Inter Partes Review
`United States Patent No. 7,915,631
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 112868-0001-651
`Customer No. 28120
`Petitioner: VIZIO, Inc.
`
`
`§§§§§§§
`
`United States Patent No.: 7,915,631
`Inventors: Yoshinori Shimizu, et al.
`Formerly Application No.: 12/548,618
`Issue Date: Mar. 29, 2011
`Filing Date: Aug. 27, 2009
`Former Group Art Unit: 2822
`Former Examiner: Michael Trinh
`
`
`For: LIGHT EMITTING DEVICE AND DISPLAY
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,915,631
`
`
`
`
`
`

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`Inter Partes Review
`United States Patent No. 7,915,631
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION AND BACKGROUND IN THE ART ............................. 1 
`
`II.  MANDATORY NOTICES UNDER §42.8 .................................................... 5 
`
`III. 
`
`PETITIONER HAS STANDING .................................................................... 6 
`
`IV.  SUMMARY OF THE ’631 PATENT AND ITS FIELD ................................ 7 
`
`A.  Overview of the ’631 patent .................................................................. 7 
`
`B. 
`
`Overview of the Prosecution History .................................................. 10 
`
`V. 
`
`THERE IS A REASONABLE LIKELIHOOD PETITIONER WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM ....................... 13 
`
`A. 
`
`B. 
`
`C. 
`
`Claim Construction Under §42.104(b)(3) ........................................... 14 
`
`Level of Ordinary Skill and State of the Art ....................................... 14 
`
`Grounds 1-4 (See EX1003¶¶78-187) .................................................. 15 
`
`1. 
`
`2. 
`
`3. 
`
`U.S. Patent No. 6,600,175 (“Baretz”) ....................................... 15 
`
`Japanese Publication No. H7-99345 (“Matoba”) ..................... 19 
`
`U.S. Patent No. 3,699,478 (“Pinnow”) ..................................... 20 
`
`4.  Motivation to Combine Baretz and Matoba (Claims 1-2,
`10-11) ........................................................................................ 22 
`
`5.  Motivation to Combine Baretz and Pinnow (Claims 3-4,
`7-8) ............................................................................................ 24 
`
`6. 
`
`Claim Charts for Grounds 1-4: Baretz in view of the
`knowledge of a POSITA (Ground 1), Baretz in view of
`Matoba (Ground 2), Baretz in view of Pinnow (Ground
`3), Baretz in view of Matoba and Pinnow (Ground 4) ............. 28 
`
`VI.  CONCLUSION .............................................................................................. 57 
`
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`Inter Partes Review
`United States Patent No. 7,915,631
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`
`In re Cree, Inc.,
`818 F.3d 694 (Fed. Cir. 2016) ............................................................................ 25
`
`Nichia Corporation v. Everlight Americas, Inc.,
`Case No. 12-11758 (E.D. Mich.) .......................................................................... 5
`
`Nichia Corporation v. VIZIO, Inc.,
`C.A. No. 8:16-cv-545 (C.D. Cal.) ......................................................................... 5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 14
`
`
`
`STATUTES
`
`35 U.S.C.
`§102(b) ................................................................................................................ 20
`§102(e) ................................................................................................................ 15
`§103 ..............................................................................................................passim
`§112 ....................................................................................................................... 2
`§314(a) ................................................................................................................ 13
`§311-319 .............................................................................................................. 1
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R.
