PTAB

IPR2018-00966

Nichia Corporation v. Document Security Systems, Inc.

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1. Case Identification

2. Patent Overview

  • Title: LIGHT EMITTING DEVICE
  • Brief Description: The ’297 patent relates to a light-emitting device (LED) designed to prevent the delamination of an encapsulant from the reflector walls. The invention proposes adding one or more "notches" to the reflector walls and a recessed portion in the substrate to better anchor the encapsulant and the light emitter, thereby improving device reliability.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-6 - Claims 1-6 are anticipated under 35 U.S.C. §102 by Loh.

  • Prior Art Relied Upon: Loh (Patent 7,939,842).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’842 patent (Loh) teaches every limitation of claims 1-6. Loh discloses an LED package with a "lens coupler 106" (the claimed reflector) mounted on a "substrate 102" to form a cavity. Crucially, Loh explicitly teaches adding "depressions" (e.g., square-shaped depressions 406, 408) to the reflector walls to control the shape of an encapsulant, which Petitioner contended are structurally identical to the "notches" of claim 1. Loh’s depressions are described as being formed by walls perpendicular to the substrate. Furthermore, Loh discloses filling the cavity and depressions with an encapsulant (claim 2), the reflector having upper and lower portions (claims 3-4), and the electrical connection of the emitter to the substrate (claim 5). Loh also teaches a reflector with a slanted portion that intersects a platform where a notch is located (claim 6).

Ground 2: Obviousness over Loh and Fujiwara - Claims 7-8 and 10-17 are obvious over Loh in view of Fujiwara.

  • Prior Art Relied Upon: Loh (Patent 7,939,842) and Fujiwara (Patent 6,680,568).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Loh provides the foundational LED structure with reflector notches, as argued in Ground 1. However, Loh does not explicitly teach the limitations of claims 7 and 8, which require at least one recessed portion in the substrate where the light emitter is located, bonded by an adhesive. Petitioner argued that Fujiwara supplies these missing elements. Fujiwara teaches an LED package with a "concave portion 22" formed in its substrate (a lead frame or board) which is filled with an adhesive resin to securely bond the LED. This combination, Petitioner argued, renders claims 7-8 and their dependent claims (10-17) obvious.
    • Motivation to Combine: A POSITA would combine Fujiwara's adhesive-filled recess with Loh's notched reflector to solve two well-known and distinct problems in LED packaging. Loh’s notches address encapsulant delamination from the reflector walls, while Fujiwara's adhesive-filled recess addresses the separate problem of poor LED bonding to the substrate, preventing tilted mounting and improving heat dissipation.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining these features represented the application of a known solution (adhesive recess) to a known problem (poor die attachment) within a standard LED package structure (Loh). The combination involved predictable and established manufacturing techniques.

Ground 3: Obviousness over Loh and Andrews - Claims 1-6 and 9 are obvious over Loh alone, or in view of Andrews.

  • Prior Art Relied Upon: Loh (Patent 7,960,819) and Andrews (Application # 2005/0218421).

  • Core Argument for this Ground:

    • Prior Art Mapping: As an alternative to the grounds based on the ’842 patent, Petitioner argued that the ’819 patent (Loh), which incorporates Andrews by reference, renders the claims obvious. The ’819 patent teaches an LED package with a reflector cup having a circumferential "moat 232," which Petitioner asserted functions as the claimed "notch." When combined with the teachings of Andrews (from the same assignee) regarding the use of multiple moats to control encapsulant flow, a POSITA would find it obvious to arrive at the claimed structure. For claim 9, which adds a second notch and specific platform geometry, Petitioner argued that combining the single-moat design of Loh ’819 with the dual-moat teachings of Andrews would lead a POSITA to a double-notch configuration.
    • Motivation to Combine: A POSITA would combine Loh ’819 and Andrews because they are complementary, share a common assignee, and address the same problems of encapsulant control in LED packages. A POSITA reviewing Loh ’819 would have been directed to Andrews to understand the use of moats, and would have been motivated to combine their respective teachings to improve device performance and reliability.
    • Expectation of Success: The combination was a predictable implementation of known design elements (moats/notches) to achieve a desired, known result (improved encapsulant adhesion and radiation control).

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Uraya (Japanese Application # 2005-174998), which teaches an adhesive-filled groove under the LED to solve bonding issues. These grounds relied on similar rationales of combining known solutions to address known problems in LED packaging.

4. Key Claim Construction Positions

Petitioner argued for specific constructions of several key terms that were central to its invalidity arguments.

  • "intersects" / "intersecting": Petitioner proposed this term means a geometric intersection, not necessarily a physical connection. This construction was critical for mapping prior art where a slanted wall and a platform would cross if their lines were geometrically extended, even if they did not physically touch.
  • "at the intersection": Proposed to mean "in, on, or near" the intersection. This broader construction allows a notch to be located proximate to a geometric intersection point, which Petitioner argued is consistent with the patent’s only embodiment (Figure 1).
  • "lower portion" and "upper portion": Petitioner defined these terms relative to the substrate and the positions of the notches. The "lower portion" is the part of the reflector proximate the substrate and the lowest notch, while the "upper portion" is the part proximate the reflector's upper edge and the highest notch. This construction allows for mapping onto prior art reflectors with various geometries.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of Patent 7,652,297 as unpatentable.