Trials@uspto.gov
`571-272-7822
`
`
` Paper 41
`
`Entered: October 19, 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.
`
`____________
`
`IPR2020-00813
`Patent 9,859,464 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: October 19, 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.
`
`____________
`
`IPR2020-00813
`Patent 9,859,464 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)
`
`
`
`
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`I. INTRODUCTION
`Satco Products, Inc., filed a Petition requesting an inter partes review
`of claims 1, 2, 8–12, and 18–20 (“the challenged claims”) of U.S. Patent
`No. 9,859,464 B2 (Ex. 1001, “the ’464 patent”). Paper 2 (“Pet”). The
`owner of the ’464 patent, The Regents of the University of California, filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”).
`We instituted review on October 22, 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 28 (“Sur-Reply”)).
`A transcript of the oral hearing held on September 8, 2021, has been entered
`into the record as Paper 40 (“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
`’464 patent, including IPR2020-00579, IPR2020-00695, IPR2020-00780,
`IPR2021-00661, IPR2021-00662, and IPR2021-00794. Petitioner also
`identifies a related proceeding before the International Trade Commission
`2
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`(ITC), In the Matter of Certain Filament Light-Emitting Diodes and
`Products Containing Same (II), Inv. No. 337-TA-1172. Pet. 1.
`
`B. The ’464 Patent
`The ’464 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, 5:20–23. In particular, the ’464 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 5:30–31. 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 5:35–39.
`This is inefficient. Id. To increase efficiency of the LED, the ’464 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 5:58–61.
`Figures 8A and 8B of the ’464 patent are reproduced below.
`
`3
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`
`
`
`Figures 8A and 8B of the ’464 patent “illustrate the dual-sided
`roughened phosphor layer of the present invention.” Id. at 7:37–39. 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 10:34–39. “LED chip 500 is put on a lead frame
`506,” and wire bonding 524 and 526 connect bonding pads 528 and 530 of
`LED chip 500 with lead frame 506 and electrode 508 “to allow an electric
`current to flow through the lead frame 506.” Id. at 10:46–51. Lead frame
`506 “acts as a support around the edges of LED chip 500.” Id. at 10:52–56.
`
`C. The Challenged Claims
`Petitioner challenges claims 1, 2, 8–12, and 18–20 of the ’464 patent.
`Claims 1 and 11 are independent. Claim 1 is reproduced below:
`1. A light emitting device, comprising:
`a lead frame including a transparent plate; and
`
`4
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`
`light;
`
`an LED chip, attached to the lead frame, for emitting
`
`wherein the LED chip resides on or above the transparent
`plate and at least some of the light emitted by the LED chip is
`transmitted through the transparent plate; and
`wherein at least a portion of the light emitted by the LED
`chip is extracted from a front side of the lead frame and another
`portion of the light emitted by the LED chip is extracted from a
`back side of the lead frame.
`Ex. 1001, 15:23–33.
`Claim 11 is substantively similar to claim 1, but claims a method. To
`the extent our analysis herein focuses on claim 1, it should be understood to
`apply equally to claim 11.
`Claims 2 and 8–10 depend from claim 1, and claims 12 and 18–
`20 depend from claim 11.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C.
`§1
`102(b)
`
`1, 9, 11, 19
`
`Basis
`
`Okamoto2
`
`
`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 ’464 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 bases for
`unpatentability.
`2 Japan Patent App. Pub. No. 2000/277808A (published Oct. 6, 2000).
`Ex. 1008 (certified English translation).
`
`5
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`Claims Challenged 35 U.S.C.
`§1
`103(a)
`103(a)
`103(a)
`102(b)
`103(a)
`103(a)
`103(a)
`
`1, 2, 9, 11, 12, 19
`8, 10, 18, 20
`8, 10, 18, 20
`1, 2, 11, 12
`2, 9, 12, 19
`8, 10, 18, 20
`8, 10, 18, 20
`
`Basis
`
`Okamoto, Shimizu3
`Okamoto, Shimizu, Lester4,5
`Okamoto, Shimizu, Tadatomo6
`Miyahara7
`Miyahara
`Miyahara, Lester8
`Miyahara, Tadatomo
`
`
`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, 59. 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. 59–64.
`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.
`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, 81. 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. 81–83.
`
`6
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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
`’464 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”)), 20–21 (referring to Ex. 1005 (“Krames-924”) and Ex. 1016
`(“Ishizaka-361”)); see Ex. 1003 ¶¶ 64, 218 (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 ’464 patent.