`§1.33(c) .............................................................................................................. 57
`§42.1 ...................................................................................................................... 1
`§42.8 ...................................................................................................................... 5
`§42.8(b)(1) ............................................................................................................ 5
`§42.8(b)(2) ............................................................................................................ 5
`§42.8(b)(3) ............................................................................................................ 5
`§42.8(b)(4) ............................................................................................................ 5
`§42.22 .................................................................................................................... 6
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`Inter Partes Review
`United States Patent No. 7,915,631
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`§42.100 ................................................................................................................ 57
`§42.100(b) ........................................................................................................... 14
`§42.104(a) ............................................................................................................. 6
`§42.104(b) ............................................................................................................. 6
`§42.104(b)(3) ...................................................................................................... 14
`§42.105 ................................................................................................................ 57
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`Inter Partes Review
`United States Patent No. 7,915,631
`
`LIST OF EXHIBITS
`
`Exhibit
`EX1001
`EX1002
`EX1003
`
`EX1004
`EX1005
`EX1006
`EX1007
`
`EX1014
`EX1015
`EX1016
`
`EX1017
`EX1018
`
`EX1019
`
`Description
`U.S. Patent No. 7,915,631 (“the ’631 patent”)
`U.S. Patent No. 7,915,631 File History
`Declaration of Dr. Paul Prucnal In Support of the Petition for Inter
`Partes Review of United States Patent No. 7,915,631
`U.S. Patent No. 6,600,175 (“Baretz”)
`JP Patent Pub. No. H7-99345 with certified translation (“Matoba”)
`U.S. Patent No. 3,699,478 (“Pinnow”)
`Shuji Nakamura, et al., High-power InGaN single-quantum-well-
`structure blue and violet light-emitting diodes, Applied Physics
`Letters, Vol. 67, No. 13, Sept. 25, 1995 (“Nakamura”)
`U.S. Patent No. 8,610,147 File History
`EX1008
`RESERVED RESERVED
`EX1010
`U.S. Patent No. 4,966,862 (“Edmond”)
`EX1011
`U.S. Patent No. 5,369,289 (“Tamaki”)
`EX1012
`U.S. Patent No. 5,777,350 (“Nakamura ‘350”)
`EX1013
`JP Patent Pub. No. H05-152609 with certified translation
`(“Tadatsu”)
`U.S. Patent No. 5,861,636 (“Dutta”)
`U.S. Patent No. 6,258,617 (“Nitta”)
`Excerpt from P. Bhattacharya, Semiconductor Optoelectronic
`Devices, Prentice Hall, 1994 (“Bhattacharya”)
`U.S. Patent No. 5,198,479 (“Shiobara”)
`G. Blasse and B.C. Grabmaier, Luminescent Materials, Springer-
`Verlag, 1994 (“Blasse & Grabmaier”)
`L.G. Van Uitert, et al., Photoluminescent Conversion of Laser
`Light for Black and White and Multicolor Displays. 1: Materials,
`Applied Optics, Vol. 10, No. 1, Jan. 1971 (“Van Uitert”)
`Mary V. Hoffman, Improved Color Rendition In High Pressure
`Mercury Vapor Lamps, Journal of the Illuminating Engineering
`Society, Vol. 6, No. 2, Jan. 1977 (“Hoffman”)
`
`EX1020
`
`iv
`
`

`

`Exhibit
`EX1021
`
`EX1022
`
`EX1023
`
`EX1024
`
`EX1025
`
`EX1026
`EX1027
`EX1028
`
`EX1029
`EX1030
`
`EX1031
`
`EX1032
`
`Inter Partes Review
`United States Patent No. 7,915,631
`
`Description
`J.M. Robertson, et al., Colourshift of the Ce3+ Emission in
`Monocrystalline Epitaxially Grown Garnet Layers, Phillips Journal
`of Research, Vol. 36, No. 1, 1981 (“Robertson”)
`D.A. Pinnow, et al., Photoluminescent Conversion of Laser Light
`for Black and White and Multicolor Displays. 2: Systems, Applied
`Optics, Vol. 10, No. 1, Jan. 1971 (“Van Uitert 2”)
`Opinion and Order Regarding Claim Construction signed by
`District Judge Gershwin A. Drain filed in Everlight Elec. Co. et al.,
`v. Nichia Corp, et al., No. 4:12-cv-11758-GAD (E.D. Mich.)
