Trials@uspto.gov
`571-272-7822
`
`
` Paper 42
`
`Entered: October 12, 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.
`
`____________
`
`IPR2020-00780
`Patent 10,217,916 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)
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 42
`
`Entered: October 12, 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.
`
`____________
`
`IPR2020-00780
`Patent 10,217,916 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)
`
`
`
`
`
`
`
`IPR2020-00780
`Patent 10,217,916 B2
`
`I. INTRODUCTION
`Satco Products, Inc., filed a Petition requesting an inter partes review
`of claims 1, 5, 6, 7, 9, 13, 14, 18, 19, 20, 22, and 26 (“the challenged
`claims”) of U.S. Patent No. 10,217,916 B2 (Ex. 1001, “the ’916 patent”).
`Paper 3 (“Pet”). The owner of the ’916 patent, The Regents of the
`University of California, filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”).
`We instituted review on October 13, 2020. Paper 10 (“Institution
`Dec.”). Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 19 (“PO Resp.”)), Petitioner filed a Reply (Paper 27
`(“Reply”)), and Patent Owner filed a Sur-Reply (Paper 29 (“Sur-Reply”)).
`A transcript of the oral hearing held on September 8, 2021, has been entered
`into the record as Paper 41 (“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, 2–3. 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 IPRs challenging patents related to the
`’916 patent, including IPR2020-00579, IPR2020-00695, IPR2020-00813,
`IPR2021-00661, IPR2021-00662, and IPR2021-00794. Some of these
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`related patents are also at issue in a proceeding before the International
`Trade Commission (ITC), In the Matter of Certain Filament Light-Emitting
`Diodes and Products Containing Same (II), Inv. No. 337-TA-1220.
`
`B. The ’916 Patent
`The ’916 patent, entitled “Transparent Light Emitting Diodes,”
`describes a light emitting diode (LED) that is “comprised of a plurality of
`III-nitride layers, including an active region that emits light, wherein all of
`the layers except for the active region are transparent for an emission
`wavelength of the light.” Ex. 1001, 8:11–15. In particular, the ’916 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 10:20–24. 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 10:26–
`29. This reduces the efficiency and output power of the LED. Id. at 10:29–
`31. To increase efficiency of the LED, the ’916 patent minimizes internal
`reflections within the LED by eliminating mirrors and/or mirrored surfaces,
`“in order to minimize re-absorption of the light by the active region.” Id. at
`8:38–48. To achieve this, all layers of the LED, except the emitting layer,
`may be transparent for the emission wavelength of the LED. Id. at 11:6–15.
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`Figures 4A and 4B of the ’916 patent are reproduced below:
`
`
`Figures 4A and 4B of the ’916 patent are schematic illustrations of an
`LED that emits light from multiple sides of the LED as described in the
`patent. Id. at 9:3–5. The LED chip comprises emitting layer 400, n-type
`GaN layer 402, p-type GaN layer 404, and glass plate 410. Id. at 11:18–21.
`“The LED is wire bonded 416 to a lead frame 418 via bonding pads 420,
`422.” Id. at 11:25–27. 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 ’916 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 11:36–43.
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`C. The Challenged Claims
`Claim 1 exemplifies the challenged claims and reads as follows:
`1. A light emitting device, comprising:
`a lead frame having a transparent plate therein; and
`a light emitting diode (LED) chip, mounted on the lead frame
`and placed on or above the transparent plate in the lead frame,
`emitting light through at least front and back sides of the LED
`chip;
`wherein the transparent plate in the lead frame allows the light
`emitted from the LED chip to be extracted out of the LED chip
`from the front or back sides of the LED chip and through the
`transparent plate in the lead frame.
`Ex. 1001, 20:54–63.
`Claim 14 is substantively similar to claim 1, but claims a method of
`making the light emitting device of claim 1. To the extent our analysis
`herein focuses on claim 1, it should be understood to apply equally to claim
`14. The parties do not provide separate analyses for the device and method
`claims.
