Lowes Companies Inc v. Nichia Corp

1. Case Identification

• Case #: IPR2018-00699
• Patent #: 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

2. Patent Overview

• Title: Light Emitting Device and Method of Manufacturing the Same
• Brief Description: The ’071 patent discloses a light emitting diode (LED) package comprising a resin part molded onto a metal leadframe. The key features include notches formed in the metal part at each of four outer lateral surfaces, creating a structure where the resin and metal parts are coplanar after the leadframe is trimmed.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Loh - Claims 1, 4, 8-9, 11-12, 15-18, and 25 are anticipated under 35 U.S.C. §102 or obvious under §103 over Loh.

• Prior Art Relied Upon: Loh (Application # 2008/0012036).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Loh, which describes an LED lighting package, discloses every element of the challenged claims. Loh teaches a resin package with a resin part ("package body 230") and a metal part ("leadframe 200") having multiple metal plates. This package has four outer lateral surfaces and a concave portion for mounting an LED. Petitioner asserted that Loh’s manufacturing process, which involves molding resin "on/around the leadframe" and then trimming an external frame (201) along notches, results in a final structure where the resin and metal parts are coplanar at four outer surfaces, with notches in the metal part at these surfaces, as claimed. Loh also explicitly discloses features recited in the dependent claims, such as using thermosetting resin, adding light-reflecting titanium dioxide, and having a metal part with step/concave portions. For claim 15, Petitioner argued Loh shows all upper edges of the metal leads are coplanar. For claim 16, Petitioner argued Loh’s figures show the bottom surfaces of the resin and metal parts are coplanar and a lower surface of the metal part is exposed under the LED.
  • Motivation to Combine (for §103 ground): The alternative obviousness argument relied on the same mappings. Petitioner contended that to the extent any minor difference existed, it would have been obvious for a person of ordinary skill in the art (POSITA) to modify Loh’s device to arrive at the claimed invention. For instance, filling the regions between the leads with resin to achieve the coplanar surface structure was argued to be a simple, predictable design choice to improve package stability and simplify manufacturing.
  • Expectation of Success: A POSITA would have reasonably expected success because combining these known elements from Loh used conventional LED manufacturing techniques to achieve predictable results.

Ground 2: Obviousness over Loh and Mori - Claims 2 and 19 are obvious over Loh in view of Mori.

• Prior Art Relied Upon: Loh (Application # 2008/0012036) and Mori (Application # 2005/0211991).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 2 and 19, which add the limitation of a "sealing member that contains two or more kinds of phosphors." Petitioner asserted that Loh discloses a sealing member (liquid encapsulant) that may contain a phosphor to perform wavelength conversion. While Loh mentions "a phosphor," Mori was introduced to explicitly teach using "two or more kinds of phosphors." Mori describes it as "conventional" to use a mixture of phosphors to adjust the color temperature and emission spectrum of the light emitted from the LED.
  • Motivation to Combine: A POSITA would combine Mori’s teaching with Loh’s device to achieve better color control. Mori expressly teaches that mixing phosphors makes it "possible to set a color temperature without restraint," a known and desirable goal in the field of LED lighting. Since both references relate to LED packages and address the common problem of color conversion, the combination was presented as a predictable solution to a known design need.
  • Expectation of Success: The combination was argued to be straightforward, as it involved incorporating a well-known type of phosphor mixture (from Mori) into the known sealing member of an LED package (like Loh's), with a high expectation of achieving the desired adjustable color output.

Ground 3: Obviousness over Loh, Wang, and Oshio - Claims 5-7 and 21-23 are obvious over Loh and Wang, or alternatively, Loh, Wang, and Oshio.

• 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 addressed claims requiring specific metal plating features. Claim 5 adds a metal layer of a different material disposed on the upper and lower surfaces of a base portion. Petitioner argued that Loh’s leadframe could be combined with Wang's teachings. Wang discloses electroplating a metal layer onto all surfaces of a leadframe before molding and then cutting the leadframe to separate the devices. This process inherently results in a metal layer disposed on all surfaces except for the cut portion, satisfying the limitations of claims 6 and 22. Wang also teaches that the resin part (encapsulant) is disposed over a portion of the plated metal layer, leaving another portion exposed, as required by claims 7 and 23. To the extent Wang was considered not to explicitly teach that the plating and base metal are different materials, Petitioner introduced Oshio, which expressly discloses plating a copper-based alloy leadframe with a different material like silver.
  • Motivation to Combine: A POSITA would combine Wang's or Oshio's plating teachings with Loh's LED package to gain the well-known benefits of plating, such as improved corrosion resistance, solderability, and reflectivity, while retaining the high thermal conductivity of the base leadframe material (e.g., copper). The motivation was to improve the overall performance, reliability, and operating lifetime of the device, which are common goals in LED manufacturing. Plating a leadframe before molding and cutting was a conventional and beneficial design choice.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining a standard plating process with a standard molding and cutting process for an LED leadframe was a routine and predictable manufacturing sequence.

4. Key Claim Construction Positions

• “a notch is formed in the metal part” (claims 1, 15-16): Petitioner argued this term should be given its plain and ordinary meaning. However, if construction were deemed necessary, Petitioner proposed it should mean "there is an opening that penetrates the metal part," consistent with the patent’s specification. Petitioner contended the prior art discloses this limitation under either interpretation.

5. Relief Requested

• 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.