Trials@uspto.gov
`571-272-7822
`
`
` Paper 41
`
`Entered: September 15, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`____________
`
`IPR2020-00579
`Patent 7,781,789 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2020-00579
`Patent 7,781,789 B2
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`
`I. INTRODUCTION
`Satco Products, Inc. (“Petitioner”), filed a Petition requesting an inter
`partes review of claims 1, 3, 5, 9, 12, 13, 15, 18, 28, 29, 31, 33, 37, 40, 41,
`43, 47, and 56 of U.S. Patent No. 7,781,789 B2 (Ex. 1001, “the ’789
`patent”). Paper 1 (“Pet”). The owner of the ’789 patent, The Regents of the
`University of California (“Patent Owner”), filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”).
`We instituted review on September 16, 2020. Paper 8 (“Institution
`Dec.”). Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 16 (“PO Resp.”)), Petitioner filed a Reply (Paper 21
`(“Reply”)), and Patent Owner filed a Sur-Reply (Paper 28 (“Sur-Reply”)).
`A transcript of the oral hearing held on June 14, 2021, has been entered into
`the record as Paper 36 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that the challenged claims are unpatentable.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify several related district court cases, including
`Satco Products, Inc. v. The Regents of the University of California, 2:19-cv-
`06444, in the Eastern District of New York (“the Satco Litigation”). Pet. 1–
`2; Paper 3, 2. In the Satco Litigation, Petitioner filed a complaint seeking a
`declaratory judgment of non-infringement. Pet. 4. In addition, there are
`several other pending petitions for IPR challenging patents related to the
`’789 patent, including IPR2020-00695, IPR2020-00780, IPR2020-00813,
`IPR2021-00661, IPR2021-00662, and IPR2021-00794.
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`Patent 7,781,789 B2
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`B. The ‘789 patent
`The ’789 patent, entitled “Transparent Mirrorless Light Emitting
`Diode,” describes an “(Al, Ga, In)N light emitting diode (LED) in which
`multi-directional light can be extracted from one or more surfaces of the
`LED.” Ex. 1001, 5:15–17. In particular, the ’789 patent discloses that “[i]n
`conventional LEDs, in order to increase the light output power from the
`front side of the LED, the emitting light is reflected by the mirror on the
`backside of the sapphire substrate or the mirror coating on the lead frame.”
`Id. at 6:31–34. Because the energy of the photons in the emitted light is
`close to the band-gap energy of the emitting layer of the LED, reflected light
`may be re-absorbed by the emitting layer. Id. at 6:37–40. This reduces the
`efficiency and output power of the LED. Id. at 6:40–42. To increase
`efficiency of the LED, the ’789 patent “minimizes internal reflections within
`the LED by eliminating mirrors and/or mirrored surfaces, in order to
`minimize re-absorption of the LED’s light.” Id. at 5:36–38. To achieve this,
`all layers of the LED, except the emitting layer, may be transparent for the
`emission wavelength of the LED. Id. at 5:34–35.
`Figures 4A and 4B of the ’789 patent are reproduced below.
`
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`Patent 7,781,789 B2
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`Figures 4A and 4B of the ’789 patent are schematic illustrations of an LED
`that emits light from multiple sides of the LED as described in the patent.
`Id. at 7:15–19. The LED chip comprises emitting layer 400, n-type GaN
`layer 402, p-type GaN layer 404, and glass plate 410. Id. at 7:45–48. “The
`LED is attached and wire bonded 416 to a lead frame 418 via the LED’s
`bonding pads 420, 422.” Id. at 7:50–51. Because lead frame 418 “supports
`the LED at the edges of the glass 410 leaving the emitting surface of the
`glass 410 and LED unobstructed,” the ’789 patent states that the LED “is
`designed to effectively extract light 424 from both sides of the LED, because
`the frame 418 does not obstruct the surfaces 412 and 414, i.e., the back side
`426 of the LED as well as the front side 428 of the LED.” Id. at 8:2–9.
