Cree Inc v. Document Security Systems Inc

1. Case Identification

• Case #: IPR2018-01220
• Patent #: 7,256,486
• Filed: June 7, 2018
• Petitioner(s): Cree, Inc.
• Patent Owner(s): Document Security Systems, Inc.
• Challenged Claims: 1-4

2. Patent Overview

• Title: LED Packaging Device
• Brief Description: The ’486 patent is directed to a packaging device for a light-emitting diode (LED). The device includes a substantially planar substrate with two opposed major surfaces, an electrically conductive mounting pad on one major surface for mounting an LED die, and at least one interconnecting element extending through the substrate to connect the mounting pad to a conductive pad on the opposing major surface.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Ishinaga in view of Slater.

• Prior Art Relied Upon: Ishinaga (Japanese Patent Application Publication No. 2001-308388) and Slater (Patent 6,791,119).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ishinaga, which describes a chip-type light-emitting element, disclosed most limitations of the challenged claims. Ishinaga taught a semiconductor device with a planar insulating substrate, a mounting pad and a bonding pad on its top surface, connecting pads on its bottom surface, and conductive through-holes interconnecting the top and bottom pads. However, Petitioner contended that Ishinaga was silent regarding the specific metallization of the LED's top and bottom surfaces. To supply this element, Petitioner relied on Slater, which disclosed "vertical" LEDs with metallized contacts on both the top and bottom major surfaces, comprising various metal layers (ohmic, reflective, barrier, and bonding) that function as electrodes. Petitioner asserted the combination of Ishinaga's packaging structure with Slater's metallized LED renders claim 1 obvious. For dependent claims 2 and 3, Petitioner argued that Ishinaga taught the required additional bonding pad and wire, and that Slater's disclosure of metallized surfaces functioning as distinct top and bottom electrodes met the further limitations. For claim 4, Petitioner contended its functional limitations—withstanding operating temperature and providing low-resistance—were inherent properties of Ishinaga's disclosed copper interconnects or obvious design considerations.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Slater's LED with Ishinaga's packaging for two primary reasons. First, a POSA would modify Ishinaga's device with Slater's advanced metallization to provide necessary electrical contacts, improve current spreading, and add reflection functionality. Second, a POSA starting with Slater’s efficient LED would be motivated to use Ishinaga’s compact mounting assembly to achieve advantageous size reduction and increased mounting density.
  • Expectation of Success: A POSA would have had a high expectation of success because incorporating a metallized LED into a package was a simple substitution of one known element for another. The techniques for applying metallization layers to LEDs, such as sputtering or plating, were conventional and widely practiced in the industry at the time.

Ground 2: Claims 1-4 are obvious over Abe in view of Slater.

• Prior Art Relied Upon: Abe (Patent 5,177,593) and Slater (Patent 6,791,119).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented a similar argument using Abe as the primary reference. Petitioner argued that Abe, which disclosed a display device with LEDs, taught a structure meeting most limitations of claim 1, including a planar resin substrate, a mounting pad and bonding pad on the top surface, connecting pads on the bottom surface, and interconnecting elements (lead interconnections in through-holes). As with Ishinaga, Petitioner asserted that Abe was silent on the details of the LED's surface metallization. Slater was again relied upon to teach a vertical LED with metallized top and bottom surfaces comprising multiple functional metal layers to be used within Abe’s packaging structure. Petitioner argued this combination rendered claim 1 obvious. The arguments for dependent claims 2-4 followed the same logic as in Ground 1, with Abe providing the basic structure (including the bonding pad and wire for claim 2) and Slater providing the specific metallization and electrode structures for claims 2 and 3. Claim 4's functional requirements were argued to be inherent in Abe's use of metal plating for its interconnections.
  • Motivation to Combine: A POSA would have been motivated to incorporate Slater's metallized LED into Abe's device to improve electrical contact and enhance performance through better current spreading and reflection, as taught by Slater. Alternatively, a POSA would be motivated to place Slater's efficient LED into Abe's mounting assembly because Abe's design provides low susceptibility to damage and is amenable to easy surface mounting technology.
  • Expectation of Success: Petitioner argued there was a strong expectation of success in this combination. The modification involved the straightforward substitution of a known type of LED (from Slater) into a known type of package (from Abe), using conventional and well-understood fabrication and assembly techniques.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the term “metallized . . . major surface” as meaning “a metal layer on at least a portion of the major surface.” This construction was asserted to be consistent with the patent’s specification, which uses phrases like “metallization layer of aluminum,” and is supported by extrinsic evidence, including technical dictionaries. This interpretation is central to Petitioner's arguments, as it allows the various metal contact and electrode layers disclosed in the Slater reference to satisfy the “metallized” limitation of the challenged claims.

5. Arguments Regarding Discretionary Denial

• Petitioner acknowledged that other IPR petitions had been filed against the ’486 patent by other parties. However, Petitioner argued that discretionary denial would be inappropriate because this petition presents new and non-cumulative grounds. Specifically, Petitioner asserted that its primary references, Ishinaga and Abe, are different from those in the other petitions and qualify as prior art under pre-AIA §102(b), whereas some references in the other petitions were asserted under pre-AIA §102(a). Petitioner submitted that these clear differences in the applied art justify its own distinct challenge.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 of the ’486 patent as unpatentable.