`G. Blasse and A. Bril, Investigation of Some Ce3+-Activated
`Phosphors, Journal of Chemical Physics, Vol. 47, No. 12, Dec. 15,
`1967 (“Blasse & Bril”)
`D.M. Gualtieri, Cathodoluminescence of Ce:La2Be2O5 single
`crystals, Journal of Luminescence, Vols. 60 & 61,1994
`(“Gualtieri”)
`U.S. Patent No. 4,678,338 (“Kitta”)
`U.S. Patent No. 5,118,985 (“Patton”)
`H. J. Kindl and Thomas St. John, Trident International Inc., High
`Definition TV Projection Via Single Crystal Faceplate Technology,
`Final Report to U.S. Naval Air Systems Command, Naval Training
`Systems Center, for period 11/1/91 to 3/25/93, Accession Number
`AD-A277850 (1994) (“Trident Study”)
`U.S. Patent No. 5,907,222 (“Lengyel”)
`Affidavit of Pamela Stansbury with Shuji Nakamura, et al., High-
`power InGaN single-quantum-well-structure blue and violet light-
`emitting diodes, Applied Physics Letters, Vol. 67, No. 13, Sept. 25,
`1995
`Affidavit of Pamela Stansbury with L.G. Van Uitert, et al.,
`Photoluminescent Conversion of Laser Light for Black and White
`and Multicolor Displays. 1: Materials, Applied Optics, Vol. 10,
`No. 1, Jan. 1971
`Affidavit of Pamela Stansbury with Mary V. Hoffman, Improved
`Color Rendition In High Pressure Mercury Vapor Lamps, Journal
`of the Illuminating Engineering Society, Vol. 6, No. 2, Jan. 1977
`
`v
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`

`Inter Partes Review
`United States Patent No. 7,915,631
`
`Description
`Affidavit of Pamela Stansbury with D.A. Pinnow, et al.,
`Photoluminescent Conversion of Laser Light for Black and White
`and Multicolor Displays. 2: Systems, Applied Optics, Vol. 10,
`No. 1, Jan. 1971
`Affidavit of Pamela Stansbury with D.M. Gualtieri,
`Cathodoluminescence of Ce:La2Be2O5 single crystals, Journal of
`Luminescence, Vols. 60 & 61,1994
`Declaration of Ying Zhang
`Declaration of Mary Oros
`Everlight Electronics Co., Ltd. v. Nichia Corp., Case No. 12-11758
`(E.D. Mich.), 04/22/2015 Trial Transcript (“Jury Verdict”)
`
`Exhibit
`EX1033
`
`EX1034
`
`EX1035
`EX1036
`EX1037
`
`
`
`
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`Inter Partes Review
`United States Patent No. 7,915,631
`Pursuant to §§311-319 and §42.1,1 the undersigned, on behalf of and in a
`
`representative capacity for VIZIO, Inc. (“Petitioner”), petition for inter partes
`
`review (“IPR”) of Claims 1-4, 7-8, and 10-11 (“Claims”) of U.S. Patent No.
`
`7,915,631 (the “’631 patent”), issued to Yoshinori Shimizu, et al. and, according to
`
`USPTO records, now assigned to Nichia Corporation (“Patent Owner”). Petitioner
`
`asserts there is a reasonable likelihood that at least one of the Claims is
`
`unpatentable for the reasons herein and respectfully requests review of, and
`
`judgment against, these claims as unpatentable under §103.
`
`I.
`
`INTRODUCTION AND BACKGROUND IN THE ART
`
`The ’631 patent generally relates to “a light emitting device (LED)
`
`comprising a phosphor, which converts the wavelength of light emitted by a light
`
`emitting component and emits light.” EX1001, 1:24-31. As shown herein, the
`
`supposed “invention” in the Claims was well-known and obvious prior to the
`
`claimed July 29, 1996 priority date.
`
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R. as the context indicates; and all
`
`emphasis and annotations are added unless noted.
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`Inter Partes Review
`United States Patent No. 7,915,631
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`The Claims generally recite conventional features that were well-known
`
`before July 29, 1996.2 The ’631 patent’s specification makes clear that Applicant
`
`did not purport to invent light emitting diodes having a light emitting component
`
`and a fluorescent material that absorbs light emitted by the light emitting
`
`component and emits light of a wavelength different from that of the absorbed light
`
`(wavelength conversion). EX1001, 2:5-22; see also EX1004, 7:19-27; EX1005,
`
`Abstract, Fig. 1; EX1013, Abstract, Fig. 2; EX1003¶41.
`
`Each of the elements in the Claims was unquestionably well-known and
`
`obvious before the claimed priority date. EX1003¶¶41-55. It was, for example,
`
`well-known that an LED chip has an electrode. E.g., EX1004, 12:12-17; EX1007,
`
`1869, Fig. 1; EX1010, 4:5-10, 7:39-46, Figs. 5, 8; EX1011, 4:36-40, 4:44-51, Figs.
