PTAB

IPR2018-00265

Seoul Semiconductor, Co. Ltd v. Document Security Systems, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Light Source
  • Brief Description: The ’771 patent relates to a surface-mount light-emitting diode (LED) package designed for improved heat dissipation. The invention discloses a structure comprising a substrate with a through-aperture, a thermally conductive platform that covers the aperture's lower opening, and an LED die mounted on the platform to create an efficient thermal path to an external surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sharp - Claims 1-9 are obvious over Sharp.

  • Prior Art Relied Upon: Sharp (Japanese Patent Application Publication No. 07-235696).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sharp, which was not considered during the original prosecution, discloses a "Chip Component Type LED" with a structure that meets every limitation of the challenged claims. Sharp’s figures showed a substrate with a through-hole aperture, an LED chip mounted on a platform within the aperture, and a transparent resin encapsulant. The platform was shown to comprise a metal sheet on the substrate’s back surface that covered the aperture’s opening and a metal plating layer that extended over the aperture's inclined inner sidewalls, directly corresponding to the structure of the ’771 patent. Petitioner further asserted Sharp taught that this platform could be made of thermally conductive metals (like copper, nickel, or silver) and formed via plating, addressing limitations in dependent claims.
    • Motivation to Combine: As a single-reference ground, the motivation was inherent in Sharp's complete disclosure. Petitioner contended that a person of ordinary skill in the art (POSITA) would recognize that Sharp’s embodiments taught all the claimed features, making their combination to arrive at the claimed invention obvious.
    • Expectation of Success: Success was expected because Sharp provided a complete, functional design for an LED package that incorporated all the key structural elements recited in the claims.

Ground 2: Obviousness over Stanley - Claims 1-8 are obvious over Stanley.

  • Prior Art Relied Upon: Stanley (Japanese Patent Application Publication No. 11-284233).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted Stanley, also not of record, provided a disclosure substantially similar to Sharp but with a stronger focus on thermal conductivity. Stanley taught a "Flat Mounting Type Led Element" with a resin substrate, a through-hole aperture, and an LED mounted on a platform. This platform included a copper foil on the rear of the substrate, which Stanley explicitly stated "is directly exposed to the exterior... [which] allows cooling efficiency... to be improved." The platform also included a reflective face extending over the tapered sidewall of the aperture, and the entire assembly was encapsulated in transparent resin, mapping directly to the limitations of independent claim 1 and several dependent claims.
    • Motivation to Combine: As a single-reference challenge, Petitioner argued Stanley alone rendered the claims obvious. It taught a complete LED package with the specific purpose of improved heat dissipation, the central problem addressed by the ’771 patent.
    • Expectation of Success: A POSITA would have had a high expectation of success as Stanley described a fully realized device and explicitly taught the functional benefit of improved thermal performance achieved by its platform structure.

Ground 3: Obviousness of Claim 9 - Claim 9 is obvious over Sharp in view of Konishi.

  • Prior Art Relied Upon: Sharp (Japanese Patent Application Publication No. 07-235696) and Konishi (Patent 5,635,115).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 9 adds the limitation that the encapsulant is "molded to form a focusing dome." Petitioner argued Sharp disclosed that its encapsulant could be "made to have a lens shape" to focus light. Konishi taught a known method for producing a focusing dome lens over an LED device using molding.
    • Motivation to Combine: A POSITA looking to implement the lens shape taught by Sharp would be motivated to use a known, reliable, and cost-effective manufacturing technique. Petitioner argued that Konishi provided just such a technique, explaining that molding allows for the mass production of light-emitting devices. The ’771 patent itself admitted molding was a "known transfer molding process."
    • Expectation of Success: Given that molding was a conventional and well-understood process for encapsulating electronics and forming lenses, a POSITA would have had a clear expectation of success in applying Konishi's molding method to form the lens shape on Sharp's device.
  • Additional Grounds: Petitioner asserted that claim 9 is also obvious over Stanley in view of Konishi, applying the same rationale for using a known molding process to form a focusing dome on the base device disclosed by Stanley.

4. Key Claim Construction Positions

  • The Petitioner argued for a broad construction of the term "said platform being located outside of said aperture" (recited in claims 1-5, 7, and 8) to mean the platform is at least partially outside the aperture. This interpretation, supported by the ’771 patent’s own figures showing the platform extending both outside the substrate and along the inner walls of the aperture, was critical to Petitioner's argument. It allowed the prior art references, which disclose similar platform structures that are not entirely external to the aperture, to satisfy this key claim limitation under the broadest reasonable interpretation standard.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9 of Patent 6,949,771 as unpatentable.