PTAB

IPR2018-01167

Nichia Corp v. Document Security Systems Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: LIGHT SOURCE
  • Brief Description: The ’771 patent describes a light-emitting diode (LED) package designed to solve the problem of inefficient heat dissipation in prior art surface-mount LEDs. The invention comprises a substrate with a conic-shaped recess where the LED die is mounted. A key feature is a thermal dissipation pad, or "platform," which forms the floor of the recess and extends up the side walls, creating a direct path to dissipate heat away from the LED die, thereby allowing for higher power operation and increased brightness.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are anticipated under 35 U.S.C. §102 by Okazaki '696.

  • Prior Art Relied Upon: Okazaki ’696 (Japanese Patent Application No. H07-235696).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Okazaki ’696, which describes a chip-type LED for surface mounting, discloses every limitation of claims 1-9. Specifically, Okazaki ’696 teaches an insulating substrate with a through-hole (aperture) having tapered sidewalls. It further discloses a platform (a "thin metal sheet") that is located outside the aperture on its back face and covers the opening. This platform extends over the sidewalls via a plating layer. An LED chip is mounted on the platform within the aperture and sealed with a transparent resin encapsulant, which can be molded into a focusing dome (claim 9). The platform is made of thermally conductive metal layers (claims 3-4), which are plated onto the substrate (claim 5) and comprise layers of different metals (claim 6).

Ground 2: Claims 1-5 and 7-8 are anticipated under §102 by Watanabe.

  • Prior Art Relied Upon: Watanabe (Japanese Patent Application No. H11-284233).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Watanabe, which discloses an LED element in a surface-mountable package, anticipates claims 1-5 and 7-8. Watanabe teaches a resin substrate with an upwardly widening, tapered through-hole. A platform, comprising a copper foil and a conductive portion, is attached to the underside of the substrate, covering the opening. Petitioner asserted that this platform is located "outside" the aperture. An LED chip is mounted on this platform within the aperture and encapsulated with a transparent resin. Watanabe's platform is made of thermally conductive metal (copper and resin plating), and the substrate is an electrically and thermally insulating resin, meeting the limitations of dependent claims.

Ground 3: Claims 10-11 are obvious under 35 U.S.C. §103 over Suenaga in view of Izuno.

  • Prior Art Relied Upon: Suenaga (Japanese Patent Application No. 2000-223752) and Izuno (Japanese Patent Application No. H9-293904).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Suenaga teaches an optical semiconductor device with most elements of claim 10: a substrate with a cavity, a platform covering the opening, an LED mounted on the platform, an encapsulant, and lead electrodes extending between surfaces. However, Suenaga does not explicitly disclose the claimed "exposed pad on the first surface for coupling to external circuitry." Izuno was introduced to supply this missing element, as it teaches an LED package with electrode terminals on the bottom surface of the substrate for connection to an external power supply circuit board. Claim 11 adds the requirement for vias, which Petitioner argued is also taught by Izuno, which describes forming through-holes to connect conductor layers on opposite sides of a ceramic substrate.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Suenaga with Izuno to improve manufacturability and provide a standard method for external connection. Adding Izuno's electrode terminals and vias to Suenaga's package would be an obvious way to create robust, wafer-scale producible interconnects for external circuitry.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as both references describe common structures in LED packaging (e.g., ceramic substrates, interconnects), and implementing such connections was a routine design choice.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 1-9 are obvious over Okazaki ’696 (Ground 2); claims 1-9 are obvious over Watanabe (Ground 4); claims 2-4 and 7 are anticipated by Okazaki ’463 (Ground 5); claims 5-6 are obvious over Okazaki ’463 (Ground 6); and claim 9 is obvious over Okazaki ’696 or Watanabe in view of Konishi (Grounds 7-8).

4. Key Claim Construction Positions

  • Petitioner argued that the phrase "said platform being located outside of said aperture," added during prosecution to overcome prior art, should be construed to mean "a horizontal flat portion of the platform is located outside the aperture."
  • This construction was critical because it allows the "platform" to have two distinct parts: a horizontal portion located outside the aperture and an inclined portion that extends into the aperture and over the sidewalls. Petitioner contended this construction is consistent with the patent’s specification and figures and was essential for arguing that the asserted prior art (e.g., Okazaki '696) met the claim limitations, even though the Applicant had used this limitation to distinguish over different prior art during prosecution.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution based on a previously filed IPR petition (IPR2018-00265) challenging the same patent.
  • Petitioner submitted that this petition should be instituted because it challenges additional claims not included in the earlier petition, presents arguments in a different manner with a different focus, and therefore provides the Board with a more complete record for assessing the patentability of the challenged claims.

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-11 of the ’771 patent as unpatentable.