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`C. The Challenged Claims
`Petitioner challenges claims 1, 3, 5, 9, 12, 13, 15, 18, 28, 29, 31, 33,
`37, 40, 41, 43, 47, and 56 of the ’789 patent. Claims 1, 28, 29, and 56 are
`independent. Claims 1 and 28 are representative:
`
`1. An opto-electronic device, comprising:
`
`a light emitting diode (LED) that emits light out of the LED
`from multiple sides of the LED, wherein all layers of the
`LED are transparent for an emission wavelength except for
`an emitting layer.
`28. An opto-electronic device, comprising:
`
`a light emitting diode (LED) that emits light out of the LED
`from multiple sides of the LED, wherein the LED resides on
`a transparent plate in a lead frame that allows the light to be
`extracted from two or more sides of the LED.
`Ex. 1001, 14:28–32, 15:40–45.
`
`Claims 29 and 56 are substantively similar to claims 1 and 28,
`respectively, but claim methods of making the opto-electronic devices of
`claims 1 and 28. To the extent our analysis herein focuses on claims 1 and
`28, it should be understood to apply equally to claims 29 and 56. The parties
`do not provide separate analyses for the device and method claims.
`Claims 3, 5, 9, 12, 13, 15, and 18 depend directly or indirectly from
`claim 1, while claims 31, 33, 37, 40, 41, 43, and 47 depend from directly or
`indirectly from claim 29. The additional limitations of the dependent claims
`are mirrored across each set (i.e., the additional limitations of claims 3 and
`31 are the same, claims 5 and 33 are the same, etc.).
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C. §1 Basis
`1, 9, 29, 37
`102(b)
`Nishida2
`12, 13, 15, 40, 41,
`103(a)
`Nishida, Admitted Prior Art3
`43
`(“APA”)
`3, 5, 31, 33
`Nishida, APA, Lester,4 Tadatomo5
`3, 5, 31, 33
`Nishida, Krames,6 Tadatomo
`12, 13, 15, 18, 40,
`Nishida, Basin7
`41, 43, 47
`
`103(a)
`103(a)
`103(a)
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 102 and § 103 that
`became effective on March 16, 2013. Because the ’789 patent issued from
`an application that was a continuation of an application filed before March
`16, 2013, we apply the pre-AIA version of the statutory basis for
`unpatentability.
`2 Nishida, T. et al., “Highly Transparent Structure for Nitride Ultraviolet
`Light Emitting Diodes.” 42 JPN. J. APPL. PHYS. 2273–2277, Apr. 2003
`(Ex. 1004).
`3 Petitioner identifies three figures of the ’789 patent (Ex. 1001, Figs. 1–3)
`and their accompanying written description (id. at 6:27–7:13) as “Admitted
`Prior Art.” Pet. 6.
`4 U.S. Patent No. 6,091,085 to Lester, issued July 18, 2000 (Ex. 1019).
`5 Tadatomo, K. et al. “High Output Power Near-Ultraviolet and Violet
`Light-Emitting Diodes Fabricated on Patterned Sapphire Substrates Using
`Metalorganic Vapor Phase Epitaxy,” Proceedings of SPIE – the International
`Society for Optical Engineering, vol. 5187, Third International Conference
`on Solid State Lighting, (26 January 2004): 243–249. Bellingham,
`WA:SPIE, c2004 (Ex. 1020).
`6 U.S. Patent No. 5,779,924 to Krames et al., issued July 4, 1998 (Ex. 1005).
`7 U.S. Published Patent Appl. No. 2006/0105484 A1 to Basin et al.,
`published May 18, 2006 (Ex. 1006).
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`
`Claims Challenged 35 U.S.C. §1 Basis
`28, 56
`102(b)
`Okamoto8
`28, 56
`103(a)
`Okamoto, Ishizaka9
`28, 56
`102(b)
`Miyahara10
`
`Pet. 4–5. Petitioner submits the Declaration of Russell D. Dupuis, Ph.D.
`(Ex. 1003) in support of its arguments. Patent Owner submits the
`declarations of E. Fred Schubert, Ph.D., M.S. (Exs. 2001 and 2006) in
`support of its arguments.