`
`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
`7
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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. 13–14 (citing Ex. 1003 ¶¶ 26–28). 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. 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 ¶¶ 66–67).
`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 (Institution Dec. 7–8) 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
`
`8
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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 2–13 (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. 8–11. For purposes of institution, we determined that
`“the transparent plate may be part of the lead frame” (id. at 9) and “the lead
`frame structure, as a whole, provides support to the LED” (id. at 10). 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 10–11.
`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.
`
`9
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`The parties, however, continue to disagree whether the leads
`themselves must provide support to the LED chip.9 PO Resp. 4; Reply 4.
`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
`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 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
`
`
`9 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).
`
`10
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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. 4–5 (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. 4; 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
`
`11
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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,10 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
`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. 7 (citing Ex. 2011 (“Basin”) as 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.
`
`
`10 Each of the challenged claims requires a “lead frame including a
`transparent plate.” Ex. 1001, 15:23–16:48.
`12
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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. 7–8 (citing Ex. 2011 ¶ 36). It is possible that the
`relevant difference between Basin and the ’464 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
`device in Basin and the device in the ’464 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 12–13. 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
`
`13
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`“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 ’464 patent.11 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. 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” (Ex. 2008 ¶ 63); (2) “[t]he term ‘lead frame’ is a very
`
`
`11 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 provide by leads is the relevant factor distinguishing a
`lead frame package from a chip-on-board package. Id.
`14
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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)” (Ex. 2008 ¶ 76); and (3) “[i]n the context of the claims at
`issue and in light of the specification, the 464 Patent (and related patents)
`teach that the transparent plate, with the leads, in involved in the support of
`the LED chip” (id. ¶ 84). However, none of these statements explicitly
`requires 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
`’464 (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 ’464 Patent would understand that the lead frame
`recited in the claims include 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 15 of the ’464 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”).
`However, neither party directs us to, nor do we see any, disclosure in the
`
`15
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`’464 patent that explicitly states that element 1522 is providing mechanical
`support to the LED chip. See PO Resp. 8 (citing Ex. 1001, 12:12–1412
`(“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.
`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.
`
`C. Grounds Based on Okamoto
`Petitioner contends that: (1) claims 1, 9, 11, and 19 are anticipated by
`Okamoto, (2) claims 1, 2, 9, 11, 12, and 19 are unpatentable, because their
`subject matter would have been obvious over the combined disclosures of
`Okamoto and Shimizu, (3) claims 8, 10, 18, and 20 would have been
`obvious over the combined disclosures of Okamoto, Shimizu, and Lester,
`and (4) claims 8, 10, 18, and 20 would have been obvious over the combined
`disclosures of Okamoto, Shimizu, and Tadatomo. Pet. 4–5, 30–64. For the
`reasons given below, Petitioner has shown anticipation and obviousness by a
`preponderance of the evidence.
`
`
`12 The Patent Owner Response actually refers to Ex. 1001, 11:54–60, but
`that appears to be a typo.
`
`16
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`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.13 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.
`
`
`13 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
`
`17
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`
`
`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
`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.
`
`
`14 Petitioner refers to Okamoto’s Figure 1 as showing a “lead-type” package.
`Pet. 42.
`
`18
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`
`
`
`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
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`
`
`
`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.
`
`20
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`
`
`Figure 1 of Shimizu “is a schematic sectional view of a lead type light
`emitting diode.”15 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.
`
`
`15 Petitioner refers to Shimizu’s Figure 1 as showing a “lead-type” package.
`Pet. 19.
`
`21
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`Figure 2 of Shimizu is reproduced below.
`
`
`
`Figure 2 of Shimizu “is a schematic sectional view of a tip type light
`emitting diode.”16 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
`accordance to the wavelength of light emitted by the gallium nitride light
`emitting component [202].” Id. at 10:36–44.
`
`
`16 Petitioner refers to Shimizu’s Figure 2 as showing a “chip-type” package.
`Pet. 19.
`
`22
`
`
`
`IPR2020-00813
`Patent 9,859,464 B2
`
`3. Independent Claims 1 and 11
`Petitioner asserts that claims 1 and 11 are anticipated by Okamoto and
`would have been obvious over Okamoto and Shimizu. Pet. 30–52.
`
`a. Anticipation by Okamoto
`Petitioner points to Okamoto’s glass substrate 2 as disclosing the
`claimed “transparent plate” and Okamoto’s lead frame 8 and wiring
`pattern 6 as disc
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
