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.
`
`____________
`
`IPR2020-00695
`Patent 9,240,529 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`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.
`
`____________
`
`IPR2020-00695
`Patent 9,240,529 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-00695
`Patent 9,240,529 B2
`
`
`I. INTRODUCTION
`Satco Products, Inc. (“Petitioner”), filed a Petition requesting an inter
`partes review of claims 1, 3, 4, 8–10, 12, 13, 15, 16, 20–22, and 24 (“the
`challenged claims”) of U.S. Patent No. 9,240,529 B2 (Ex. 1001, “the ’529
`patent”). Paper 2 (“Pet”). The owner of the ’529 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 4, 2–3. 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
`’529 patent, including IPR2020-00579, IPR2020-00780, IPR2020-00813,
`IPR2021-00661, IPR2021-00662, and IPR2021-00794.
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`B. The ’529 Patent
`The ’529 patent relates to “LED Light Extraction and white LED with
`high luminous efficacy for optoelectronic applications, and, more
`specifically, relates to a textured phosphor conversion layer LED.” Ex.
`1001, 5:4–7. In particular, the ’529 patent discloses that “[i]n conventional
`white LEDs, the phosphor conversion layer is typically placed directly on
`top of the blue GaN chip.” Id. at 5:14–15. Because photons are converted
`to lower energy photons in that phosphor layer, a large fraction of them are
`internally reflected and reabsorbed by the chip. Id. at 5:17–22. This is
`inefficient. Id. To increase efficiency of the LED, the ’529 patent
`“minimizes the internal reflection of the phosphor layer by preferential
`patterning the emitting surface to direct more light away from the absorbing
`chip structure.” Id. at 5:42–45.
`Figures 8A and 8B of the ’529 patent are reproduced below.
`
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`Figures 8A and 8B of the ’529 patent “illustrate the dual-sided roughened
`phosphor layer of the present invention.” Id. at 7:21–23. LED chip 500
`contains glass plate 510, which is coated with Indium Tin Oxide (ITO) layer
`516, which, in turn, is attached to deposited ITO layer 512 using epoxy as a
`glue. Id. at 10:14–18. “LED chip 500 is put on a lead frame 506” and wire
`bonding 524 and 526 connect bonding pads of LED chip 528 and 530 and
`lead frame 506 and electrode 508 “to allow an electric current to flow
`through the lead frame 506.” Id. at 10:25–30. Lead frame 506 “acts as a
`support around the edges of LED chip 500.” Id. at 10:32–36.
`
`C. The Challenged Claims
`Petitioner challenges claims 1, 3, 4, 8–10, 12, 13, 15, 16, 20–22, and
`24 of the ’529 patent. Claims 1 and 13 are independent. Claim 1 is
`reproduced below:
`1.
`A light emitting device, comprising:
`
`an LED chip emitting light at a first wavelength, wherein
`
`the emitted light is extracted from both front and back sides of
`the LED chip;
`
`a lead frame to which the LED chip is attached, wherein
`the LED chip resides on or above a transparent plate in the lead
`frame that allows the emitted light to be extracted out of the
`LED chip through the transparent plate in the lead frame; and
`
`a phosphor for converting the light emitted by the LED
`chip at the first wavelength to a second wavelength.
`Ex. 1001, 21:62–22:5.
`Claim 13 is substantively similar to claim 1, but recites a method. To
`the extent our analysis herein focuses on claim 1, it should be understood to
`apply equally to claim 13. Claims 3, 4, 8–10, and 12 depend from claim 1,
`and claims 15, 16, 20–22, and 24 depend from claim 13.
`
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Claim(s)
`Challenged
`1, 3, 4, 8, 12, 13,
`15, 16, 20, 24
`9, 10, 21, 22
`9, 10, 21, 22
`
`35 U.S.C.
`§1
`103(a)
`
`Reference(s)/Basis
`
`Okamoto, 2 Shimizu3
`
`103(a)
`103(a)
`
`Okamoto, Shimizu, Lester-0854,5
`Okamoto, Shimizu, Tadatomo6
`
`
`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 ’529 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.
`2Japan 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 at this
`stage of the proceedings.
`3 U.S. Patent No. 5,998,925 (issued Dec. 7, 1999). Ex. 1017.
`4 U.S. Patent No. 6,091,085 (issued July 18, 2000). Ex. 1019.
`5 Petitioner refers to this ground as Okamoto, Shimizu, Lester-085, “and/or
`Tadatomo.” Pet. 5, 56. However, the analysis provided by Petitioner only
`addresses the combinations of Okamoto, Shimizu, and Lester-085 or
`Okamoto, Shimizu, and Tadatomo and does not address a combination of
`Okamoto, Shimizu, Lester-085 and Tadatomo. Pet. 56–60.
`6 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.