`Petitioner alleges that each of the asserted references except Basin are
`prior art to the ’789 patent under 35 U.S.C. § 102(b), whereas Basin is prior
`art under § 102(a) and (e). Pet. 14–17. Petitioner also refers to several
`references not asserted as part of any ground and alleges that they are also
`prior art under § 102(b). Id. at 15 (referring to Ex. 1005 (“Krames-924”)),
`16–17 (referring to Ex. 1016 (“Ishizaka-361”)). Patent Owner does not
`challenge the prior-art status of any reference. See generally PO Resp.; Sur-
`Reply. We find that the references are prior art to the ’789 patent.
`
`
`8Japan Patent App. Pub. No. 2000/277808A, published Oct. 6, 2000
`(Ex. 1008) (certified English translation). The original Japanese-language
`document is in the record as Exhibit 1009. Citations herein are to the
`English translation, the accuracy of which has not been challenged.
`9 U.S. Published Patent Appl. 2003/0151361 A1 to Ishizaka, published Aug.
`14, 2003 (Ex. 1016).
`10 Japan Patent App. Pub. No. 2005/035864A to Miyahara, published Feb.
`10, 2005 (Ex. 1011) (certified English translation). The original Japanese-
`language document is in the record as Exhibit 1012. Citations herein are to
`the English translation, the accuracy of which has not been challenged at this
`stage of the proceedings.
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`
`III. ANALYSIS
`A. Level of Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. See Al-Site
`Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in
`the art also informs the claim-construction analysis. See Teva Pharm. USA,
`Inc. v. Sandoz, Inc., 574 U.S. 318, 332 (2015) (explaining that claim
`construction seeks the meaning “a skilled artisan would ascribe” to the claim
`term “in the context of the specific patent claim” (emphasis omitted)).
`Petitioner asserts that a person of ordinary skill in the art “would have
`been knowledgeable regarding conventional designs and fabrication
`techniques pertaining to LEDs, including LED package designs, and would
`have had at least 2 years of experience in LED design and fabrication as well
`as at least a master’s degree in a relevant field (e.g., chemical engineering,
`materials engineering, or electrical engineering), or alternatively would have
`an equivalent combination of advanced education and practical experience.”
`Pet. 10 (citing Ex. 1003 ¶¶ 23–25). Patent Owner contends that the person
`of ordinary skill “would have had at least a B.S. degree in mechanical or
`electrical engineering or a related field, and three years of experience in
`designing semiconductor LED packages.” Prelim. Resp. 3; Ex. 2006 ¶ 73.
`Patent Owner adds that “a higher level of education or skill might make up
`for less experience (for example, an M.S. in any of the above fields and two
`years of practical experience would qualify one as a [person of ordinary skill
`in the art] (POSITA).” Id. (citing Ex. 2001 ¶ 67); Ex. 2006 ¶ 73.
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`Both parties appear to be in general agreement regarding the level of
`skill, and neither party contends that any differences between their proposals
`would have any effect on our analysis of Petitioner’s challenges. Although
`we encouraged the parties to address any material differences between the
`two proposals in post-institution briefing (see Institution Dec. 8), neither
`party addressed the issue. See generally PO Resp.; Reply; Sur-Reply. We,
`therefore, adopt a level of ordinary skill that encompasses a person with a
`degree in mechanical or electrical engineering or a related field and the
`equivalent of several years of experience in designing semiconductor LED
`packages.
`
`B. Claim Construction
`For petitions filed on or after November 13, 2018, such as the one in
`this case, we interpret claims in the same manner used in a civil action under
`35 U.S.C. § 282(b), “including construing the claim in accordance with the
`ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b) (2021). Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017). In our Institution Decision, we noted the parties’
`dispute over the meaning of the term “lead frame” and provided a
`preliminary construction, but held that the term “transparent” (which had
`been briefed only by Petitioner) did not require construction. Institution
`Dec. 9–12.
