PTAB

IPR2018-01225

Everlight Electronics Co Ltd 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 relates to a semiconductor packaging device designed for components like light-emitting diodes (LEDs). The invention describes a structure featuring a substantially planar substrate with conductive pads on its opposing major surfaces, which are electrically connected by an interconnecting element extending through the substrate, aiming to improve packing density and compatibility with assembly processes.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rohm in view of Kish - Claims 1-3 are obvious over Rohm alone or in view of Kish.

  • Prior Art Relied Upon: Rohm (Japanese Application # 2003-17754) and Kish (Patent 5,376,580).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rohm, which describes a surface-mount LED device, discloses nearly all elements of the challenged claims. Rohm teaches a device with a planar substrate, a top-side mounting pad ("die bonding electrode"), a bottom-side connecting pad ("surface mount electrode"), and a through-substrate interconnect ("connection electrode"). Rohm also discloses mounting an LED chip on the top-side pad, where the LED has a "bottom surface electrode" that connects to the mounting pad. This maps to the limitations of independent claim 1. For dependent claim 2, Rohm further discloses a top-side bonding pad connected by a wire bond to the LED's top surface electrode.
    • Motivation to Combine: The primary gap identified by Petitioner was that Rohm, while disclosing top and bottom "electrodes" on the LED, does not explicitly state these surfaces are "metallized." Petitioner asserted that Kish remedies this by teaching the use of "metallized electrodes" as a "standard" and fundamental technique for applying voltages to LEDs. A POSITA would have found it obvious to implement the electrodes in Rohm's device using metal as taught by Kish, as this was a well-known and necessary method for creating functional electrical connections to the LED.
    • Expectation of Success: A POSITA would have had a high expectation of success, as applying standard metal electrodes to an LED package is a simple, predictable implementation to achieve a functional device.

Ground 2: Obviousness over Matsushita in view of Edmond 589 - Claims 1-3 are obvious over Matsushita in view of Edmond 589.

  • Prior Art Relied Upon: Matsushita (Japanese Application # 2001-352102) and Edmond 589 (Patent 5,523,589).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Matsushita discloses a package structure for a vertical-type LED that meets the structural limitations of the claims. Matsushita describes a planar substrate with through-holes, a top-side mounting pad and bonding pad, and bottom-side connecting pads. The interconnects are formed within the through-holes, connecting the top and bottom pads. This package is shown accommodating a vertical "semiconductor light-emitting element" (LED).
    • Motivation to Combine: While Matsushita discloses a suitable package, it provides little detail on the LED itself, particularly regarding metallized surfaces. Edmond 589 discloses an improved vertical LED with metallized top and bottom ohmic contacts designed to enhance brightness, efficiency, and operational lifetime. Petitioner argued that a POSITA would be motivated to combine the improved vertical LED of Edmond 589 with the compatible package disclosed in Matsushita. This combination represents a simple substitution of one known component (a generic LED) with an improved, known component (the Edmond 589 LED) to achieve a predictably better device.
    • Expectation of Success: A POSITA would have reasonably expected that the known performance advantages of Edmond 589's vertical LED, such as improved efficiency from its metallized ohmic contacts, would be successfully realized when integrated into the Matsushita package.

4. Key Claim Construction Positions

  • "metallized ... surface": Petitioner asserted that the broadest reasonable construction for this term is "a metal layer on at least a portion of the surface." This construction was central to the obviousness arguments, as it allowed Petitioner to argue that prior art references disclosing an "electrode" on an LED would render a "metallized surface" obvious, given that using metal for electrodes was standard practice.
  • "...metallized top major surface comprises a first electrode...and the metallized bottom major surface comprises a second electrode": Petitioner proposed this phrase means "the metallized surfaces comprise electrical contacts to the LED." This construction functionally defines the "metallized surfaces" from claims 1 and 2, requiring them to serve as electrical contacts. This was critical for arguing that claim 3 was met by prior art teaching functional top and bottom electrodes, even if not explicitly termed "metallized."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of Patent 7,256,486 as unpatentable under 35 U.S.C. §103.