PTAB

IPR2017-01608

VIZIO, Inc. v. Nichia Corporation

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1. Case Identification

  • Patent #: Patent [8,530,250](https://ai-lab.exparte.com/patent/8530250)
  • Filed: June 16, 2017
  • Petitioner(s): [VIZIO, Inc.](https://ai-lab.exparte.com/party/vizio-inc)
  • Patent Owner(s): [Nichia Corporation](https://ai-lab.exparte.com/party/nichia-corp)
  • Challenged Claims: 1, 7, 17, 19, and 21

2. Patent Overview

  • Title: Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing
  • Brief Description: The ’250 patent discloses methods for manufacturing light-emitting devices (LEDs) and the resulting packages. The patent’s stated objective was to provide a simple, low-cost manufacturing method that achieves high adhesion between a lead frame and a thermosetting resin composition. The core method involves providing a lead frame with notches, plating the lead frame, transfer-molding a thermosetting resin over it, and cutting the assembly along the notches to create an unplated outer side surface on the leads, which purportedly improves reliability.

3. Grounds for Unpatentability

Ground 1: Obviousness over Park ’697 (Claims 1, 7, 17, 19, and 21)

  • Prior Art Relied Upon: [Park ’697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) (Japanese Patent Publication No. JP2006-093697).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that [Park ’697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004), as a single reference, taught every element of the challenged claims. [Park ’697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) disclosed a method for manufacturing multiple LEDs by providing a silver-plated lead frame with notches, transfer-molding a thermosetting resin with a light-reflecting material (TiO2) to form a resin-molded body, and then cutting (sawing) the assembly to create individual packages. Petitioner argued that because [Park ’697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) explicitly disclosed plating the lead frame before the final cutting step, the resulting cut side surface of the lead would inherently be unplated. Furthermore, [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) allegedly disclosed the planar surfaces required by claims 1 and 17, the stepped and multi-level lead structures recited in dependent claims 19 and 21, and the placement of an LED element in a concave portion as required by claim 7.
    • Motivation to Combine: Not applicable as a single-reference ground.
    • Expectation of Success: Not applicable as a single-reference ground.

Ground 2: Obviousness over Park ’697 in view of Oshio (Claims 1, 7, 17, 19, and 21)

  • Prior Art Relied Upon: [Park ’697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) (Japanese Patent Publication No. JP2006-093697) and [Oshio](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1008) (Application # 2005/0280017).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground argued that even if [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) alone was insufficient, the combination with [Oshio](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1008) rendered the claims obvious. The ’250 patent was allowed during prosecution based on the specific limitation of cutting a plated lead frame to form an unplated outer side surface. Petitioner asserted that [Oshio](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1008) expressly taught this exact feature, disclosing the coating of a lead frame on all surfaces "by plating" and then cutting it such that "an unplated surface of base material is exposed at the cut section." Combining this express teaching with [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004)'s foundational process would result in the claimed invention.
    • Motivation to Combine: A POSITA would combine [Oshio](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1008)'s plating and cutting method with the manufacturing process of [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) to gain well-known benefits. These benefits included increased solderability, higher light reflectivity in the resin package, and improved thermal and electrical conductivity, which enhance LED performance and operating lifetime by reducing heat. Both references operate in the same field of LED packaging, making the combination a logical and predictable design choice.
    • Expectation of Success: The combination involved applying a known plating technique from [Oshio](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1008) to a standard LED manufacturing process from [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) to achieve predictable and well-understood improvements, leading to a high expectation of success.

Ground 3: Obviousness over Park ’697 in view of Urasaki (Claims 1 and 7)

  • Prior Art Relied Upon: [Park ’697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) (Japanese Patent Publication No. JP2006-093697) and [Urasaki](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1007) (Japanese Patent Publication No. JP2007-235085).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground focused on the transfer-molding step of claim 1. Petitioner asserted that [Urasaki](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1007) expressly taught performing transfer-molding using an upper mold on a first surface of the lead frame and a lower mold on a second surface. [Urasaki](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1007), which the ’250 patent cited as background art, showed this specific mold configuration being used to form a resin-molded body with concave portions where the lead frame is exposed, a key feature also present in [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004).
    • Motivation to Combine: A POSITA would be motivated to use [Urasaki](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1007)'s upper/lower mold configuration in [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004)'s process as a conventional and beneficial design choice. This standard configuration is essential for easily removing the molded part vertically without breakage, which is especially critical for parts with the concave features taught by [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004). It also helps prevent the formation of voids in the cured resin by allowing for uniform pressure application, which is crucial given the viscous flow characteristics of heated thermoset resin.
    • Expectation of Success: Given that using an upper-and-lower mold setup was a well-known method for transfer-mold encapsulation, as taught by [Urasaki](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1007) and admitted as "conventional" in the '250 patent itself, modifying [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004)'s process in this way would have been a routine and predictable step.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, primarily for claims 1 and 7, by combining [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) with [Park '486](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1006) (WO 2007/055486). [Park '486](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1006) was cited to expressly teach cutting along notches to provide stable support for the leads within the resin, which reduces the cutting area and provides benefits like higher cutting speeds, extended cutting blade lifetime, and reduced resin cracking and delamination. Further grounds combined [Park '697](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1004) with various permutations of [Park '486](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1006), [Urasaki](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1007), and [Oshio](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1008), arguing the claimed invention was merely a predictable combination of known elements.

4. Arguments Regarding Discretionary Denial

  • Petitioner disclosed it had filed a contemporaneous IPR petition against the '250 patent that relied on a different primary reference ([Koung](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1005)) and different theories of obviousness. Petitioner argued that institution should be granted for both petitions. It reasoned that since the references and arguments are distinct, and the primary reference in the other petition ([Koung](https://ai-lab.exparte.com/case/ptab/IPR2017-01582/doc/1005)) is §102(e) art that the Patent Owner might attempt to antedate, instituting on the grounds in this petition (based on §102(b) art) would be appropriate to ensure a complete review and prevent potential redundancy concerns from barring a meritorious challenge.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 1, 7, 17, 19, and 21 of the '250 patent as unpatentable under §103.