`Based on post-institution briefing, we determine that only the
`construction of “lead frame” is necessary to resolve the issues in
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`controversy. See PO Resp. 3 (“[T]he only claim term necessary to resolve
`the issues in controversy, is the term ‘lead frame.’”); Reply 4–11 (addressing
`only the construction of “lead frame”).
`In the Institution Decision, we noted two issues to be resolved
`regarding the construction of “lead frame”: (1) whether the transparent plate
`may be considered a part of the lead frame; and (2) whether specific
`components (e.g. leads) of the lead frame must provide support to the LED
`chip. Institution Dec. 9–12. For purposes of institution, we determined that
`“the transparent plate may be a part of the lead frame” (id. at 11) and “the
`lead frame structure, as a whole, provides support to the LED” (id. at 11–
`12). We then adopted a construction proposed by ITC Staff in a related
`Investigation—“a support structure for providing an interface to a
`semiconductor die.” Id. at 12. The ITC later adopted this construction. See
`Ex. 3002, 11–14.11
`Subsequent to institution, both parties agree that the transparent plate
`may be considered a part of the lead frame. PO Resp. 4; Reply 4; Sur-Reply
`2. The parties also agree that the lead frame provides support to the LED
`chip. Id.
`The parties, however, continue to disagree whether the leads
`themselves must provide support to the LED chip.12 PO Resp. 4; Reply 6.
`
`
`11 The parties forwarded a copy of the ITC’s Markman Order in 337-TA-
`1220, dated June 15, 2021, to notify us of the decision. We have entered the
`order as Board Exhibit 3002.
`12 Although Patent Owner contends that “the parties agree that the
`conductive leads must provide structural support to the LED” (PO Resp. 5),
`Petitioner disagrees (Reply 5–6).
`
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`According to Patent Owner, “the leads in a lead frame provide mechanical or
`structural support to the LED chip” by either “directly support[ing] the LED
`chip (in the absence of a transparent plate) or indirectly support[ing] the
`LED chip through the transparent plate (in the presence of a transparent
`plate).” PO Resp. 7. Although Petitioner understood Patent Owner’s
`argument to be “that a lead frame has at least two leads and all leads must
`provide structural support” (Reply 7), in the Sur-Reply, Patent Owner
`clarifies that its position is that “some or all of the leads” provide structural
`support. Sur-Reply 3.
`As detailed below, we disagree with Patent Owner that the term “lead
`frame,” as recited in the challenged claims, requires that any component lead
`provide support to the LED chip. Instead, we maintain our construction
`from the Institution Decision that “lead frame” in this context means a
`support structure for providing an interface to a semiconductor die, where
`the lead frame structure, as a whole, provides the support to the
`semiconductor die.
`Patent Owner provides several arguments in support of its proposed
`construction requiring at least one lead to provide structural support to the
`LED chip. First, Patent Owner contends that the plain meaning of the term
`“lead frame” requires that the leads must form “the structural frame
`supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n
`its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.”
`Id. We do not find this conclusory statement helpful in determining whether
`the leads in a lead frame are required to provide structural support to the
`LED chip. Patent Owner does not provide any evidence, intrinsic or
`extrinsic, that the plain meaning of the term “lead frame” requires that any
`
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`leads provide direct or indirect support to the LED chip. In fact, Patent
`Owner refers to several dictionary definitions of the term “lead frame,” none
`of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4
`(“Lead Frame. The metallic portion of a component package that is used to
`interconnect with semiconductor die by wire bonding and to provide output
`terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a
`solid-state device package that achieves electrical connection between the
`die and other parts of the system of which the IC is a component. . . .);
`Ex. 1026, 3 (“lead frame the metallic portion of the device package that
`makes electrical connections from the die to other circuitry”).
`Second, Patent Owner argues that a person of ordinary skill in the art
`would have understood the term “lead” to have a different meaning than the
`term “lead frame,” and “the role of the conductive material in providing
`structural support is part of what distinguishes a ‘lead frame’ from ‘leads.’”
