PTAB

IPR2017-01261

Cree, Inc. v. OptoLum, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Light Emitting Diode Light Source
  • Brief Description: The ’028 patent discloses a light source using light-emitting diodes (LEDs) mounted on an elongate, thermally conductive member. This member is typically a hollow tube through which a cooling medium, such as air, can flow to dissipate heat generated by the LEDs.

3. Grounds for Unpatentability

Ground 1: Anticipation over Begemann - Claims 1, 19, and their dependents are anticipated by Begemann under 35 U.S.C. §102.

  • Prior Art Relied Upon: Begemann (Patent 6,220,722).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Begemann discloses every element of the challenged claims. Begemann describes an LED lamp with a tubular, hollow "gear column" connected to a metal substrate, which together form the claimed "elongate thermally conductive member." LEDs are mounted on the substrate's multiple flat faces, satisfying the limitation of light sources on non-coextensive planes. Begemann further teaches that the hollow gear column contains a fan to circulate air (a "fluid") to cool the LEDs, and that the entire assembly conducts heat away from the LEDs. Petitioner contended that the protruding threads on Begemann's lamp cap and the edges of its polygonal substrate constitute the claimed "heat dissipation protrusions." The arguments for independent claim 19 were presented as substantially similar, with "radiation emitting semiconductor devices" being equivalent to "solid state light sources" (LEDs) in the context of the art.
    • Key Aspects: This ground asserted that a single prior art reference fully disclosed the invention, including the allegedly novel heat dissipation features, by interpreting common structures like screw threads and geometric edges as "protrusions."

Ground 2: Obviousness over Begemann and English - Claim 1 and its dependents are obvious over Begemann in view of English under 35 U.S.C. §103.

  • Prior Art Relied Upon: Begemann (Patent 6,220,722), English (Patent 6,682,211).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. If the Board were to find that Begemann’s threads or substrate edges do not teach "heat dissipation protrusions," Petitioner argued it would have been obvious to add them. English expressly teaches adding "cooling fins or other heat dissipating structures" to the exterior of an LED lamp's metal base to enhance heat dissipation, improve lamp life, and increase light output. All other limitations of the claims were argued to be present in Begemann as detailed in Ground 1.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine the teachings because both Begemann and English address the common problem of managing heat in high-illumination LED light sources. A POSA would have been motivated to add the explicit cooling fins of English to the outer surface of Begemann’s gear column to improve the performance and efficiency of Begemann's lamp.
    • Expectation of Success: The combination would yield predictable results. Adding cooling fins is a well-known and straightforward technique for improving heat dissipation from a surface, and a POSA would have reasonably expected this modification to successfully enhance the cooling of the LEDs in Begemann's design.

Ground 3: Obviousness over Begemann, Arndt, and Asami - Claims 23-26 are obvious over Begemann in view of Arndt and Asami under §103.

  • Prior Art Relied Upon: Begemann (Patent 6,220,722), Arndt (Patent 6,848,819), and Asami (Patent 4,296,539).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims requiring the thermally conductive member to be an "extrusion," specifically an "aluminum extrusion." While Begemann discloses the required tubular, polygonal shape, it does not specify the manufacturing method. Arndt teaches using aluminum for an LED cooling member due to its high thermal conductivity. Critically, Asami teaches fabricating a high-performance heat transfer tube by the extrusion of an aluminum alloy as a single integral unit with internal and external fins.
    • Motivation to Combine: A POSA would be motivated to produce Begemann's gear column using the aluminum extrusion method taught by Asami, using aluminum as the material taught by Arndt. This combination would achieve an easily fabricated, thermally conductive tube with integrally formed heat fins, simplifying manufacturing and reducing costs while achieving the heat-dissipation goals common to all three references.
    • Expectation of Success: Petitioner asserted a high expectation of success, as aluminum is known to be easily extruded with integral fins, and the resulting structure would provide the good heat conduction needed for Begemann's lamp design.

  • Additional Grounds: Petitioner asserted numerous additional grounds. These included obviousness challenges combining Begemann with Verdes (Patent 6,425,678) to teach a simpler, uniform polygonal cylinder for mounting LEDs. Further grounds combined these primary references with English to provide an explicit teaching of cooling fins in the event the primary combinations were found to lack that element. The logic for these additional grounds relied on similar motivations of simplifying manufacturing, improving thermal performance, and combining known elements for their predictable functions.

4. Key Claim Construction Positions

  • "Elongate": Proposed as "having more length than width." Petitioner asserted this reflects the plain meaning and was used by the patentee during prosecution.
  • "Thermally conductive member": Proposed as "a structural unit that is thermally conductive." This construction was argued to be consistent with its use in the specification and prosecution history.
  • "Heat dissipation protrusions": Proposed as "protrusions that dissipate heat." Petitioner argued this term is broader than "fins" and encompasses features like the edges of a polygon or screw threads, a key point for its anticipation argument based on Begemann.

5. Arguments Regarding Discretionary Denial

  • Petitioner provided notice of related matters that could affect the proceeding. The ’028 patent was concurrently the subject of a patent infringement lawsuit in the U.S. District Court for the District of Arizona (OptoLum, Inc. v. Cree, Inc.). Additionally, Petitioner concurrently filed a separate IPR petition (IPR2017-01260) challenging the validity of the parent ’303 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-8, 13-16, and 19-29 of the ’028 patent as unpatentable.