PTAB

IPR2018-01260

Everlight Electronics Co Ltd v. Document Security Systems Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Semiconductor Device with a Light Emitting Semiconductor Die
  • Brief Description: The ’787 patent describes a semiconductor packaging device for a light-emitting diode (LED) intended for high-density applications. The invention focuses on an LED die that has both its anode and cathode contacts located on its bottom surface, which is then mounted onto a substrate packaging assembly featuring interconnects that route connections from the top-side bonding pads to the bottom-side connecting pads.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lumbard in view of Weeks, Wirth, or Negley - Claims 1-14 are obvious over Lumbard in view of Weeks, Wirth, or Negley.

  • Prior Art Relied Upon: Lumbard (Patent Re. 36,614), Weeks (Patent 6,611,002), Wirth (WO 2005/081319), and Negley (Application # 2004/0217360).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lumbard taught a surface-mount package for an LED, including a planar substrate with top-side bonding pads, bottom-side connecting pads, and interconnecting elements along the substrate sidewalls. However, Lumbard’s LED was a conventional wire-bonded die. Petitioner asserted that Weeks, Wirth, and Negley each independently disclosed a "flip-chip" style LED die with both the anode and cathode located on its bottom major surface—the exact configuration missing from Lumbard but required by the challenged claims. The core of the argument was the substitution of Lumbard’s wire-bonded LED with the known and advantageous flip-chip LED taught by Weeks, Wirth, or Negley.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to achieve predictable benefits. A POSITA would be motivated to use the flip-chip LEDs of Weeks, Wirth, or Negley to eliminate the light-obstructing top electrode and bond wire present in Lumbard's design, thereby improving light output efficiency. This combination would also enable the creation of smaller, more compact components, leveraging Lumbard’s low-cost, mass-producible packaging assembly.
    • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success because the semiconductor arts were a well-established and predictable field. Both flip-chip mounting and wire bonding were well-known techniques, making the substitution of one known type of LED for another in a standard package a routine design choice with predictable results.

Ground 2: Obviousness over Ishidu in view of Weeks, Wirth, or Negley - Claims 1, 5, 6, and 7 are obvious over Ishidu in view of Weeks, Wirth, or Negley.

  • Prior Art Relied Upon: Ishidu (Application # 2006/0198162), Weeks (Patent 6,611,002), Wirth (WO 2005/081319), and Negley (Application # 2004/0217360).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ishidu disclosed a semiconductor package with a substrate, top-side bonding pads, bottom-side connecting pads, and through-hole vias serving as interconnects. While Ishidu’s LED had bottom-side contacts, Petitioner asserted that Ishidu failed to explicitly teach the claimed limitation that the LED’s bottom major surface is also a bottom surface of a substrate of the die. This specific LED structure was allegedly supplied by the teachings of Weeks, Wirth, or Negley, each of which disclosed an LED built on a substrate where the contacts were formed on the substrate's backside.
    • Motivation to Combine: A POSITA would be motivated to incorporate the LEDs from Weeks, Wirth, or Negley into Ishidu's package to gain the benefits of both technologies. Ishidu’s package was attractive for its stated high thermal conductivity and ease of processing. Combining this with the improved LED designs from the secondary references would result in a smaller, more efficient device that eliminates the need for bonding wires.
    • Expectation of Success: The combination was presented as a simple substitution of one known element (Ishidu's LED) for another (the LEDs of Weeks, Wirth, or Negley) to obtain predictable results in a well-understood technical field.

Ground 3: Obviousness over Ogawa in view of Weeks, Wirth, or Negley - Claims 1-14 are obvious over Ogawa in view of Weeks, Wirth, or Negley.

  • Prior Art Relied Upon: Ogawa (Application # 2006/0113906), Weeks (Patent 6,611,002), Wirth (WO 2005/081319), and Negley (Application # 2004/0217360).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted a similar argument as in Ground 2. Ogawa was said to teach a light-emitting device with a substrate, top-side bonding pads, and sidewall interconnects. However, Petitioner argued Ogawa did not disclose that its LED's bottom major surface was also the bottom surface of the LED's own substrate. The flip-chip LED designs from Weeks, Wirth, or Negley were again relied upon to supply this missing element.
    • Motivation to Combine: A POSITA would be motivated to combine these references to leverage the advantages of Ogawa’s package—specifically its “excellent heat resistance and light stability” and suitability for mass production—with the superior, compact design of the LEDs taught by Weeks, Wirth, or Negley.
    • Expectation of Success: Success would be expected due to the predictable nature of substituting one known LED component for another within a known packaging structure to achieve the combined benefits of each.

4. Key Claim Construction Positions

  • "[top] major light emitting surface" / "an oppositely-disposed [bottom] major surface": Petitioner argued these terms should be construed based on their plain meaning and prosecution history to refer to the two largest faces of the LED die itself. The "top" surface is the one through which light is emitted, and the "bottom" is the opposite face. This construction was critical to distinguish the surfaces of the LED die from the surfaces of the larger "substantially planar substrate" on which the die is mounted.
  • "the [bottom] major surface ... is a bottom surface of a substrate of the die": Petitioner proposed this means the face of the LED opposite the light-emitting face is on the substrate side of the LED. This construction was central to the arguments combining primary references with Weeks, Wirth, or Negley, which allegedly disclosed this specific LED substrate configuration.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date: Petitioner contended that the ’787 patent was not entitled to the earlier filing date of its parent application (the ’605 application). It was argued the parent application failed to provide adequate written description for the key claimed feature: an LED with both an anode and a cathode located on the bottom major surface that is also the bottom of the die’s substrate. This argument, if successful, would establish several cited references as prior art under 35 U.S.C. §102.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-14 of the ’787 patent as unpatentable under 35 U.S.C. §103.