`
`1, 2; EX1012, 6:41-48; EX1013¶2; EX1003¶42. It was also well-known that an
`
`electrode on the emitting surface of an LED chip partially blocks light emitted by
`
`the LED chip. E.g., EX1010, 4:5-10; EX1014, 1:22-25, 1:60-62, Figs. 1A, 1B, 2;
`
`EX1011, 1:49-58; EX1003¶43. LED chips with a main emission peak within the
`
`
`2 Petitioner reserves the right to raise in an appropriate forum invalidity based on
`
`§112, as well as the right to argue that the Claims are not entitled to the July 29,
`
`1996 priority date, based on other grounds.
`
`2
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`Inter Partes Review
`United States Patent No. 7,915,631
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`range from 400 nm to 530 nm (and 420 to 490 nm) were also well-known. E.g.,
`
`EX1004, 9:10-18; EX1007, 1868; EX1012, 36:49-51; EX1003¶44.
`
`It was also well-known that LED chips can comprise indium gallium nitride
`
`(InGaN) (e.g., EX1004, 10:24-25; EX1007, 1868; EX1015, 1:10-15, 7:5-7;
`
`EX1003¶45); and sapphire substrates (e.g., EX1004, 10:36-40; EX1007, 1868;
`
`EX1015, 1:16-25; EX1003¶46).
`
`Additionally, it was well-known to have a transparent material covering the
`
`LED chip (e.g., EX1004, 8:58-9:9, Fig. 1; EX1005¶2, Fig. 2; EX1016, 215-216,
`
`Fig. 5.5(b); EX1003¶47); and for the transparent material to be made out of epoxy
`
`resin, urea resin, silicone resin, or glass (e.g., EX1004, 8:58-9:9; EX1005¶¶2, 10;
`
`EX1017, 1:20-25; EX1003¶48). It was also well-known that phosphor contained
`
`in the transparent material absorbs a part of light emitted by the LED chip and
`
`emits light of a wavelength different from that of the absorbed light (e.g., EX1004,
`
`Abstract, 9:4-9, 9:39-50; EX1005¶10, Fig. 2; EX1003¶49); and phosphor diffuses
`
`light and suppresses a formation of an emission pattern by a partial blocking of
`
`light (e.g., EX1004, 7:13-18; EX1005¶¶3, 7, Fig. 2; EX1029, 11:60-63, 12:17-21;
`
`EX1026, 6:23-37, 6:41-43, Fig. 9; EX1027, Abstract, 2:51-58; EX1018, 8, 67-68,
`
`Fig. 3.30a-b; EX1003¶50). It was further well-known to have a concentration of
`
`phosphor in the vicinity of the LED chip that was larger than a concentration of the
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`Inter Partes Review
`United States Patent No. 7,915,631
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`phosphor in the vicinity of the surface of the transparent material. E.g., EX1004,
`
`9:4-9, 8:60-65, Fig. 1; EX1005, Abstract, ¶¶9-10, Fig. 1; EX1003¶51.
`
`Prior to the claimed priority date, it was also well-known to use cerium-
`
`doped yttrium aluminum garnet (YAG) phosphor to down-convert blue light to
`
`generate white light using a source of light emitting within the excitation spectrum
`
`of YAG. E.g., EX1006, 1:37-48, 2:12-26, 4:26-33, Fig. 1; EX1019, 151; EX1020,
`
`89-91; EX1003¶52. It was also well-known that YAG has a crystal structure (e.g.,
`
`EX1006, 3:1-11; EX1019, 151; EX1024, 5139; EX1021, 16-17, Fig. 1;
`
`EX1003¶53); and emits light having a spectrum with a peak in the range from 530
`
`to 570 nm (and 510 to 600 nm) and a tail continuing beyond 700 nm (e.g.,
`
`EX1006, Abstract, 2:12-16, 3:1-5, Fig. 1; EX1018, 124-25, Fig. 6.17, Table 9.7,
`
`184; EX1019, 151, Fig. 2; EX1021, 16; EX1003¶54). Further, it was well-known
`
`that the spectrum of light emitted from YAG and the spectrum of a blue light
`
`source having a peak in the range of 420 to 490 nm overlap with each other to
`
`make a continuous combined spectrum. E.g., EX1006, Abstract, 3:1-8, 2:12-26,
`
`4:26-33, Fig. 1; EX1022, 156, Fig. 2; EX1003¶55.