`Claims 5, 6, 7, 9, and 13 depend directly or indirectly from claim 1,
`while claims 18, 19, 20, 22, and 26 depend directly or indirectly from claim
`14. The additional limitations of the dependent claims are mirrored across
`each set (i.e., the additional limitations of claims 5 and 18 are the same,
`claims 6 and 19 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 Reference(s)
`1, 5, 14, 18
`102(b)
`Okamoto2
`1, 5, 9, 14, 18, 22
`103(a)
`Okamoto, Shimizu3
`6, 7, 19, 20
`103(a)
`Okamoto, Shimizu, Lester,4
`Tadatomo5
`Okamoto, Shimizu, Admitted Prior
`Art6
`
`103(a)
`
`13, 26
`
`
`
`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 ’916 patent claims priority to an
`application filed before March 16, 2013, we apply the pre-AIA versions of
`the statutory bases for unpatentability.
`2 Japan 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.
`3 U.S. Patent No. 5,998,925 to Shimizu et al., issued Dec. 7, 1999
`(Ex. 1017).
`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 Petitioner identifies three figures of the ’916 patent (Ex. 1001, Figs. 1–3)
`and their accompanying written description (id. at 10:17–11:4) as “Admitted
`Prior Art.” Pet. 10.
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`Claims Challenged 35 U.S.C. §1 Reference(s)
`1, 9, 13, 14, 22, 26
`102(b)/103(a) Miyahara7
`5, 18
`103(a)
`Miyahara
`6, 7, 19, 20
`103(a)
`Miyahara, Lester, Tadatomo
`
`Pet. 4–6, 30–83. Petitioner submits the Declaration of Russell D. Dupuis,
`Ph.D. (Ex. 1003) in support of its arguments. Patent Owner submits
`declarations of E. Fred Schubert, Ph.D., M.S. (Exs. 2001, 2008) in support
`of its arguments.
`Petitioner alleges that all of the asserted references are prior art to the
`’916 patent under 35 U.S.C. § 102(b). Pet. 18–23. 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 18 (referring to Ex. 1007 (“Schubert”)),
`22 (referring to Ex. 1005 (“Krames-924”) and Ex. 1016 (“Ishizaka-361”));
`see Ex. 1003 ¶¶ 55, 269 (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.; Reply. We find that the references are
`prior art to the ’916 patent.
`
`
`
`7 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 in this
`proceeding.
`
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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. 15–16 (citing Ex. 1003 ¶¶ 27–29). 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 (citing Ex. 2001
`¶¶ 66–67). 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]).” Id.
`Both parties appear to be in general agreement regarding the level of
`skill, and neither party contends that any differences between their proposals
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`would have any effect on our analysis of Petitioner’s challenges. Although
`we encouraged the parties (Institution Dec. 12) to address any material
`differences between the two proposals in post-institution briefing, 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 2–11 (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
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`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.). We
`then adopted a construction proposed by ITC Staff in the related
`Investigation—“a support structure for providing an interface to a
`semiconductor die.” Id. at 12.
`Subsequent to institution, both parties agree that the transparent plate
`may be considered a part of the lead frame. PO Resp. 3; Reply 3; Sur-
`Reply 1. 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.8 PO Resp. 4; Reply 4.
`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 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.
`
`
`8 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 3).
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`As detailed below, we determine that Patent Owner has not shown
`that the term “lead frame,” as recited by 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 identify 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
`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. . . .);
`
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`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. 4–5; Sur-Reply 2 (“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 PO Resp. 4.
`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,9 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 (“[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
`
`
`9 Each of the challenged claims requires a “lead frame having a transparent
`plate therein.” Ex. 1001, 15:23–16:48.
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`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.
`PO Resp. 8 (citing Ex. 2011 (“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 those two elements. 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 an equally viable difference
`between an LED package with a lead frame and one without is 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. 2011 ¶ 36). It is possible that the
`relevant difference between Basin and the ’916 patent—why one has a lead
`frame and the other does not—is not that the leads in Basin are not providing
`support to the LED chip, but one of the other many differences between the
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`device in Basin and the device in the ’916 patent. 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 10–11.
`Dr. Schubert’s testimony on the issue is consistent with this
`understanding. 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. 2008 ¶ 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 by contrasting
`Basin’s device with that of the ’916 patent.10 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 construction.
