PTAB

IPR2018-01244

Everlight Electronics Co Ltd v. Document Security Systems Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Light Source
  • Brief Description: The ’771 patent discloses a surface mount light-emitting diode (LED) package designed for improved heat dissipation. The invention features a platform on which the LED is mounted, which is intended to provide an efficient thermal path directly to an external surface of the light source, addressing the inefficiency of prior art designs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sharp - Claims 1-9 are obvious over Sharp

  • Prior Art Relied Upon: Sharp (Japanese Patent Application Publication No. 07-235696).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sharp, which was not considered during prosecution, discloses every limitation of the challenged claims. Sharp’s Figure 1 embodiment shows a light source with a substrate defining a through-hole (aperture), a platform covering the bottom opening of the aperture, and an LED mounted on the platform within the aperture, all encapsulated by a transparent resin. The platform is comprised of a metal sheet on the back face of the substrate and a plated metal layer extending over the inner sidewall of the aperture, thus being located both outside and inside the aperture. Petitioner contended that Sharp further teaches that the platform is made of thermally conductive metal (e.g., copper), presents a reflective surface, can be composed of different metal layers, and is plated onto the substrate, thereby meeting the limitations of dependent claims 2-6. The substrate is disclosed as insulating, meeting claim 7, and the encapsulant is bonded to the substrate's surface, meeting claim 8. Finally, Sharp discloses that the encapsulant can be formed into a "lens shape" to focus light, directly teaching the limitation of claim 9.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner asserted that all elements were present in Sharp’s disclosure. The motivation was to combine features from Sharp’s own exemplary embodiments to solve the stated problem of increasing light reflection efficiency.
    • Expectation of Success (for §103 grounds): Success was expected because Sharp itself provides a complete, working device with all the claimed features.

Ground 2: Obviousness over Stanley - Claims 1-8 are obvious over Stanley

  • Prior Art Relied Upon: Stanley (Japanese Patent Application Publication No. 11-284233).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Stanley’s disclosure is substantially similar to Sharp’s and also renders the claims obvious. Stanley’s Figure 1 shows an LED package with a resin substrate having a tapered through-hole, and an LED mounted on a platform within that hole. The platform includes a copper foil on the rear surface of the substrate that closes the hole and a reflective face extending over the inner sidewall. Petitioner argued this structure meets the limitations of independent claim 1. Stanley’s express teaching that the copper foil is "directly exposed to the exterior" for "improved" cooling efficiency was highlighted as a strong teaching of a platform made from a thermally conductive material for conducting heat away, as required by claim 3. Stanley also discloses that the platform is made of metal (copper foil and resin plating), presents a reflective surface, and is plated onto the substrate, mapping to the limitations of dependent claims 2-6. The substrate is disclosed as a commonly used insulating resin, meeting claim 7, and the encapsulant is shown bonded to the substrate, meeting claim 8.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference which Petitioner argued disclosed all claimed elements of a complete device.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success as Stanley describes a functional, integrated LED package.

Ground 3: Obviousness over Sharp in view of Konishi - Claim 9 is obvious over Sharp in view of Konishi

  • Prior Art Relied Upon: Sharp (Japanese Patent Application Publication No. 07-235696) and Konishi (Patent 5,635,115).

  • Core Argument for this Ground:

    • Prior Art Mapping: Claim 9 adds the limitation that the encapsulant is "molded to form a focusing dome." Petitioner argued that Sharp teaches making the encapsulant into a "lens shape" to focus light but does not specify the manufacturing method. Konishi explicitly discloses using a known molding process to produce a focusing dome lens over an LED device.
    • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement Sharp’s lens-shaped encapsulant, would combine it with Konishi’s molding method. Konishi provides a known, reliable, and inexpensive way to produce large numbers of devices with focusing lenses, an advantage directly applicable to manufacturing the device in Sharp. The ’771 patent itself characterizes its own method as "a known transfer molding process," confirming that this was a conventional technique.
    • Expectation of Success (for §103 grounds): Success would be highly expected as molding was the most popular encapsulation method for plastic packages in integrated circuit technology and presented no unique challenges in this context.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 9 based on Stanley in view of Konishi, relying on a nearly identical motivation-to-combine theory.

4. Key Claim Construction Positions

  • "said platform being located outside of said aperture": Petitioner argued that under the broadest reasonable interpretation, this phrase requires that at least a portion of the platform must be outside the aperture, but it does not preclude another portion from being inside the aperture. This construction is supported by the ’771 patent’s specification and figures, which show a platform (270) with one part below the substrate (outside the aperture) and another part extending up the sidewalls (inside the aperture). This interpretation was critical for mapping the prior art, as both Sharp and Stanley show platforms that are partially inside and partially outside the aperture.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’771 patent as unpatentable.