PTAB

IPR2017-01608

Vizio Inc v. Nichia Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing Light Emitting Device, Resin Package and Resin-Molded Body
  • Brief Description: The ’250 patent describes a method for manufacturing light-emitting devices (LEDs) by transfer-molding a thermosetting resin onto a plated lead frame that includes notches. The method involves cutting the molded body and the lead frame along the notches, which allegedly improves adhesion and results in a final package where the cut side of the lead is unplated.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 7 are obvious over Park '697 in view of Park '486.

  • Prior Art Relied Upon: Park '697 (Japanese Patent Publication No. JP2006-093697) and Park '486 (WO 2007/055486).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Park '697 disclosed the core manufacturing process, including providing a plated lead frame with openings, transfer-molding a resin, and cutting the assembly to form individual LED packages. To the extent Park '697 did not explicitly teach cutting along the notches to create a planar outer surface between the resin and the lead, Park '486 was asserted to supply this teaching. Park '486 expressly disclosed sawing a lead frame plate along "cutting lines C" corresponding to notches, resulting in an outer surface of the resin part and lead being planar.
    • Motivation to Combine: A POSITA would combine Park '486's cutting technique with the manufacturing process of Park '697 to gain known advantages. These benefits included improving the stability and adhesion of the resin package around the lead frame, reducing the cutting area to allow for higher cutting speeds and longer blade life, and reducing heat-related defects like resin cracking and delamination. Both references were in the same field of manufacturing LED packages on a lead frame.
    • Expectation of Success: The petition asserted that implementing the cutting method of Park '486 into the process of Park '697 was a routine and straightforward design choice. A POSITA would have expected this combination to predictably provide the known functional benefits of cutting along notches without issue.

Ground 2: Claims 1, 7, 17, 19, and 21 are obvious over Park '697 in view of Oshio.

  • Prior Art Relied Upon: Park '697 (Japanese Patent Publication No. JP2006-093697) and Oshio (Application # 2005/0280017).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Park '697 disclosed most claim limitations but that Oshio provided an explicit teaching for the key limitation added during prosecution: cutting a plated lead frame to form an unplated outer side surface. Park '697 taught plating a lead frame before molding and cutting, implying an unplated cut surface. Oshio made this explicit, teaching plating on all surfaces of a lead frame and noting that after cutting, "an unplated surface of base material is exposed at the cut section." Oshio also disclosed leads with at least two different levels, relevant to dependent claim 21.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Oshio's teaching of plating all lead frame surfaces into the Park '697 process. Oshio taught this was advantageous for increasing light reflectance, improving solder bonding strength, and enhancing electrical and thermal conductivity. These were well-understood benefits that would improve the performance and operating lifetime of the LED devices described in Park '697.
    • Expectation of Success: As plating all surfaces of a lead frame before cutting was a conventional and beneficial step, a POSITA would have reasonably expected that applying this method from Oshio to the Park '697 process would predictably yield a more robust and efficient LED package.

Ground 3: Claims 1 and 7 are obvious over Park '697 in view of Urasaki.

  • Prior Art Relied Upon: Park '697 (Japanese Patent Publication No. JP2006-093697) and Urasaki (Japanese Patent Publication No. JP2007-235085).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground focused on the transfer-molding step. Petitioner argued that while Park '697 taught transfer-molding, it was obvious to perform this step using distinct upper and lower molds as taught by Urasaki. Urasaki, which was cited as background art in the ’250 patent, explicitly disclosed using an upper mold and a lower mold to form a resin-molded body on a lead frame. Urasaki's upper mold included convex portions to form the concave portions in the final resin body, as required by claim 7.
    • Motivation to Combine: A POSITA would have been motivated to use the upper and lower mold configuration from Urasaki when implementing the Park '697 process. This was a conventional and beneficial design choice that allowed for easy removal of the molded part without breaking the mold, enabled mold reuse, and helped prevent the formation of voids in the cured resin by allowing for uniform pressure application. The ’250 patent itself admitted that using upper and lower molds was "conventional."
    • Expectation of Success: Given that using upper and lower molds was a well-known and standard method for transfer-molding electronic components, a POSITA would have had a high expectation of success in applying Urasaki’s mold configuration to the process of Park '697.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1, 7, 17, 19, and 21 were obvious over Park '697 alone. Further grounds combined Park '697 with two of the secondary references (Park '486, Urasaki, and Oshio) in various permutations.

4. Key Claim Construction Positions

  • Petitioner argued that no specific claim constructions were necessary for the purpose of the IPR.
  • The petition asserted that the cited prior art references disclosed the claimed limitations even under the constructions adopted by the district court in a related litigation (Nichia Corp. v. Everlight Elecs. Co.), as well as under the alternative constructions proposed by the parties in that case.

5. Arguments Regarding Discretionary Denial

  • The petition noted the contemporaneous filing of a separate IPR petition against the same patent (’250 patent) that relied on a different primary reference (Koung) and different theories of obviousness.
  • Petitioner requested institution of both petitions, arguing the different theories and references presented distinct unpatentability challenges, justifying parallel proceedings to ensure that all substantial questions of patentability raised were resolved.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 7, 17, 19, and 21 of the ’250 patent as unpatentable under 35 U.S.C. §103.