PTAB

IPR2018-01226

Everlight Electronics Co Ltd v. Document Security Systems Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Optical Device
  • Brief Description: The ’087 patent relates to housings for surface-mount light-emitting diodes (LEDs). The invention focuses on specific structural features, including a reflector housing with a first "pocket" on its top surface for holding LED dies and a second "pocket" on its bottom surface, as well as "lead receiving compartments" formed in the peripheral sidewall.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kyowa - Claims 1, 6-8, 15, and 17 are obvious over Kyowa.

  • Prior Art Relied Upon: Kyowa (Japanese Patent Application Publication No. 2001-118868).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kyowa, which describes a surface-mounted LED component, discloses every element of the challenged claims. Kyowa teaches a resin package (reflector housing) formed over a lead frame, with a top-side opening (the first pocket) for housing LED chips. Petitioner contended that Kyowa’s disclosed injection molding process, which uses a central injection hole extending into the mold cavity, would inherently and obviously result in a recess on the bottom of the final package, thereby teaching the claimed second pocket. Furthermore, Kyowa’s external leads are recessed into the housing, forming the claimed lead receiving compartments.

Ground 2: Obviousness over Matsumura - Claims 1, 6-8, 15, and 17 are obvious over Matsumura.

  • Prior Art Relied Upon: Matsumura (Application # 2004/0206964).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Matsumura explicitly discloses an LED device with all claimed features. Matsumura shows a polymer package housing formed around a lead frame, with a first pocket ("opening portion 2a") on its front face for mounting LEDs. Critically, Petitioner pointed to Figure 1C of Matsumura, a cross-sectional view, as explicitly showing a second pocket on the back side of the housing. The reference also depicts leads recessed into the housing sidewall, forming the claimed compartments, separated by ribs.

Ground 3: Obviousness over Matsumura in view of Suehiro - Claims 1, 6-8, 15, and 17 are obvious over Matsumura in view of Suehiro.

  • Prior Art Relied Upon: Matsumura (Application # 2004/0206964) and Suehiro (Patent 6,834,977).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative, assuming Matsumura alone was found insufficient. Petitioner argued that Matsumura provides the basic dual-pocket LED structure. Suehiro, which shares inventors and an assignee with Matsumura, was argued to supply any allegedly missing details, specifically by teaching a housing made of a "high white reflectance" material (the "reflector" aspect) and providing a more detailed depiction of lead receiving compartments separated by ribs.
    • Motivation to Combine: A POSITA would combine Matsumura with the teachings of the highly similar Suehiro reference to improve the device's optical efficiency. Suehiro explicitly teaches that a high-reflectance material enhances light output and reduces power consumption. The similar design context and shared inventors/assignee provide a strong reason to incorporate Suehiro's improvements into Matsumura's design.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the references, as both describe similar LED package structures manufactured using conventional injection molding techniques.

  • Additional Grounds: Petitioner asserted alternative obviousness challenges to address potential narrow claim constructions. These included combining Matsumura with Oshio (Application # 2008/0054287) to explicitly teach forming the second pocket from an injection gate to prevent mounting burrs, and combining Kyowa with Okazaki ’661 (Patent 6,653,661) to teach using dual resin-filled pockets to minimize thermal stress.

4. Key Claim Construction Positions

  • "pocket" / "cavity": Petitioner argued for a broad construction of these terms to mean a "partially enclosed space." This position was based on the patent's specification (which uses the terms interchangeably), dictionary definitions, and, critically, the Patent Owner's alleged broad interpretation in related district court litigation. Petitioner contended that under this construction, even a small depression left as an artifact of the injection molding process, as shown in the prior art, would meet the limitation.
  • "lead receiving compartments are formed in the peripheral sidewall...": Petitioner proposed this phrase be construed as "partially enclosed spaces adjacent to a side surface that can receive a lead." This interpretation does not require a pre-formed compartment but allows for the space to be formed during the injection molding process itself, where the leads press against the mold and exclude resin, thereby creating their own recessed compartments in the housing sidewall.

5. Key Technical Contentions

  • Injection Molding Artifacts: A central technical argument underpinning multiple grounds was that a standard injection molding process, particularly one using a gate that protrudes into the mold cavity as shown in Kyowa, would inherently create a vestige on the finished part. Petitioner contended that a POSITA would understand that this vestige would be a recess or indentation (i.e., a "pocket") on the bottom surface of the LED housing. This technical principle was used to argue that references like Kyowa inherently teach the claimed "second pocket" even if not explicitly described as such.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 6-8, 15, and 17 of Patent 7,524,087 as unpatentable.