PTAB

IPR2018-00699

Lowe’s Companies, Inc. v. Nichia Corporation

Patent #: U.S. Patent No. 9,537,071
Filed: February 26, 2018
Petitioner(s): Lowe's Companies, Inc., Lowe's Home Centers, LLC and L G Sourcing, Inc.
Patent Owner(s): Nichia Corporation
Challenged Claims: 1-2, 4-9, 11-12, 15-19, 21-23, and 25

Title: LED Package with Notched Leadframe
Brief Description: The ’071 patent relates to a light-emitting diode (LED) package comprising a resin part molded over a metal leadframe. The invention centers on a structure where the leadframe has notches on four sides which, after a molding and cutting process, result in coplanar resin and metal outer surfaces.

Prior Art Relied Upon: Loh (Application # 2008/0012036).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Loh discloses all limitations of independent claims 1, 15, and 16, as well as the challenged dependent claims. Loh teaches a "lighting package" with a resin body molded "on/around" a metal leadframe to form a reflector cup (a concave portion). The leadframe is shown with notches that are filled with resin during molding. After molding, an external frame is trimmed off by cutting along the notches, creating a final package with four outer lateral surfaces where the resin and metal parts are coplanar. Petitioner asserted Loh also discloses that its metal plates are "substantially flat," its resin is a "thermoset," and that the resin may be loaded with a light-reflecting material like TiO2.
- Motivation to Combine (for §103 ground): For the alternative obviousness ground, Petitioner argued that even if not strictly anticipating, a person of ordinary skill in the art (POSITA) would have found it obvious to arrive at the claimed invention, as Loh teaches all the core structural elements and manufacturing steps in the same context for the same purpose.
- Expectation of Success: A POSITA would have had a high expectation of success as Loh’s teachings directly correspond to the claimed features for manufacturing a standard LED package, making the implementation routine and predictable.

Prior Art Relied Upon: Loh (Application # 2008/0012036) and Mori (Application # 2005/0211991).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Loh discloses the base LED package of claims 1 and 16, including a sealing member that may contain "a phosphor" for wavelength conversion. Mori was cited for its express teaching that it is "conventional" to use a sealing member containing "two or more kinds of phosphors" to perform wavelength conversion and precisely adjust the output light's color temperature.
- Motivation to Combine: A POSITA would combine Mori's teaching of using multiple phosphors with Loh's LED package to gain the well-known and desirable advantage of greater control over the output color and color temperature of the emitted light.
- Expectation of Success: Success would be expected because both references operate in the same field of LED packaging, and Mori presents the use of multiple phosphors as a common and reliable technique for achieving a predictable and adjustable color output.

Prior Art Relied Upon: Loh (Application # 2008/0012036), Wang (Application # 2008/0073662), and Oshio (Application # 2005/0280017).
Core Argument for this Ground:
- Prior Art Mapping: This ground targets claims requiring a metal part with a base portion and a distinct metal layer. Petitioner asserted Loh provides the base LED package structure. Wang teaches electroplating a metal layer onto the surfaces of a leadframe before molding and then cutting the leadframe, which necessarily leaves the cut surfaces of the metal part unplated. The petition cited Oshio as an alternative or supplement to Wang to expressly teach that the plated layer (e.g., silver) is a different material from the base leadframe (e.g., a copper alloy). The combination thus teaches a metal part with a distinct surface layer on all but the outer lateral surfaces exposed by cutting.
- Motivation to Combine: A POSITA would combine the teachings to plate Loh's copper leadframe, as taught by Wang and Oshio, to obtain the well-known benefits of a plated layer (e.g., improved corrosion resistance, solderability, and reflectivity) while retaining the beneficial thermal conductivity of the underlying base metal.
- Expectation of Success: The combination involved applying standard, well-known manufacturing steps (plating, molding, cutting) to a known LED package design. Each step provides its expected, predictable benefit, making the outcome a product of routine design choice.

The petition argued that the term “a notch is formed in the metal part,” as used in claims 1, 15, and 16, should be given its plain and ordinary meaning. As an alternative, Petitioner proposed that if the term were to be construed, it should mean “there is an opening that penetrates the metal part,” based on the patent’s specification and figures. Petitioner contended that the primary prior art reference, Loh, discloses this limitation under either interpretation, making the construction dispute not dispositive for the primary invalidity grounds.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-9, 11-12, 15-19, 21-23, and 25 of Patent 9,537,071 as unpatentable under 35 U.S.C. §§ 102 and/or 103.