PTAB
IPR2018-01205
Cree Inc v. Document Security Systems Inc
Key Events
Petition
Table of Contents
petition
1. Case Identification
- Case #: IPR2018-01205
- Patent #: 7,256,486
- Filed: June 6, 2018
- Petitioner(s): Cree, Inc.
- Patent Owner(s): Document Security Systems, Inc.
- Challenged Claims: 1-3
2. Patent Overview
- Title: Packaging Device For Semiconductor Die, Semiconductor Device Incorporating Same And Method Of Making Same
- Brief Description: The ’486 patent discloses a packaging device for a semiconductor die, specifically a light-emitting diode (LED). The invention describes a semiconductor device comprising a planar substrate with conductive pads on opposed major surfaces, which are electrically connected by conductive interconnecting elements extending through the substrate, allowing for a compact mounting assembly.
3. Grounds for Unpatentability
Ground 1: Claims 1-3 are obvious over Rohm alone or in view of Kish.
- Prior Art Relied Upon: Rohm (Japanese Patent Application Publication No. 2003-17754) and Kish (Patent 5,376,580).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Rohm teaches a surface-mount semiconductor device that discloses nearly every element of the challenged claims. This includes a substantially planar substrate with a top-side mounting pad (die bonding electrode 18) and a bottom-side connecting pad (surface mount electrode 22), interconnected by a through-hole element (connection electrode 26). Rohm further discloses mounting an LED chip on the top-side pad. Petitioner contended that Rohm teaches all limitations of claim 1, with the potential exception of whether the LED's "bottom surface electrode" is explicitly "metallized." For dependent claim 2, Rohm was argued to show a top-side bonding pad (wire bonding electrode 20) connected by a wire to the LED's top surface. For claim 3, Rohm's top and bottom electrodes on the LED were asserted to function as the claimed first and second electrodes.
- Motivation to Combine (for §103 grounds): To the extent Rohm was viewed as not explicitly teaching a metallized surface on its LED electrode, Petitioner asserted a person of ordinary skill in the art (POSITA) would have found it obvious to use one. Kish was cited to show that forming upper and lower metal electrodes on an LED was a "standard," well-known, and predictable practice for applying voltage. A POSITA would combine Rohm's packaging system with the standard metallized electrode taught by Kish to ensure a reliable and functional electrical connection for the LED.
- Expectation of Success: Because forming metal electrodes on LEDs was a standard and well-understood technique to achieve the intended function of providing power, a POSITA would have had a very high expectation of success in implementing the electrode in Rohm's device with a metal layer.
Ground 2: Claims 1-3 are obvious over Matsushita in view of Edmond 589.
- Prior Art Relied Upon: Matsushita (Japanese Patent Application Publication No. 2001-352102) and Edmond 589 (Patent 5,523,589).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Matsushita, like Rohm, discloses the core packaging structure of the challenged claims. Matsushita describes an optical semiconductor device with an insulating substrate, a top-side mounting pad (top of electrode 3), a bottom-side connecting pad (bottom of electrode 3), and a through-hole interconnect (the body of electrode 3). It also describes mounting a vertical-type "semiconductor light-emitting element 4" on the package. However, Matsushita provides limited detail on the specific structure of the LED itself. Edmond 589 was introduced to supply the details of a vertical LED, teaching one with metallized top and bottom ohmic contacts (contacts 30 and 22).
- Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would have been motivated to implement the vertical LED in Matsushita's package using the specific, improved vertical LED design from Edmond 589. Edmond 589 explicitly touts the advantages of its design, including superior brightness, efficiency, and longevity compared to previously available diodes. A POSITA would combine the references to create a packaged LED with these known, advantageous properties. The combination represented the simple substitution of one known element (a generic LED) with another known, improved element (the Edmond 589 LED) to obtain predictable results.
- Expectation of Success: A POSITA would have reasonably expected the successful integration of the Edmond 589 LED into the Matsushita package. Both references relate to the same field, and the combination involved using a known high-performance component for its intended purpose in a compatible package structure.
4. Key Claim Construction Positions
- "metallized ... surface": Petitioner argued for a broad construction of this term to mean "a metal layer on at least a portion of the surface." This construction was asserted to be consistent with the specification's interchangeable use of "metallization layer" and "electrode" and supported by extrinsic technical dictionaries. This construction was critical to mapping prior art references that described metal electrodes but did not use the exact word "metallized."
- "...metallized top/bottom major surface comprises a first/second electrode...": For claim 3, Petitioner proposed this phrase means "the metallized surfaces comprise electrical contacts to the LED." This functional construction was argued to align with the specification's description of the electrodes' purpose. It allowed Petitioner to argue that prior art showing functional metal contacts on the top and bottom of an LED met the limitation, even if not explicitly defined with the patent's exact terminology.
5. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3 of Patent 7,256,486 as unpatentable under 35 U.S.C. §103.
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