VIZIO, Inc. v. Nichia Corporation

1. Case Identification

• Patent #: 8,530,250
• Filed: June 16, 2017
• Petitioner(s): VIZIO, Inc.
• Patent Owner(s): Nichia Corporation
• Challenged Claims: 1, 7, 17, 19, and 21

2. Patent Overview

• Title: Light Emitting Device, Resin Package, and Manufacturing Methods
• Brief Description: The ’250 patent describes methods for manufacturing light-emitting diode (LED) packages to improve adhesion between a lead frame and a thermosetting resin body. The method involves providing a lead frame with notches, plating the frame, transfer-molding a resin body over the frame, and then cutting the assembly along the notches to singulate the devices, which results in an unplated outer side surface on the leads.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1 and 7 over Koung and Urasaki

• Prior Art Relied Upon: Koung (Application # 2008/0261339) and Urasaki (Japanese Patent Publication No. JP2007-235085).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Koung taught a method of manufacturing LED packages that included nearly all steps of claim 1: providing a notched lead frame, plating it, molding a resin body containing a light-reflecting material, and cutting it to form individual packages with planar outer surfaces. However, Koung did not explicitly disclose using transfer-molding with a thermosetting resin via upper and lower molds. Petitioner asserted that Urasaki, acknowledged as background art in the ’250 patent, expressly taught this specific molding process for manufacturing LED packages, including forming a resin body with concave portions corresponding to convex portions of an upper mold (as required by dependent claim 7).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Urasaki's well-known transfer-molding process for thermosetting resins with Koung's manufacturing method. The motivation, as stated in Urasaki, was to achieve significant, known benefits, including cost reduction, improved productivity, and the ability to form complex shapes. Furthermore, using a thermosetting resin as taught by Urasaki was known to provide superior heat resistance, light resistance, and adhesion compared to other resins.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying a conventional and advantageous molding technique (Urasaki) to a similar LED manufacturing process (Koung) to achieve predictable improvements in efficiency and product quality.

Ground 2: Obviousness of Claims 17, 19, and 21 over Koung and Oshio

• Prior Art Relied Upon: Koung (Application # 2008/0261339) and Oshio (Application # 2005/0280017).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on the resin package product claims. Petitioner argued that Koung disclosed the core structure of the claimed resin package (claim 17), including a resin part and a lead with planar outer surfaces. Koung also disclosed leads with multiple levels (claim 21). The key limitation at issue was the lead being plated on its upper and lower surfaces but having an unplated outer side surface. While Koung taught plating before cutting, Oshio explicitly disclosed that when a plated lead frame is cut, "an unplated surface of base material is exposed at the cut section." Oshio also taught plating all surfaces of a lead frame for various benefits.
  • Motivation to Combine: A POSITA would have been motivated to apply Oshio’s teachings to Koung’s process. Plating all surfaces of a lead frame before cutting, as taught by Oshio, was a known and efficient manufacturing choice that avoided complex masking steps. The motivations were to increase light reflectance, improve solderability, and enhance thermal and electrical conductivity, all of which were expressly taught by Oshio as advantages of its plating method. The creation of an unplated cut surface was an inherent and predictable result of this common manufacturing sequence.
  • Expectation of Success: A POSITA would have understood that cutting a fully plated lead frame, as generally taught by Koung and detailed by Oshio, would predictably result in an unplated cut surface, thus arriving at the claimed invention without inventive skill.

Ground 3: Obviousness of Claim 19 over Koung and Suenaga

• Prior Art Relied Upon: Koung (Application # 2008/0261339) and Suenaga (Japanese Patent Publication No. JP2001-036154).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claim 19, which depends on claim 17 and adds the limitation that the lead comprises a "step on a bottom or outer surface." Petitioner asserted that Koung already disclosed leads with steps on a bottom surface. To the extent further disclosure was needed, Suenaga expressly taught including a step on the bottom or outer surface of a lead.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Suenaga's specific lead structure into Koung's device for the explicit purpose taught by Suenaga: "to increase the bonding area when bonding with the mounting substrate, making it possible to improve the adhesive strength." This addressed a common goal in semiconductor packaging.
  • Expectation of Success: Combining a known structural feature (Suenaga's step) into a similar device (Koung's package) to achieve its well-understood and stated function (improved bonding) would have been a routine and predictable design modification.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Koung, Urasaki, and Oshio for claims 1 and 7, and combining Koung, Oshio, and Suenaga for claim 19, which relied on similar arguments for combining the respective teachings.

4. Key Claim Construction Positions

• Petitioner argued that a formal claim construction was unnecessary for the purposes of the IPR. It contended that the cited prior art combinations disclose all challenged claim limitations regardless of whether the terms are given their Broadest Reasonable Interpretation (BRI) or the narrower constructions adopted by a district court in related litigation. Petitioner maintained that its unpatentability arguments prevail under any of the proposed constructions from the related case.

5. Arguments Regarding Discretionary Denial

• Petitioner acknowledged related district court litigation involving the ’250 patent and a contemporaneously filed second IPR petition against the same patent. However, Petitioner argued that discretionary denial would be inappropriate. It asserted that this petition raised different theories of obviousness based on a different primary reference (Koung, which is 35 U.S.C. §102(e) prior art) compared to the other petition (which relies on §102(b) prior art). Petitioner requested institution on the grounds in both petitions, arguing the different theories are not cumulative and provide distinct reasons for unpatentability.

6. Relief Requested

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