`
`
`10 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. ¶ 69 (citing Ex. 1017, 8:51–54;
`Ex. 1016 ¶ 33). However, as with Basin, Dr. Schubert does not address the
`many 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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`Patent Owner also relies on testimony from Dr. Schubert (PO
`Resp. 6–9 (citing Ex. 2008 ¶¶ 63–69, 75–86)) stating that “[t]he lead frame
`provides mechanical or structural support to the LED chip” and “[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. 2008 ¶ 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” (Id. ¶ 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 ’916 Patent (and related patents) teach that the transparent
`plate, with the leads, support [] the LED chip” (id. ¶ 84). However, none of
`these statements explicitly 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 ’916 (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 ’916 Patent would
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`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.
`Both parties appear to agree that Figure 12A of the ’916 patent shows
`an anode lead providing at least some structural support to the LED chip.
`PO Resp. 8 (stating that in Figure 12A “lead frame 1212 both (i) supports
`the LED chip and (ii) provides the electrical connection through bonding
`wires 1210”); Reply 7 (showing an annotated version of Figure 12A with a
`portion of element 1212 labelled as “anode lead: structural support”).
`However, neither party directs us to, nor do we see any, disclosure in the
`’916 patent that explicitly states that element 1212 is providing mechanical
`support to the LED chip. See PO Resp. 8 (citing Ex. 1001, 15:10–14 (“The
`LED is wire bonded 1210 to a lead frame 1212.”)). Both parties, therefore,
`appear to base their understanding on the positioning of element 1212 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.
`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, provides the required support.
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`Patent 10,217,916 B2
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`C. Grounds Based on Okamoto
`Petitioner contends that: (1) if we were to adopt Patent Owner’s
`construction of “lead frame,” claims 1, 5, 14, and 18 are anticipated by
`Okamoto; (2) if we adopt Petitioner’s proposed construction, claims 1, 5, 9,
`14, 18, and 22 would have been obvious over the combined disclosures of
`Okamoto and Shimizu; (3) depending on the construction adopted, claims 6,
`7, 19, and 20 would have been obvious over either the combination of
`Okamoto, Lester, and Tadatomo or Okamoto, Shimizu, Lester, and
`Tadatomo; and (4) under either construction, claims 13 and 26 would have
`been obvious over the combination of Okamoto and Shimizu. Pet. 4–5, 31–
`66. For the reasons given below, Petitioner has shown anticipation and
`obviousness by a preponderance of the evidence.
`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
`
`17
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`nonobviousness, i.e., secondary considerations.11 See Graham, 383 U.S. at
`17–18.
`
`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.”12 Id. ¶ 26. The device includes GaN blue LED
`
`
`11 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
`12 Petitioner refers to Okamoto’s Figure 1 as showing a “lead-type” package.
`Pet. 42.
`
`18
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`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
`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 back-side 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.
`
`19
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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.
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`20
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`Figure 1 of Shimizu “is a schematic sectional view of a lead type light
`emitting diode.”13 Id. at 6:49–51. LED 100 has “a mount lead 105 and an
`inner lead 106,” and “a light emitting component 102.” Id. at 8:31–39.
`Figure 2 of Shimizu is reproduced below.
`
`
`
`
`13 Petitioner refers to Shimizu’s Figure 1 as showing a “lead-type” package.
`Pet. 19.
`
`21
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`Figure 2 of Shimizu “is a schematic sectional view of a tip type light
`emitting diode.”14 Id. at 6:52–54. LED 202 is installed in a recess of casing
`204, which “is filled with a coating material which contains a specified
`phosphor to form a coating 201.” Id. at 8:51–54. Electrodes of LED 202 are
`“connected to metal terminals 205 installed on the casing 204 by means of
`conductive wires 203.” Id. at 8:54–59. “[B]ecause the phosphor is used by
`blending with a resin[,] which makes the . . . coating material 201 (detailed
`later), color tone of the light emitting diode can be adjusted including white
`and incandescent lamp color by controlling the mixing proportion with the
`resin or the quantity used in filling . . . the recess of the casing 204 in
`accordanc
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