PTAB

IPR2018-01221

Cree, Inc. v. Document Security Systems, Inc.

Title: Optical Device
Brief Description: The ’087 patent describes an optical device featuring one or more light-emitting diodes (LEDs) mounted within a reflector housing. The housing is characterized by a first pocket on its top face for the LEDs, a second pocket on its bottom face, and a peripheral sidewall that includes a plurality of lead-receiving compartments.

Prior Art Relied Upon: Takenaka (Patent 7,012,277).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Takenaka discloses every element of the challenged claims. Takenaka’s semiconductor device includes a resin portion (3) that functions as the claimed "reflector housing" formed around a lead frame (1, 2). The housing has a first pocket (unlabeled cavity holding LED 4), a second pocket (concave 13 holding metal body 8), and a peripheral sidewall. Crucially, Petitioner asserted that indentations in Takenaka’s peripheral sidewall that receive the vertical portions of the leads constitute the claimed "plurality of lead receiving compartments." For dependent claims 7 and 8, Takenaka’s teaching of using plural LEDs for a "full color display" was argued to anticipate using three LED dies with at least two colors.
- Key Aspects: The central assertion for this ground was that the structure of Takenaka’s housing, specifically the indented sidewall accommodating the leads, directly reads on the claim limitation that was added to overcome prior art during prosecution.

Prior Art Relied Upon: Takenaka (Patent 7,012,277), Abe (Application # 2005/0236639).
Core Argument for this Ground:
- Prior Art Mapping: This ground presented an alternative configuration for the claimed "second pocket." While Takenaka taught filling its bottom cavity with a metal body (8) for heat dissipation, Abe taught an alternative design where an open concave cavity (8) at the bottom of an LED package serves the same purpose. The argument was that all elements were taught by Takenaka, as modified by Abe’s teaching of an open bottom cavity instead of a filled one.
- Motivation to Combine: A POSITA would combine these references to create a lower-power version of Takenaka's device. For applications with less demanding heat dissipation requirements, a POSITA would have been motivated to replace Takenaka's metal body with Abe's open cavity design to reduce manufacturing cost, complexity, and weight.
- Expectation of Success: Petitioner contended there would be a high expectation of success because Takenaka’s own fabrication method already involved forming an open bottom cavity (concave 13) before inserting the metal body. Simply omitting the metal body and its insertion step was a straightforward modification.

Prior Art Relied Upon: Takenaka (Patent 7,012,277), Kyowa (Japanese Application # 2001-118868).
Core Argument for this Ground:
- Prior Art Mapping: This ground provided an alternative argument for the "lead receiving compartments" limitation. Petitioner argued it would have been obvious to modify Takenaka's general sidewall indentations with Kyowa's specific design for recessed lead compartments. Kyowa taught recessing individual leads into compartments in the package sidewall, making them flush with the side surface. This modification would inherently create "a plurality of ribs" (claim 6) between the compartments.
- Motivation to Combine: A POSITA, seeking to implement Takenaka's suggestion for a multi-LED "full color display," would need to manage multiple electrical leads. The POSITA would combine Takenaka's basic structure with Kyowa's known method for recessing leads to make the package smaller, more robust, and less susceptible to damage during handling, which are recognized benefits expressly taught by Kyowa.
- Expectation of Success: Success would be expected, as creating individual compartments in the sidewall was a straightforward modification of the molding die and molding process, well within the skill of a POSA.
Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 5) over the combination of Takenaka, Kyowa, and Abe, which combined the arguments from the grounds above.

"pocket" / "cavity": Petitioner argued these terms, used interchangeably in the patent, should be construed to mean "a partially enclosed space." This construction is supported by the specification's depiction of the top pocket (30) and the potentially open bottom pocket (34).
"lead receiving compartments are formed in the peripheral sidewall": Petitioner proposed this key phrase should be construed as "indentations formed in the peripheral sidewall and adjacent the leads, the indentations spanning a majority of a vertical length of the leads." This construction was based heavily on the prosecution history, where the applicant distinguished the invention from prior art (Chikugawa) that had grooves predominantly on the top surface rather than in the sidewall.

Petitioner argued that institution would be appropriate despite two other pending IPRs against the ’087 patent. It was asserted that the grounds presented in this petition were "entirely different" or had "only minimal overlap" with the other petitions, employing different primary references and arguments with a different focus, thus warranting a separate review.

Petitioner requested institution of an inter partes review and cancellation of claims 1, 6-8, and 15-17 of the ’087 patent as unpatentable.