PTAB

IPR2018-01165

Nichia Corp v. Document Security Systems Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Optical Device
  • Brief Description: The ’087 patent relates to a surface-mount light-emitting diode (LED) package. The design features a reflector housing formed around a lead frame, with an LED die mounted in a first pocket on its top side and lead receiving compartments formed in the peripheral sidewall to house electrical leads.

3. Grounds for Unpatentability

Ground 1: Obviousness over Okazaki and Critelli - Claims 1, 6, and 9-19 are obvious over Okazaki in view of Critelli.

  • Prior Art Relied Upon: Okazaki (Patent 6,653,661) and Critelli (Patent 4,959,761).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Okazaki, which discloses a chip-type LED, teaches nearly every element of independent claim 1. Okazaki allegedly shows a lead frame, a reflector housing with first and second end faces, a first pocket containing the LED die and encapsulant, and a second pocket on the opposing face. Petitioner contended the only key limitation missing from Okazaki is "a plurality of lead receiving compartments...formed in the peripheral sidewall of the reflector housing." To supply this element, Petitioner asserted that Critelli teaches an LED housing with recessed slots in its sidewall that function as lead receiving compartments to securely hold spring clip leads.
    • Motivation to Combine: A POSITA would combine Okazaki and Critelli to solve a known problem explicitly addressed by Critelli: protecting leads from being too pliable or susceptible to external forces. Petitioner argued that incorporating Critelli’s protective sidewall compartments into Okazaki's basic LED structure would have been a simple, predictable mechanical design change to improve lead stability and device robustness.
    • Expectation of Success: A POSITA would have had a high expectation of success because modifying a housing sidewall to include lead-securing compartments was a known and common technique for improving the structural integrity of LED packages and providing a guide for electrode placement during assembly.

Ground 2: Obviousness over Takenaka and Critelli - Claims 1-3, 5-6, and 9-19 are obvious over Takenaka in view of Critelli.

  • Prior Art Relied Upon: Takenaka (Application # 2004/0135156) and Critelli (Patent 4,959,761).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented Takenaka as an alternative primary reference that discloses all limitations of claim 1 except for the peripheral sidewall lead compartments. Takenaka describes a semiconductor light-emitting device with a resin reflector housing formed around a lead frame, a first pocket holding the LED die and encapsulant, and a second pocket on the bottom containing a metal body for heat dissipation. As in the first ground, Petitioner relied on Critelli’s disclosure of sidewall slots to teach the missing limitation of lead receiving compartments.
    • Motivation to Combine: The motivation to combine was identical to the first ground. A POSITA would be motivated to enhance the durability of Takenaka’s design by incorporating the known solution for lead protection and stability taught by Critelli. The combination addressed the common industry problem of fragile leads.
    • Expectation of Success: The expectation of success was based on the same reasoning as the previous ground, as it involved applying a known, predictable solution (sidewall compartments) to a known problem (lead instability) in a similar device.

Ground 3: Obviousness over Okazaki, Critelli, and Cheong - Claims 7-8 are obvious over Okazaki in view of Critelli and Cheong.

  • Prior Art Relied Upon: Okazaki (Patent 6,653,661), Critelli (Patent 4,959,761), and Cheong (Application # 2008/0041625).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground extended the Okazaki/Critelli combination to address dependent claims 7 and 8, which require three LED dies and at least two different colors, respectively. Petitioner argued that while the base combination does not explicitly show a three-LED configuration, Cheong teaches a surface-mount device package containing three separate LEDs (red, green, and blue) to achieve a full-color display.
    • Motivation to Combine: A POSITA would be motivated to incorporate Cheong’s multi-color LED arrangement into the base Okazaki/Critelli design to achieve the well-known and desirable goal of producing white or multi-color light. This was positioned as a routine design choice to enhance the functionality of the base LED package for use in applications like display panels.
    • Expectation of Success: Success would be highly expected and predictable, as implementing multiple colored LEDs within a single package was a common and routine practice in the art to create full-color light sources.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on similar theories. These grounds primarily involved substituting Kamada (Japanese Design Patent No. 1176348) or Kyowa (Japanese Application # 2001-118868) for Critelli to teach the sidewall lead compartments. Further grounds used Kamada as the primary reference or added Cheong or Kyowa to the Takenaka combinations to teach the multi-LED features of dependent claims.

4. Key Claim Construction Positions

  • Petitioner did not formally propose any constructions but highlighted that the ’087 patent’s specification defines the terms "pocket" and "cavity" as being synonymous. This point was used to argue that a structure in the prior art remains a "pocket" or "cavity" for the purposes of the claims even if it is filled with an encapsulant or other material.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 7,524,087 as unpatentable under 35 U.S.C. §103.