PTAB

IPR2018-01166

Nichia Corp v. Document Security Systems Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Packaging Device for Semiconductor Die, Semiconductor Device Incorporating Same and Method of Making Same
  • Brief Description: The ’486 patent describes a substrate packaging assembly for a light-emitting diode (LED). The assembly includes a planar substrate with mounting and bonding pads on its top surface, connecting pads on its bottom surface, and electrically conductive interconnecting elements running through the substrate to connect the top and bottom pads.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nakajima and Weeks/Kish/Edmond - Claims 1-5 are obvious over Nakajima in view of Weeks, Kish, or Edmond.

  • Prior Art Relied Upon: Nakajima (Japanese Patent Application No. 2002-232017) and one of Weeks (Patent 6,611,002), Kish (Patent 5,376,580), or Edmond (Patent 5,523,589).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nakajima discloses a substrate packaging assembly structurally identical to the one claimed, including a ceramic substrate, mounting and bonding pads, and through-hole interconnects for housing an LED. The petition asserted that Nakajima teaches every limitation of claims 1 and 2 except for the specific requirement that the LED has metallized top and bottom major surfaces comprising an anode and cathode. The secondary references (Weeks, Kish, and Edmond) were cited to demonstrate that LEDs with such metallized top and bottom electrodes were conventional and well-known in the art at the time. For dependent claims 4 and 5, Petitioner contended that Nakajima explicitly discloses using tungsten for its interconnecting elements to provide low resistance and withstand high temperatures.
    • Motivation to Combine: A POSITA would combine the references because it would have been a simple and obvious substitution of one known element (the conventional LED from Weeks/Kish/Edmond) for another (the generic LED in Nakajima's package). The motivation would be to create a functional, high-efficacy lighting device, which was a routine design choice. Weeks also touted benefits such as improved thermal dissipation, providing further motivation.
    • Expectation of Success: The combination of a standard LED with a suitable standard package was argued to be a predictable design choice with a high expectation of success.

Ground 2: Obviousness over Rohm and Weeks/Kish/Edmond - Claims 1-3 are obvious over Rohm in view of Weeks, Kish, or Edmond.

  • Prior Art Relied Upon: Rohm (Japanese Patent Application Publication No. 2003-17754) and one of Weeks (Patent 6,611,002), Kish (Patent 5,376,580), or Edmond (Patent 5,523,589).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rohm, like Nakajima, discloses a substrate packaging assembly with all the core structural elements of claims 1-3, including a substrate, a die bonding electrode (mounting pad), a wire bonding electrode (bonding pad), and through-hole interconnects. Similar to the first ground, the petition asserted that Rohm does not explicitly detail the metallization of its LED's surfaces. The secondary references (Weeks, Kish, or Edmond) were again used to supply the teaching of a conventional LED with metallized top and bottom major surfaces forming the electrodes.
    • Motivation to Combine: The motivation was again presented as a simple substitution of a known, commercially available type of LED into a known packaging assembly. A POSITA would be motivated to use Rohm’s package because it was designed to increase the packaging density of surface-mount devices, a known goal in the art.
    • Expectation of Success: Petitioner asserted a high expectation of success for this predictable combination of known components.

Ground 3: Obviousness over Nakajima, Weeks/Kish/Edmond, and Jochym - Claim 6 is obvious over Nakajima in view of Weeks, Kish, or Edmond, and in further view of Jochym.

  • Prior Art Relied Upon: Nakajima (Japanese Patent Application No. 2002-232017), one of Weeks (Patent 6,611,002), Kish (Patent 5,376,580), or Edmond (Patent 5,523,589), and Jochym (Patent 6,747,217).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination for claims 1-5. Claim 6 further requires the interconnecting element to be a "slug of electrically conductive material" that is "press-fit" into a through-hole. Petitioner acknowledged that Nakajima’s interconnect is formed by screen-printing a metallized paste, not by press-fitting a slug. Jochym was introduced to teach forming interconnects in printed circuit boards by press-fitting a conductive stake or pin into a through-hole.
    • Motivation to Combine: A POSITA, when implementing the device of Nakajima, would have recognized that press-fitting a conductive slug (as taught by Jochym) was a known and available alternative to using a metallized paste for creating through-hole interconnects. Jochym was presented as teaching that this technique was a beneficial alternative to plating, especially in thicker substrates, thus motivating its use as a substitute for Nakajima’s paste method.
    • Expectation of Success: Success would be expected, as this was merely the substitution of one known interconnect manufacturing technique for another to achieve a predictable result.
  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges that were permutations of the grounds above, primarily substituting Matsushita (Japanese Patent Application No. 2001-352102) as the primary reference teaching the packaging assembly, or combining references to challenge claims 4-5 and 6 under different primary art combinations. The core logic of substituting a known LED (from Weeks, Kish, or Edmond) and/or a known interconnect method (from Jochym) remained consistent.

4. Key Claim Construction Positions

  • "major surface": Petitioner proposed that under the broadest reasonable interpretation, this term should be construed to mean "a face that is greater in size than the other faces of the element being described." This construction is based on the term's geometric context in the specification.
  • "metallized ... major surface": Petitioner proposed construing this phrase as "a major surface having metal on at least a portion thereof." This construction was argued to be critical, as it supports the contention that prior art LEDs with electrodes that do not cover the entire surface still meet the claim limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner acknowledged a previously filed petition by another party (IPR2018-00333) but argued against discretionary denial. It stated that this petition should be considered because it challenges additional claims (claims 4-6), the grounds are different, and the arguments are presented with a different focus and manner.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of Patent 7,256,486 as unpatentable under 35 U.S.C. §103.