Nichia Corporation v. Document Security Systems, Inc.

1. Case Identification

• Case #: IPR2019-00397
• Patent #: 6,949,771
• Filed: December 10, 2018
• Petitioner(s): Nichia Corporation
• Patent Owner(s): Document Security Systems, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Light Source
• Brief Description: The ’771 patent describes a light-emitting diode (LED) package designed to improve thermal performance. The invention introduces a substrate with an aperture and a thermal dissipation pad, or "platform," that both supports the LED die and draws heat away from it, addressing a key drawback of prior art surface mount LED packages.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are obvious over Nei in view of Suenaga

• Prior Art Relied Upon: Nei (Japanese Application # 08-264841) and Suenaga (Japanese Application # 2000-223752).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nei discloses a surface-mounted LED with most of the key structural elements, including a substrate (polyimide film 1B), an aperture (cavity 3B), and a platform (copper foil 2 and plating layer 4) that covers the aperture opening and extends over the sidewall. Suenaga is cited to supply teachings that are either silent in Nei or represent well-known alternatives, such as using a transparent encapsulant to improve light efficiency, making the platform from thermally conductive copper, and using various insulating resins for the substrate. For example, claim 1 requires a platform that extends over the sidewall, which Petitioner asserted is taught by Nei, while other limitations like a tapered aperture wall are taught by both references.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Nei and Suenaga to improve the overall performance and manufacturability of an LED package. For instance, a POSITA would incorporate Suenaga’s teaching of a light-transmissive epoxy resin into Nei's structure to achieve Nei’s stated goal of creating a higher-efficiency optical device. Similarly, a POSITA would find it obvious to use Suenaga's materials (e.g., thermally conductive copper platform) to realize the known benefits of heat dissipation in Nei's device.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves integrating known, compatible components (e.g., transparent encapsulants, metal platforms, insulating substrates) using standard fabrication techniques to achieve predictable improvements in light output and thermal management.

Ground 2: Claims 10-11 are obvious over Suenaga in view of Izuno

• Prior Art Relied Upon: Suenaga (Japanese Application # 2000-223752) and Izuno (Japanese Application # H9-293904).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Suenaga discloses the foundational structure of the LED package in claims 10-11, including a substrate with an aperture, a platform covering the opening, a mounted LED, and a transparent encapsulant. However, Suenaga's description of the electrical interconnects was argued to be general. Izuno is introduced to explicitly teach the specific interconnect configuration claimed: electrically-conductive interconnects with exposed pads on one surface for external circuitry and terminals on the other surface coupled to the LED. Claim 11 adds the use of through-hole vias for these interconnects, which Petitioner asserted is also directly taught by Izuno's structure.
  • Motivation to Combine: A POSITA would combine Izuno's specific through-hole via interconnects with Suenaga's LED package to improve manufacturability and provide a robust method for electrical connection. The motivation would be to enable Suenaga’s device to be used in applications like "planar displays such as billboards," which requires reliable connection to external power and control circuitry, a feature explicitly provided by Izuno's electrode terminals.
  • Expectation of Success: The combination would have been straightforward, as incorporating through-hole vias into ceramic substrates was a conventional and well-understood technique at the time, ensuring a high expectation of success.

Ground 3: Claims 2-4 and 7 are anticipated by Okazaki '463

• Prior Art Relied Upon: Okazaki '463 (Japanese Application # 08-8463).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Okazaki '463 discloses each and every element of claims 2-4 and 7. Okazaki's "insulating substrate 71" with a "through-hole 70" was mapped to the claimed substrate and aperture. The "first metal layer 72" bonded to the back side of the substrate was identified as the claimed "platform being located outside of said aperture." Okazaki '463 further teaches mounting an "LED chip 81" on this platform within the aperture and encapsulating it with a "protective part 85 made of transparent resin." Dependent claims are also allegedly disclosed, including a reflective platform surface (Okazaki's silver layer), a thermally conductive platform (Okazaki's copper film), and an insulating substrate (Okazaki's glass cloth epoxy resin).
• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2) against claims 5-6 over Okazaki '463, arguing it would have been obvious to a POSITA to use a standard plating technique to form Okazaki's metal platform.

4. Key Claim Construction Positions

• Petitioner argued that the phrase "said platform being located outside of said aperture," found in claims 1-5 and 7-8, should be construed to mean "a horizontal flat portion of the platform is located outside the aperture."
• This construction was asserted to be critical because it is consistent with the patent’s specification and prosecution history, which describe a platform having both a horizontal portion outside the aperture and extensions that reach into the aperture to cover the sidewalls. This interpretation allows prior art references that show a platform on the exterior surface of a substrate to meet the claim limitation, even if other parts of the same structure extend into the aperture.

5. Arguments Regarding Discretionary Denial

• The petition was a refiling after a previous petition (IPR2018-01167) was denied institution under §314(a) and §325(d) due to substantial overlap with a co-pending IPR filed by another party (Seoul IPR2018-00265).
• Petitioner argued that the Board should not exercise its discretion to deny institution of this new petition because it was narrowly tailored to eliminate the grounds and arguments that overlapped with the Seoul IPR, directly addressing the Board's prior concerns.
• Petitioner further argued that discretionary denial would be prejudicial, as the co-pending Seoul IPR could settle before a final written decision, leaving Petitioner without a forum to challenge the patent's validity on these non-overlapping grounds. The Patent Owner’s litigation strategy of suing multiple defendants serially was also cited as a factor weighing against denial.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-11 of Patent 6,949,771 as unpatentable.