PTAB

IPR2018-00522

Seoul Semiconductor Co Ltd v. Document Security Systems Inc

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1. Case Identification

2. Patent Overview

  • Title: Optical Device
  • Brief Description: The ’087 patent discloses housings for light-emitting diodes (LEDs). The technology centers on two main structural features: a "second pocket" or "cavity" formed on the bottom surface of the housing and a plurality of "lead receiving compartments" formed in the peripheral sidewall of the housing.

3. Grounds for Unpatentability

Ground 1: Claims 1, 6-8, 15, and 17 are obvious over Kyowa.

  • Prior Art Relied Upon: Kyowa (Japanese Patent Application Publication No. 2001-118868).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kyowa teaches every element of the challenged claims. Kyowa discloses an LED component with a resin housing molded over a lead frame, a first pocket on its top surface for the LEDs, and an encapsulant. Petitioner contended that the claimed "second pocket" is an inherent artifact of the injection molding process explicitly disclosed by Kyowa. Specifically, Kyowa’s use of a resin injection hole that extends into the mold cavity would be understood by a person of ordinary skill in the art (POSITA) to necessarily leave an indentation (a pocket) on the bottom surface of the finished part. Further, the "lead receiving compartments" are formed as the external leads are embedded during molding, creating recessed spaces that exclude resin from those areas.
    • Motivation to Combine (for §103 grounds): This ground was asserted under 35 U.S.C. §103 based on a single reference. The motivation derived from implementing Kyowa’s disclosed manufacturing process, which Petitioner argued would lead directly and obviously to the claimed structure, including the second pocket as a vestige of the injection gate.

Ground 2: Claims 1, 6-8, 15, and 17 are obvious over Matsumura.

  • Prior Art Relied Upon: Matsumura (Application # 2004/0206964).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Matsumura explicitly discloses all limitations of the challenged claims. Matsumura teaches an LED device made by insert-molding a polymer package around a lead frame. Petitioner mapped claim limitations to Matsumura's figures, asserting they show a first pocket on the top surface (Fig. 1A, "opening portion 2a"), a second pocket on the bottom surface (explicitly shown in the cross-sectional Fig. 1C), and multiple leads recessed into the sidewall within distinct compartments separated by ribs (Fig. 1A). Petitioner contended this single reference rendered the claims obvious.

Ground 3: Claims 1, 6-8, 15, and 17 are obvious over Matsumura in view of Suehiro.

  • Prior Art Relied Upon: Matsumura (Application # 2004/0206964) and Suehiro (Patent 6,834,977).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative, assuming Matsumura was found insufficient to teach a "reflector" housing and the specific "lead receiving compartment" and "rib" structures. Petitioner argued that Suehiro explicitly supplies these elements. Suehiro teaches a similar LED device with a housing made of a material having "high white reflectance" and provides a detailed disclosure of lead receiving compartments separated by ribs.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Matsumura with Suehiro because they address nearly identical technology, share three inventors, and were assigned to the same companies. Suehiro's explicit teaching of using a highly reflective housing to improve light output efficiency provided a clear motivation to modify Matsumura’s housing for a known benefit. The detailed compartment structure in Suehiro offered a known, advantageous configuration for arranging the leads.
    • Expectation of Success: Combining the references involved applying a known material property (reflectivity) and a well-defined structural configuration (compartments) to a very similar device, which would have resulted in a high expectation of success.
  • Additional Grounds: Petitioner asserted alternative obviousness challenges, including Matsumura in view of Oshio (to address a narrower construction of the "second pocket") and Kyowa in view of Okazaki ’661 (to address a construction requiring a larger second pocket).

4. Key Claim Construction Positions

  • Petitioner argued for broad constructions consistent with the patent’s specification and the Patent Owner's alleged positions in co-pending litigation.
  • "pocket" / "cavity": Petitioner proposed this term be construed as "a partially enclosed space." This construction was based on the specification's interchangeable use of the terms and dictionary definitions. It was asserted to encompass even minor depressions, such as artifacts from an injection molding process, which Petitioner contended the Patent Owner relied upon for its infringement theories.
  • "lead receiving compartments are formed in the peripheral sidewall...": Petitioner proposed this phrase be construed as "partially enclosed spaces adjacent to a side surface that can receive a lead." This construction argues that the compartments need only be capable of receiving a lead and be located adjacent to a side surface, rather than fully enclosing the lead within a discrete cavity.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 6-8, 15, and 17 of the ’087 patent as unpatentable.