`PO Resp. 5; Sur-Reply 3 (“The very fact that lead and lead frame are
`separate terms indicates that the leads in a lead frame have some distinct or
`separate function.”). Patent Owner, however, does not point to any
`evidence, intrinsic or extrinsic, that it is the leads’ role in providing
`structural support that distinguishes the two terms. See id. Moreover,
`because we construe the term “lead frame” to potentially include other
`components, in addition to leads, the two terms already have different
`meanings. Thus, we are not persuaded that the absence of a role in
`supporting the LED chip renders the term “lead frame” indistinguishable
`from the term “leads.”
`
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`Third, Patent Owner argues that because under some circumstances
`not relevant to the claims at issue,13 it is possible that the lead frame includes
`only the leads, the leads necessarily provide support even in the presence of
`other, optional, components. Sur-Reply 2–3 (“[T]he fact that a transparent
`plate is allowed, but not required, indicates that the leads provide support
`whether or not a transparent plate is present.”). Again, Patent Owner does
`not provide any evidence to support this conclusion. See id. We also do not
`follow the logic of the argument. Patent Owner itself allows that the support
`given by leads may change in the presence of a transparent plate. See PO
`Resp. 7 (“The leads either directly support the LED chip (in the absence of a
`transparent plate) or indirectly support the LED chip through the transparent
`plate (in the presence of a transparent plate).”).
`Fourth, Patent Owner argues that if the leads provide no structural
`support, then the term “lead frame” is essentially meaningless. PO Resp. 6–
`8; Sur-Reply 3–4. According to Patent Owner, all LED chips require both
`structural support and leads, but not all LED packages include lead frames.
`Id. (citing Ex. 1006 (“Basin”) showing what Patent Owner refers to as a
`“chip on board package” that does not include a lead frame). Patent Owner,
`thus, concludes that the term “lead frame” must require something more than
`simply the combination of structural support and leads. PO Resp. 6–8.
`Even accepting the premise that all LED chips require both structural
`support and leads, but not all LED packages include lead frames, it is
`unclear why the differentiating factor for lead frames must be that the leads
`
`
`13 Each of the challenged claims that recites a lead frame requires a
`“transparent plate in the lead frame.” Ex. 1001, 14:29–16:63.
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`themselves provide support. Instead, it seems equally viable that the
`difference between an LED package with a lead frame and one without
`resides in the manner in which the leads are connected to each other and to
`any other potential components of the package. For example, Basin, which
`Patent Owner points to as a “chip on board package” that purportedly does
`not have a lead frame, shows a circuit board supporting both the LED chip
`and the leads themselves. PO Resp. 8 (citing Ex. 1006 ¶ 36). It is possible
`that the relevant difference between Basin and the ’789 patent—why one has
`a lead frame and the other does not—is that the leads in Basin are not
`providing support to the LED chip, as asserted by Patent Owner. However,
`there are other differences between the device in Basin and the device in the
`’789 patent, which also could be the basis for such difference. In other
`words, we see no evidence supporting a presumption that the reason Basin
`lacks a lead frame is that the leads do not provide support to the LED chip.
`And, as Petitioner points out, Basin itself does not use the term “lead frame”
`or provide any other clarification of what the term means. See Reply 11.
`Dr. Schubert’s testimony on the issue does not support such a
`presumption. First, Dr. Schubert states that “structural support from the lead
`frame, itself—and not from a substrate (as discussed below)—is what
`fundamentally distinguishes the lead frame packaging design from other
`packaging designs as in surface mounted packaging/ chip-on-board
`packaging designs.” Ex. 2006 ¶ 63. Nothing in this statement requires any
`particular portion of the lead frame, including the leads, to provide the
`structural support. Later, Dr. Schubert states that in a lead frame package
`“the leads provide support to the LED chip.” Id. ¶ 68. However, the only
`evidence that Dr. Schubert relies upon for this conclusion is the contrast
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`between Basin’s device and that of the ’789 patent.14 Because, as above, we
`see no evidence that the only difference between those two devices is
`whether or not the leads provide support to the LED chip, we do not find Dr.
`Schubert’s conclusion persuasive. We, therefore, agree with Petitioner that
`Basin does not support Patent Owner’s proposed construction.