`
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`Reference(s)/Basis
`
`35 U.S.C.
`Claim(s)
`§1
`Challenged
`Miyahara7
`102
`1, 12, 13, 24
`Miyahara
`103(a)
`1, 8, 12, 13, 20, 24
`Miyahara, Okamoto, Shimizu
`103(a)
`3, 4, 15, 16
`Miyahara, Lester-0858
`103(a)
`9, 10, 21, 22
`Miyahara, Tadatomo
`103(a)
`9, 10, 21, 22
`Pet. 4–5, 29–80. 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. (Ex. 2001 and Ex. 2006) in
`support of its arguments.
`Petitioner alleges that each of the asserted references is prior art to the
`’529 patent under 35 U.S.C. § 102(b). Pet. 16–21. 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 15–16 (referring to Ex. 1007
`(“Schubert”)), 20 (referring to Ex. 1005 (“Krames-924”) and Ex. 1016
`(“Ishizaka-361”)); Ex. 1003 ¶¶ 65, 226 (also referring to Ex. 1028 (“Fujii”)
`and Ex. 1029 (“Narukawa”)). 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 ’529 patent.
`
`
`7 Japan Patent App. Pub. No. 2005/035864A (published Feb. 10, 2005). Ex.
`1011 (certified English translation).
`8 Petitioner refers to this ground as Miyahara, Lester-085, “and/or
`Tadatomo.” Pet. 5, 78. However, the analysis provided by Petitioner only
`addresses the combinations of Miyahara and Lester-085 or Miyahara and
`Tadatomo and does not address a combination of Miyahara, Lester-085, and
`Tadatomo. Pet. 78–80.
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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. 13 (citing Ex. 1003 ¶¶ 26–27). 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. 2; Ex. 2006 ¶ 25.
`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 ¶ 25.
`
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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 explain 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).
`Based on post-institution briefing, we determine that only the
`construction of “lead frame” is necessary to resolve the issues in
`controversy. See PO Resp. 2 (“[T]he only claim term necessary to resolve
`the issues in controversy, is the term ‘lead frame.’”); Reply 1–13 (addressing
`only the construction of “lead frame”).
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`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. 8–12. For purposes of institution, we determined that
`“the transparent plate may be part of the lead frame” (id. at 10) and “the lead
`frame structure, as a whole, provides support to the LED” (id. at 11). 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 11. The ITC later adopted this construction. See
`Ex. 3002, 11–14. 9
`Subsequent to institution, both parties agree that the transparent plate
`may be considered a part of the lead frame. PO Resp. 3–4; Reply 3; 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. 10 PO Resp. 4; Reply 2.
`According to Patent Owner, “the leads in a lead frame provide structural or
`mechanical 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
`
`
`9 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.
`10 Although Patent Owner contends that “the parties agree that the
`conductive leads must provide structural support to the LED” (PO Resp. 4),
`Petitioner disagrees (Reply 4).
`
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`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 6), 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 5. According to Patent Owner, “[o]n
`its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.”
`Id. at 4. 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
`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
`
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`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.”
`Third, Patent Owner argues that because under some circumstances
`not relevant to the claims at issue, 11 it is possible that the lead frame includes
`only the leads, the leads necessarily provide support even in the presence of
`
`
`11 Each of the challenged claims requires a “transparent plate in the lead
`frame.” Ex. 1001, 14:66–16:59.
`
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`other, optional, components. Sur-Reply 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. 5–
`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. 2009 (“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. 5–7.
`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
`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
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`and the leads themselves. PO Resp. 8 (citing Ex. 2009 ¶ 36). It is possible
`that the relevant difference between Basin and the ’529 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
`’529 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 12–13.
`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
`between Basin’s device and that of the ’529 patent. 12 Because, as above, we
`
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`12 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
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`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.
`6–9 (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 claims at issue and in light of the
`specification, the 529 Patent (and related patents) teach that the transparent
`plate, with the leads is involved in the support of the LED chip” (id. ¶ 84).
`
`
`support provided by leads is the relevant factor distinguishing a lead frame
`package from a chip-on-board package. Id.
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`However, all of these statements support a finding that the lead
`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 ’529 (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 ’529
`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 15 of the ’529 patent is reproduced below.
`
`15
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`Figure 15 shows an LED including LED structure 1502 with an emitting
`layer 1504 and sapphire substrate 1506 with a roughened backside to
`increase the light extraction. Ex. 1001, 11:43–48. “Wire bonds 1518 and
`1520 are added to connect the LED structure 1502 to the lead frame 1522.”
`Id. at 11:58–60.
`Both parties appear to agree that Figure 15 of the ’529 patent shows
`an anode lead providing at least some structural support to the LED chip.
