alleged failure to weigh its secondary consideration 

evidence. We reject these arguments for the same reasons 

stated above for the ’960 patent. Because we conclude 

that the jury verdict of invalidity is supported by substantial evidence, we decline to address Everlight’s argument 

that the term “white light” in claim 2 of the ’960 patent is 

indefinite.

 
14 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION

decision as to inequitable conduct for abuse of discretion. 

Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 

1357, 1365 (Fed. Cir. 2008). “If the district court’s inequitable conduct determination rests on a clearly erroneous 

finding of materiality or intent, it constitutes an abuse of 

discretion and must be reversed.” Am. Calcar, Inc. v. Am. 

Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011). 

Generally, “[t]o prove inequitable conduct, the accused 

infringer must provide evidence that the applicant 

(1) misrepresented or omitted material information, and 

(2) did so with specific intent to deceive the [U.S. Patent 

and Trademark Office].” Id. Intent must be shown by 

clear and convincing evidence, and must be “the single 

most reasonable inference able to be drawn from the 

evidence.” Therasense Inc. v. Becton, Dickinson & Co., 

649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc). 

Everlight argued before the district court that statements in the ’960 patent specification submitted to the 

U.S. Patent and Trademark Office (USPTO) that the 

inventors achieved an LED with peak wavelengths “near 

600 nm” were intentionally false. J.A. 60–61. The district 

court held that Everlight had not shown but-for materiality because it had not sufficiently questioned the inventors

to establish a record that their statements to the USPTO 

were actually false. Everlight, 143 F. Supp. 3d at 658−59. 

The district court additionally concluded that Everlight 

had not shown specific intent to deceive the USPTO 

because the single most reasonable inference to be drawn 

from the evidence was that “the inventors should have

been more careful in keeping a record of this information 

and documenting their findings.” Id. at 662 (emphasis in 

original).

We see no reversible error in the district court’s finding that a mere showing that documents should have been 

submitted to the USPTO but have been lost, without a 

showing of additional facts probative of intent to deceive, 

does not rise to the level of specific intent under this 
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 15

court’s precedent. See Therasense., 649 F.3d at 1290 (“In 

a case involving nondisclosure of information, clear and 

convincing evidence must show that the applicant made a 

deliberate decision to withhold a known material reference.”) (emphasis in original). Because we agree that the 

requisite showing of specific intent is lacking, we need not 

reach the issue of but-for materiality. See id. (“To prevail 

on a claim of inequitable conduct, the accused infringer 

must prove that the patentee acted with the specific 

intent to deceive the PTO.”).

CONCLUSION

We have considered all of the parties’ other arguments and find them unconvincing. For the foregoing 

reasons, the opinion of the district court is

AFFIRMED

COSTS

No costs.