`Patent Owner also relies on testimony from Dr. Schubert (PO Resp. 7
`(citing Ex. 2006 ¶¶ 63–69, 75–86)) stating that “[t]he leads either directly
`support the LED chip (in the absence of a transparent plate) or indirectly
`support the LED chip through the transparent plate (in the presence of a
`transparent plate).” Ex. 2006 ¶ 86. However, Dr. Schubert does not cite to
`any evidence, intrinsic or extrinsic, supporting this statement. Id. In fact,
`earlier in the same section of his testimony, Dr. Schubert states that (1) “[a]
`lead frame in the context of LEDs is understood by those of skill in the art as
`a support structure for an LED chip that comprises at least two conductive
`leads, an anode lead and cathode lead that are structurally stable and do not
`require support from another component” (Ex. 2006 ¶ 63); (2) “[t]he term
`‘lead frame’ is a very commonly used term in the field of LEDs” that “refers
`to a frame (support structure) for LEDs that includes leads (electrodes) for
`making electrical connections between an LED and other structures (e.g., an
`LED driver or power supply)” (id. ¶ 76); and (3) “[i]n the context of the
`
`
`14 Dr. Schubert also refers to the devices of Shimizu and Ishizaka, which are
`similar to the device in Basin in that they allegedly use chip-on-board
`packaging instead of a lead frame. Id. at 69 (citing Ex. 1017, 8:51–54;
`Ex. 1016 ¶ 33). However, as with Basin, Dr. Schubert does not address the
`other differences between the devices of Shimizu and Ishizaka or explain
`why support provided by leads is the relevant factor distinguishing a lead
`frame package from a chip-on-board package. Id.
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`claims at issue and in light of the specification, the ’789 Patent (and related
`patents) teach that the transparent plate, with the leads is involved in the
`support of the LED chip” (id. ¶ 84).
`However, all of these statements support a finding that the lead frame
`supports the LED chip, but they do not require that any leads support the
`LED chip. Dr. Schubert does not explain the logical step between the
`requirement of the lead frame providing support and the leads of the lead
`frame providing support except to state that “[i]n the context of the claims at
`issue and in light of the specification, the ’789 (and related patents) teach
`that the transparent plate, with the leads, is involved in the support of the
`LED chip” and “[t]herefore, in my opinion a POSITA reading the ’789
`patent would understand that the lead frame recited in the claims include[s] a
`transparent plate, where both the transparent plate and conductive leads
`provide [structural] support to the LED.” Id. ¶¶ 84–85. Because this
`conclusion is not supported by intrinsic or extrinsic evidence, we are not
`persuaded that Dr. Schubert’s testimony provides significant support to
`Patent Owner’s proposed construction.
`Figure 11A of the ’789 patent is reproduced below.
`
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`Figure 11A shows an LED including emitting layer 1100 and sapphire
`substrate 1108. Ex. 1001, 9:66–10:32. “The LED is attached and wire
`bonded 1110 to a lead frame 1112.” Id. at 10:2–3.
`Both parties appear to agree that Figure 11A of the ’789 patent shows
`an anode lead providing at least some structural support to the LED chip.
`PO Resp. 9 (stating that in Figure 11A “lead frame 1112 both (i) supports
`the LED chip and (ii) provides the electrical connection through bonding
`wires 1110”); Reply 8 (showing an annotated version of Figure 11A with a
`portion of element 1112 labelled as “anode lead: structural support”).
`However, neither party directs us to, nor do we see any, disclosure in the
`’789 patent that explicitly states that element 1112 is providing mechanical
`support to the LED chip. See PO Resp. 9 (citing Ex. 1001, 9:66–10:5 (“The
`LED is attached and wire bonded 1110 to a lead frame 1112.”)). Both
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`parties, therefore, appear to base their understanding on the positioning of
`element 1112 in the figure—below the LED chip. Although this disclosure
`is evidence that the leads of a lead frame can provide support to the LED
`chip, Patent Owner has not persuaded us that any of the leads in the lead
`frame are required to provide such support.