`
`As demonstrated herein, each and every element of the Claims had been
`
`disclosed in the prior art, and the Claims are at most nothing more than a routine
`
`and predictable combination of these well-known elements. Thus, Petitioner
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`4
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`

`

`respectfully requests that the Board institute trial and find each Claim invalid under
`
`Inter Partes Review
`United States Patent No. 7,915,631
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`§103.
`
`II. MANDATORY NOTICES UNDER §42.8
`VIZIO, Inc. is the Real Party in Interest Under §42.8(b)(1).
`
`Related Matters Under §42.8(b)(2): Patent Owner is currently asserting
`
`claims 1, 4, 7, and 8 of the ’631 patent against Petitioner in Nichia Corporation v.
`
`VIZIO, Inc., C.A. No. 8:16-cv-545 (C.D. Cal.). Patent Owner has also asserted
`
`U.S. Patent Nos. 5,998,925 and 7,531,960, which are in the same family as the
`
`’631 patent, in Nichia Corporation v. Everlight Americas, Inc., Case No. 12-11758
`
`(E.D. Mich.) (the “Michigan case”). In that case, the jury found all asserted claims
`
`invalid for obviousness in view of the prior art, including U.S Patent No. 6,600,175
`
`to Baretz (EX1004) relied upon in this petition. See EX1037 (Jury Verdict);
`
`Federal Circuit Appeal Nos. 16-1577, -1611. In addition, Petitioner has filed, or
`
`will file, concurrent with the present Petition, petitions for inter partes review of
`
`U.S. Patent Nos. 7,901,959, 7,855,092 and 8,309,375, which are in the same family
`
`as the ’631 patent.
`
`Lead and Back-Up Counsel for Petitioner Under §42.8(b)(3) and Service
`
`Information under §42.8(b)(4): Gabrielle E. Higgins (Lead Counsel), Reg.
`
`No. 38,916, gabrielle.higgins@ropesgray.com, P:650-617-4015/F:650-566-4131;
`
`Jordan M. Rossen (Backup Counsel), Reg. No. 74,064,
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`Inter Partes Review
`United States Patent No. 7,915,631
`
`jordan.rossen@ropesgray.com, P:202-508-4759/F:202-508-4650; Mailing address
`
`for all PTAB correspondence: ROPES & GRAY LLP, IPRM–Floor 43, Prudential
`
`Tower, 800 Boylston Street, Boston, MA 02199-3600.
`
`III. PETITIONER HAS STANDING
`
`Under §42.104(a), Petitioner certifies that the ’631 patent is eligible for IPR
`
`and Petitioner is not barred/estopped from requesting IPR. Petitioner was served
`
`with a Complaint on or after April 1, 2016. Neither Petitioner nor any other real
`
`party-in-interest or privy of Petitioner was served with a complaint before that
`
`date, or has initiated a civil action challenging the ’631 patent’s validity.
`
`Claims/Statutory Grounds Under §§42.22, 42.104(b): Petitioner requests
`
`IPR of claims 1-4, 7-8, and 10-11 and asserts the Claims are unpatentable based on
`
`one or more grounds under §103: Ground 1: Baretz in view of the knowledge of a
`
`POSITA render obvious claims 1-2, 10-11; Ground 2: Baretz in view of Matoba
`
`render obvious claims 1-2, 10-11; Ground 3: Baretz in view of Pinnow renders
`
`obvious claims 3-4, 7-8; Ground 4: Baretz in view of Matoba and Pinnow renders
`
`obvious claims 3-4, 7-8.
`
`Section V.C.6 provides claim charts specifying how the relied upon prior art
`
`renders obvious the Claims. In further support of the proposed grounds of
`
`rejection, the Declaration of technical expert, Dr. Paul Prucnal, is attached as
`
`EX1003. See EX1003¶¶1-190.
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`6
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`Inter Partes Review
`United States Patent No. 7,915,631
`
`IV.
`
`SUMMARY OF THE ’631 PATENT AND ITS FIELD
`A. Overview of the ’631 patent
`The ’631 patent generally describes a “Light Emitting Device and Display.”
`
`EX1001, Title. The ’631 patent’s supposed “invention” is described as a “light
`
`emitting diode used in LED display…comprising a phosphor, which converts the
`
`wavelength of light emitted by a light emitting component and emits light.” Id.,
`
`1:27-31. Figure 1 shows “a lead type light emitting diode according to the
`
`embodiment of the present invention.” Id., 6:53-55, Fig. 1.