`PO Resp. 8 (stating that in Figure 15 “lead frame 1522 both (i) supports the
`LED chip and (ii) provides the electrical connection through bonding wires
`1518 and 1520”); Reply 7 (showing an annotated version of Figure 15 with a
`portion of element 1522 labelled as “anode lead: structural support”).
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`However, neither party directs us to, nor do we see any, disclosure in the
`’529 patent that explicitly states that element 1522 is providing mechanical
`support to the LED chip. See PO Resp. 8 (citing Ex. 1001, 11:54–60 (“Wire
`bonds 1518 and 1520 are added to connect the LED structure 1502 to the
`lead frame 1522.”)). Both parties, therefore, appear to base their
`understanding on the positioning of element 1522 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,
`
`17
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`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 Okamoto and Shimizu
`Petitioner contends that: (1) claims 1, 3, 4, 8, 12, 13, 15, 16, 20, and
`24 of the ’529 patent are unpatentable, because their subject matter would
`have been obvious over the combined disclosures of Okamoto and Shimizu;
`(2) claims 9, 10, 21, and 22 would have been obvious over the combined
`disclosures of Okamoto, Shimizu, and Lester-085; and (3) claims 9, 10, 21,
`and 22 would have been obvious over the combined disclosures of Okamoto,
`Shimizu, and Tadatomo. Pet. 4–5, 29–60. For the reasons given below,
`Petitioner has shown obviousness by a preponderance of the evidence.
`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.13 See Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`13 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
`
`18
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`1. Overview of Okamoto
`Okamoto is a Japanese Patent Application published October 6, 2000,
`titled “Light Source Device and Manufacturing Method of the Same.” Ex.
`1008, codes (43), (54). Okamoto describes providing a light source device
`with “LED elements 3 and 4 having light distribution characteristics for
`emitting in all directions” on a “light-transmissive substrate 2.” Id. at code
`(57). Figure 1 of Okamoto is reproduced below.
`
`
`Figure 1 of Okamoto shows “a frontal view illustrating a configuration of a
`light source device.”14 Id. ¶ 26. The device includes GaN blue LED
`element 3, GaN green LED element 4, and GaAs red LED element 5a, all
`three of which are “disposed in a row on a front face of a light-transmissive
`
`
`14 Petitioner refers to Okamoto’s Figure 1 as showing a “lead-type” package.
`Pet. 46.
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`19
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`glass substrate 2.” Id. ¶ 27. The device also includes GaAs red LED
`element 5b (not shown). Id. Wiring path 6 is on glass substrate 2 and is
`fixed to LED electrodes with a conductive epoxy resin adhesive and
`electrically connected to upper-side LED electrodes with gold wire 7. Id.
`¶¶ 28–29. Lead frame 8 is attached to wiring pattern 6 with solder material
`9. Id. ¶ 29.
`Figure 6 of Okamoto is reproduced below.
`
`
`Figure 6 of Okamoto shows “a manufacturing method of the light source
`device 1.” Id. ¶ 32. “LED elements 3, 4, 5a, and 5b are integrally molded
`with the light-transmissive substrate 10 . . . on top of the light-transmissive
`resin 11 together with the glass substrate 2 having the lead frame 8 attached
`thereto.” Id. ¶ 34.
`Figures 8 and 9 of Okamoto are reproduced below.
`
`20
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`Figures 8 and 9 of Okamoto show “perspective views of signal lights having
`the light source 1 of FIG. 1 incorporated therein.” Id. ¶ 41.
`
`2. Overview of Shimizu
`Shimizu is a U.S. Patent, issued December 7, 1999, titled “Light
`Emitting Device Having a Nitride Compound Semiconductor and a
`Phosphor Containing a Garnet Fluorescent Material.” Ex. 1017, codes (45),
`(54). It describes a “white light emitting diode” that uses “a semiconductor
`as a light emitting layer and a phosphor which absorbs a part of light emitted
`by the light emitting component and emits light of wavelength different from
`that of absorbed light.” Id. at code (57). “[T]he phosphor contains a garnet
`fluorescent material activated with cerium which contains at least one
`element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and
`at least one element selected from the group consisting of Al, Ga and In.”
`Id. Shimizu describes embodiments with a “lead type light emitting diode”
`and a “tip type light emitting diode.” Id. at 6:48–53. Figure 1 of Shimizu is
`reproduced below.
`
`21
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`Figure 1 of Shimizu “is a schematic sectional view of a lead type light
`emitting diode.”15 Id. at 6:48–53. LED 100 has “a mount lead 105 and an
`inner lead 106,” and “a light emitting component 102.” Id. at 8:31–39.
`
`
`15 Petitioner refers to Shimizu’s Figure 1 as showing a “lead-type” package.
`Pet. 19.
`
`22
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`
`Figure 2 of Shimizu is reproduced below.
`
`
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