`We note that, regardless of the role of the leads in the construction,
`neither party quantifies the amount of support required to be provided to the
`LED chip. See Tr. 12:24–25 (Petitioner’s counsel stating “[i]t is unclear,
`from the patent, what the actual amount of support is required.”); 46:7–10
`(Patent Owner’s counsel stating “[a]nd I know Your Honor asked earlier
`how much support leads provide, and I don’t think that that’s necessarily an
`issue that needs to be resolved because, as we’ll see in the prior art, the leads
`in those particular references are not providing any physical support.”); see
`also Tr. 49:10–11 (Patent Owner’s counsel stating “I don’t know that there’s
`evidence that goes directly to the question of what support means in the
`abstract.”). Our construction, therefore, does not require any particular
`amount of support to be provided to the LED chip by the lead frame. It is
`enough that the lead frame provides any amount of support to the LED chip.
`Accordingly, we maintain our construction from the Institution
`Decision that the term “lead frame,” as recited by the challenged claims,
`means a support structure for providing an interface to a semiconductor die,
`where the lead frame structure, as a whole, supports the LED.
`
`C. Grounds Based on Nishida
`Petitioner asserts several grounds of unpatentability based on Nishida:
`(1) that claims 1, 9, 29, and 37 are anticipated by Nishida; (2) that claims 12,
`13, 15, 40, 41, and 43 would have been obvious over Nishida in view of
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`admitted prior art (“APA”); (3) that claims 3, 5, 31, and 33 would have been
`obvious over the combined disclosures of Nishida, APA, Lester, and
`Tadatomo; (4) that claims 3, 5, 31, and 33 would have been obvious over the
`combined disclosures of Nishida, Krames, and Tadatomo; and (5) that
`claims 12, 13, 15, 18, 40, 41, 43, and 47 would have been obvious over the
`combined disclosures of Nishida and Basin. Pet. 4–5, 25–56.
`In order to find a claim anticipated, we must find not only that all
`elements of a claim are disclosed within the four corners of a single prior-art
`reference, but that the elements are “arranged as in the claim.” Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter 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.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.15 See Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`For the reasons given below, Petitioner has demonstrated
`unpatentability on each ground by a preponderance of the evidence. We
`
`
`15 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
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`begin with an overview of the disclosure of Nishida, and then turn to an
`analysis of each of the grounds.
`
`1. Overview of Nishida
`Nishida, published in April of 2003, reports the merits of nitride
`semiconductor ultraviolet light-emitting diodes having a transparent
`structure. Ex. 1004, Abstract. The LED of Nishida is constructed using
`“sapphire substrates, AlN-template layers, AlGaN alloy buffer layers, and p-
`type contact layers . . . all of which are transparent to the emission.” Id.
`Nishida achieves transparency by using AlGaN instead of binary GaN,
`resulting in what it terms a “GaN-free” structure. Id. at 2273. Figure 1 of
`Nishida is a schematic showing the structure of the GaN-free UV-LED:
`
`
`Figure 1 of Nishida depicts an LED having an active emitting layer of
`Al0.04Ga0.96N-SQW, sandwiched between two blocking layers (labeled p-
`blocking layer and n-blocking layer) and cladding layers (labeled p-SPASL-
`clad and N-SPASL-clad). Id. at 2273–74.
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`Nishida reports the results of experiments performed to confirm the
`transparency of its layers. For example, Figure 4 of Nishida shows the light
`transmitted through its LED wafers at various wavelengths, as compared to a
`GaN-buffer LED. Id. at 2274, Fig. 4. Nishida concludes that “most of the
`probe light passed through the GaN-free LED wafer, which confirms the
`transparency of the GaN-free LED structure.” Id. at 2275. Nishida also
`reports the emissions from both the top and the bottom of its LED in
`Figure 9:
`
`
`As shown in Figure 9, light is emitted from both the top and bottom
`surfaces of Nishida’s LED, with the bottom-side emission approximately
`two times higher than the top-side emission. Id. at 22