`
`
`
`As shown in Figure 1, light emitting diode 100 has “a mount lead 105 and an inner
`
`lead 106, wherein a light emitting component 102 [LED chip] is installed on a cup
`
`105a of the mount lead 105, and the cup 105a is filled with a coating resin 101
`
`which contains a specified phosphor to cover the light emitting component 102 and
`
`is molded in resin.” Id., 8:34-40, Fig. 1. “An n electrode and a p electrode of the
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`Inter Partes Review
`United States Patent No. 7,915,631
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`light emitting component 102 are connected to the mount lead 105 and the inner
`
`lead 106, respectively, by means of wires 103.” Id., 8:40-42, Fig. 1. The molding
`
`material 104 “has the function to protect the light emitting component 102, the
`
`conductive wire 103 and the coating material 101.” Id., 16:46-49.
`
`The ’631 patent discloses that both the “coating material [101]” and the
`
`“molding material 104” may be “transparent materials …. such as epoxy resin,
`
`urea resin, silicon resin or glass,” and that “[t]he molding and the coating may also
`
`be made of the same material.” Id., 16:33-37, 16:60-62, 17:9-11, Fig. 1.
`
`Furthermore, “the phosphor may be contained either in the molding material or in
`
`the coating material…[or] in both the coating material and the molding material.”
`
`Id., 16:65-17:4.
`
`In operation, “part of light emitted by the light emitting component (LED
`
`chip) 102…excites the phosphor contained in the coating resin 101 to generate
`
`fluorescent light having a wavelength different from that of LED light, so that the
`
`fluorescent light emitted by the phosphor and LED light which is output without
`
`contributing to the excitation of the phosphor are mixed and output.” Id., 8:43-50.
`
`The ’631 patent also discloses that “[a]ccording to the present invention, the
`
`fluorescent material is preferably yttrium-aluminum-garnet fluorescent material
`
`(YAG phosphor) activated with cerium, or a fluorescent material represented by
`
`the general formula (Re1-rSmr)3(Al1-sGas)5O12:Ce, where 0 ≦r ≦1 and 0 ≦s ≦1, and
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`8
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`Inter Partes Review
`United States Patent No. 7,915,631
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`Re is at least one selected from Y and Gd.” Id., 10:26-32. See generally
`
`EX1003¶¶56-61.
`
`The Claims require “an LED chip having an electrode”; “a transparent
`
`material covering said LED chip”; “a phosphor contained in said transparent
`
`material and absorbing a part of light emitted by said LED chip and emitting light
`
`of wavelength different from that of the absorbed light”; “wherein the main
`
`emission peak of said LED chip is within the range from 400 nm to 530 nm”; “a
`
`concentration of said phosphor in the vicinity of said LED chip is larger than a
`
`concentration of said phosphor in the vicinity of the surface of said transparent
`
`material”; and “said phosphor diffuses the light from said LED chip and suppresses
`
`a formation of an emission pattern by a partial blocking of the light by said
`
`electrode.”
`
`The Claims also variously recite a light emitting diode wherein said “LED
`
`chip” comprises “a sapphire substrate” and “InGaN”; the “phosphor” comprises
`
`“yttrium-aluminum-garnet fluorescent material containing Y and Al,” and the
`
`“phosphor” has a “crystal structure”; the “transparent material” is “selected from
`
`the group consisting of epoxy resin, urea resin, silicone resin, and glass”; the “LED
`
`chip” emits light “having a spectrum with a peak in the range from 420 to 490
`
`nm,” the “phosphor” emits light “having a spectrum with a peak in the range from
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`510 to 600 nm and a tail continuing beyond 700 nm,” and “said spectrum of the
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`Inter Partes Review
`United States Patent No. 7,915,631
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`light emitted from said phosphor and said spectrum of the light emitted with the
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`LED chip overlap with each other to make a continuous combined spectrum”; and
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`the “spectrum of the light emitted from said phosphor has a peak in the range from
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`530 to 570 nm and a tail continuing beyond 700 nm.” EX1001, 30:58-32-13;
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`EX1003¶61.
