PTAB

IPR2017-01511

Cree Inc v. OptoLum Inc

Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Light Emitting Diode Light Source
  • Brief Description: The ’028 patent relates to a light source that utilizes light-emitting diodes (LEDs) mounted on an elongate, thermally conductive member. The member is typically a hollow tube designed to cool the LEDs by allowing a heat transfer medium, such as air, to flow through its interior.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 17 and 30 by Begemann

  • Prior Art Relied Upon: Begemann (Patent 6,220,722).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Begemann anticipates every limitation of independent claims 1 and 19, upon which the challenged dependent claims 17 and 30 rely. Begemann disclosed an LED lamp comprising an elongate, thermally conductive member (an assembly of a gear column, substrate, and lamp cap) with multiple LEDs mounted on its outer surface. This member was configured to conduct heat away from the LEDs to a fluid (air) contained within its hollow gear column, which was circulated by a fan. Petitioner contended that the edges of Begemann’s pyramid-shaped substrate and the threads of the lamp cap constituted the claimed "heat dissipation protrusions." Crucially for claims 17 and 30, Begemann expressly taught that its LEDs could emit colored light, including red, green, blue, and yellow.

Ground 2: Obviousness of Claims 9-12 and 23-26 over Begemann and Balestriero

  • Prior Art Relied Upon: Begemann (Patent 6,220,722) and Balestriero (Patent 6,561,690).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that while Begemann provided the foundational LED lamp structure, it did not explicitly disclose that the thermally conductive member was an aluminum extrusion. Balestriero, however, taught a luminaire with an elongated, tubular housing made of heat-conducting, extruded aluminum with an "undulating surface" of heat-dissipating protrusions. Petitioner argued it would have been obvious to manufacture Begemann's thermally conductive "gear column" using the extruded aluminum taught by Balestriero, thus meeting the limitations of claims 9, 10, 23, and 24. For claims 11, 12, 25, and 26, Petitioner argued that Begemann's pyramid-shaped substrate already had a polygon cross-section, making the combination obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Begemann and Balestriero to improve manufacturability and thermal performance. Balestriero taught that using extruded aluminum was an advantageous and known option for fabricating thermally conductive housings for LEDs. A POSITA would have recognized this as a simple substitution of a known material and process into Begemann’s design to achieve the predictable benefits of cost-effective manufacturing and enhanced heat dissipation.
    • Expectation of Success: Success was predictable because the combination involved applying a well-known manufacturing process (extrusion) and material (aluminum) to a similar device (Begemann’s lamp) to achieve a known benefit. The resulting structure would retain the overall shape and function of Begemann's device while being easier and cheaper to fabricate.

Ground 3: Obviousness of Claims 18 and 31 over Begemann and Wu

  • Prior Art Relied Upon: Begemann (Patent 6,220,722) and Wu (Patent 5,949,347).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims 18 and 31, which add the limitation of "a coating... infused with optically reflective material" to the base claims. While Begemann disclosed the lamp structure, Wu taught retrofitting LED lamps for illuminated signs. Wu explicitly disclosed that the surface of a frame on which LEDs are mounted may be "coated with a reflective material" to achieve bright and even illumination across an area.
    • Motivation to Combine: A POSITA would combine these teachings to improve the light output and uniformity of Begemann's lamp. It was a well-known design principle in the lighting arts to use reflective surfaces to maximize useful light output. A POSITA would have been motivated to apply Wu’s conventional reflective coating to the LED-mounting substrate in Begemann’s lamp for the predictable purpose of enhancing brightness and illumination quality.
    • Expectation of Success: The application of a reflective coating was a simple, conventional technique with a well-understood and predictable outcome. A POSITA would have reasonably expected that adding such a coating to Begemann's device would successfully improve its optical performance without any undue experimentation.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Begemann with English (Patent 6,682,211) to add explicit cooling fins, and combining Begemann and Balestriero with Verdes (Patent 6,425,678) to teach a specific polygon cross-section for the tubular member.

4. Key Claim Construction Positions

  • "Elongate": Petitioner proposed the construction "having more length than width." This was based on the term's plain meaning and its consistent application by both the patentee and the Examiner during the prosecution of the ’028 patent’s application and a related family member.
  • "Thermally conductive member": Petitioner proposed "a structural unit that is thermally conductive." This construction was intended to be broad enough to encompass an assembly of multiple connected components, as shown in Begemann, rather than being limited to a single, monolithic piece of material.
  • "Heat dissipation protrusions": Petitioner proposed "protrusions that dissipate heat." It was argued this construction represents the plain meaning and is intentionally broader than the more specific term "fins," which is also used in the ’028 patent’s specification, indicating the patentee's intent for "protrusions" to have a wider scope.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 9-12, 17, 18, 23-26, 30, and 31 of Patent 7,242,028 as unpatentable.