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`The Claims of the ’631 patent include nothing but components that were
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`well-known in the art being used for their ordinary purpose to obtain expected
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`results. As detailed herein, Applicant did not “invent” anything beyond what was
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`already well-known and understood in the art at the time of the claimed priority
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`date.
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`B. Overview of the Prosecution History
`The application leading to the ’631 patent (Application No. 12/548,618) was
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`filed on August 27, 2009. EX1002, 1-12. On January 25, 2011, the Examiner
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`mailed a Notice of Allowance. Id., 365-67. The ’631 patent issued on March 29,
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`2011, without any Office Actions or amendments to the claims during prosecution.
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`See generally EX1002.
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`On September 14, 2009, Applicant filed a separate related application, U.S.
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`Patent Application No. 12/559,042 (now U.S. Patent No. 8,610,147), which claims
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`priority to the same parent application as the ’631 patent. EX1008, 14-93. During
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`prosecution of that application, the Examiner found limitations like those in the
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`United States Patent No. 7,915,631
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`’631 patent Claims addressed herein were taught by Baretz (EX1004) and Pinnow
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`(EX1006). EX1008, 429-45. For example, on March 16, 2011, the Examiner
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`issued an Office Action rejecting prosecution claims 1-25 as unpatentable under
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`§103 over combinations of prior art, including Baretz and Pinnow. Id., 429-43.
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`In particular, the Examiner found “Baretz teaches, a phosphor contained in
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`said transparent material (20) []and absorbing a part of light emitted by said light
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`emitting chips and emitting light of wavelength different from that of the absorbed
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`light (col 9, ln 5-10), wherein the main emission peak of said light emitting chips is
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`within the range from 400 nm to 530 nm (450 nm, col 9, ln 12)….” Id., 433. The
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`Examiner also found “Baretz teaches, in Fig. 1, that a concentration of said
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`phosphor in the vicinity of at least one of said light emitting chips (concentration
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`of phosphor in transparent material 20 is larger than 0, see col 9, ln 1-10) is larger
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`than a concentration of said phosphor in the vicinity of the surface of said
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`transparent material (concentration of phosphor in housing 11 is 0, see col 8, ln 60-
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`65).” Id., 435.
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`The Examiner further found “Baretz teaches that said phosphor has a crystal
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`structure (col 9, 10-30)” (id.); “Baretz teaches that said phosphor diffuses said light
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`emitted from said light emitting chips (col 7, ln 5-20, it is clear to one of ordinary
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`skill that absorbing and reemitting light would diffuse the light)” (id.); “Baretz
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`teaches that said light emitting chips comprise InGaN (col 10, ln 20-27)” (id.);
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`United States Patent No. 7,915,631
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`“Baretz teaches that said light emitting chips comprise a sapphire substrate (col 10,
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`ln 36-40)” (id.); “Baretz teaches that said transparent material is selected from the
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`group consisting of epoxy resin, urea resin, silicone resin and glass (epoxy resin,
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`col 9, ln 25-30; glass melt, col 9, ln 65 - col 10, ln 5)” (id.); and “Baretz also
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`teaches that said light emitting chips emit a light having a spectrum with a peak in
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`the range from 420 to 490 nm (450 nm, col 9, ln 12)” (id., 439).
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`The Examiner also found “it would have been obvious to one of ordinary
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`skill in the art at the time of the invention to combine the light emitting device of
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`Stinson/Baretz/Furuyama with the phosphor of Pinnow….” Id., 440. The
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`Examiner found “Pinnow teaches, in Fig. 1, that said phosphor emits light having a
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`spectrum (dotted line) with a peak in the range from 510 to 600 nm and a tail
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`continuing beyond 700 nm (clear from the figure), and said spectrum of the light
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`emitted from said phosphor and said spectrum of the light emitted from said light
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`emitting chips overlap with each other to make a continuous combined spectrum
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`(clear from the figure)...(col 1, ln 32-35).” Id., 439. The Examiner also found
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`“Pinnow teaches, in Fig. 1, that said spectrum of the light emitted from said
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`phosphor has a peak in the range from 530 to 570 nm and a tail continuing beyond
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`700 nm (clear from the figure)” (id., 440); and “that said phosphor comprises an
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`yttrium-aluminum-garnet fluorescent material containing Y and Al (col 1, ln 42-
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`48)…” (id.).
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`United States Patent No. 7,915,631
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`On July 18, 2011, Applicant responded by traversing the rejections and
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`making certain claim amendments. Id., 486-92. However, Applicant’s arguments
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`were insufficient to traverse the Examiner’s rejections, and on March 12, 2013, the
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`Examiner issued an Office Action again rejecting the prosecution claims in view of
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`Baretz and Pinnow on the same grounds. Id., 683-702. On July 12, 2013,
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`Applicant responded by amending independent prosecution claims 1, 3, 22 and 24
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`to further require “a transparent material directly covering said light emitting
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`chips” and “wherein the concentration of said phosphor in said second region in
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`said transparent material is larger than zero.” Id., 903-09. The Examiner also
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`required Applicant to submit a new Figure 24 showing the additional claim
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`limitations. Id., 933, 971-76. On November 20, 2013, specifically in view of these
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`amendments adding further limitations to the concentration feature (amendments
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`absent from the ‘631 Claims), the Examiner allowed the amended ‘042 application
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`claims. Id., 995-96. EX1003¶¶62-67.
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`V.
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`THERE IS A REASONABLE LIKELIHOOD PETITIONER WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
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`Petitioner submits there is at least a reasonable likelihood Petitioner will
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`prevail with respect to at least one of the Claims. §314(a). Indeed, as explained
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`herein, all Claims are obvious under §103.
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`Inter Partes Review
`United States Patent No. 7,915,631
`A. Claim Construction Under §42.104(b)(3)
`Because the ’631 patent will likely expire during the requested IPR, to the
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`extent there may be differences here Petitioner construes the ’631 claims under
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`both the broadest reasonable interpretation (“BRI”) for purposes of institution and
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`under Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) for purposes of
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`this review. See §42.100(b); IPR2013-00306, Pap. 12 at 11 (at institution the
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`“patent…has not expired, and…we apply…construction consistent with the
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`[BRI]”; IPR2013-00483, Pap. 37 at 5.
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`For purposes of this review, Petitioner proposes the following claim
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`constructions:
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` “electrode” (C1. 1): For review purposes, this term should be construed to
`mean “conductive contact that couples a semiconductor device to a power
`supply.” See, e.g., EX1001, 5:39-40, 6:53-58, 8:40-42, 8:57-62, 9:5-10,
`27:22-25, Figs. 1, 2; EX1007, Fig. 1, 1869; EX1012, 26:21-24.
` “main emission peak” (C1. 1): In the Michigan case, the district court
`issued a Claim Construction Order construing this term to mean “peak
`emission wavelength.” EX1023, 7-9. For review purposes, to allow an
`analysis of the ‘631 patent under §103, Petitioner submits that the district
`court’s construction may be adopted here. See, e.g., EX1001, 9:15-17.
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`
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`For purposes of this review, Petitioner interprets any remaining terms
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`according to their plain and ordinary meaning consistent with the ’631
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`specification. Petitioner expressly reserves the right to argue in litigation a
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`different claim construction for any term, as appropriate to that proceeding.
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`B.
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`Level of Ordinary Skill and State of the Art
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`United States Patent No. 7,915,631
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`The level of ordinary skill in the art of the ’631 patent is a person having a
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`minimum of a bachelor’s degree in electrical engineering, chemistry or physics, or
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`a related field, and approximately two years of professional experience with
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`optoelectronics, or other relevant experience. Additional graduate education could
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`substitute for professional experience, or significant experience in the field could
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`substitute for formal education. A POSITA is presumed to have knowledge of all
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`relevant prior art, and would thus have been familiar with each of the references
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`cited herein, as well as the background knowledge in the art discussed in §I supra,
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`and the full range of teachings they contain. EX1003¶¶36-38.
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`C. Grounds 1-4 (See EX1003¶¶78-187)
`1.
`U.S. Patent No. 6,600,175 (“Baretz”)
`Baretz (EX1004, filed March 26, 1996), issued July 29, 2003, is prior art
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`under at least §102(e). Baretz describes converting blue light from solid state
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`devices, such as LEDs and lasers, to white light using phosphor. EX1004,
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`Abstract, 1:6-8, 7:38-54, 8:18-25, 9:4-9, 9:39-50. In particular, Baretz teaches a
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`blue or UV LED packaged with “fluorescent organic and/or inorganic fluorescers
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`and phosphors in an