PTAB

IPR2019-00398

Nichia Corp v. Document Security Systems Inc

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1. Case Identification

2. Patent Overview

  • Title: LIGHT SOURCE
  • Brief Description: The ’771 patent discloses a light-emitting diode (LED) package designed to improve heat dissipation. The invention features a substrate with a recess (aperture) and a thermally conductive pad (platform) that forms the floor and reflective sidewalls of the recess, upon which the LED die is mounted.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-9 - Claims 1-9 are anticipated by Okazaki '696 under 35 U.S.C. §102.

  • Prior Art Relied Upon: Okazaki (Japanese Patent Application No. H07-235696, "Okazaki '696").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Okazaki '696 discloses every limitation of claims 1-9. Okazaki '696 teaches a surface-mount LED package with an "insulating substrate" having a "through-hole" that corresponds to the claimed aperture. A "thin metal sheet," which functions as the claimed platform, is bonded to the back face of the substrate, located outside the aperture's opening. Okazaki '696 further discloses an LED chip mounted on this platform within the through-hole, a transparent resin encapsulating the assembly, and a plating layer that extends over the tapered sidewalls of the aperture, thereby meeting the limitation that the platform extends over the sidewall. Petitioner also argued that Okazaki '696 teaches a reflective surface, thermally conductive materials, and a molded dome-shaped lens as required by the dependent claims.

Ground 2: Anticipation of Claims 1-5 and 7-8 - Claims 1-5 and 7-8 are anticipated by Watanabe under §102.

  • Prior Art Relied Upon: Watanabe (Japanese Patent Application No. H11-284233).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Watanabe discloses all limitations of claims 1-5 and 7-8. Watanabe describes an LED package with a "resin substrate" containing a tapering "through-hole" (the aperture). A "copper foil" is attached to the underside of the substrate, covering the opening and forming the horizontal portion of the claimed platform located outside the aperture. Watanabe's platform, comprising the copper foil and a "conductive portion," extends over the reflective sidewalls of the aperture, and an LED chip is mounted on the platform within this aperture. The structure is sealed with a transparent resin. Petitioner contended that these disclosures, which function synergistically to improve brightness and cooling, meet all limitations of the challenged claims.

Ground 3: Obviousness of Claim 9 - Claim 9 is obvious over Okazaki '696 or Watanabe in view of Konishi under §103.

  • Prior Art Relied Upon: Okazaki '696 or Watanabe, in view of 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 while Okazaki '696 and Watanabe teach using a dome-shaped lens to focus light, they do not explicitly specify "molding." Konishi teaches that it was well-known to form sealing resins for electronic components by methods including cast molding, injection molding, and transfer molding to create a desired lens shape, such as a "semicircular shape."
    • Motivation to Combine: A person of ordinary skill in the art (POSITA), seeing the functional dome-shaped lens in Okazaki '696 or Watanabe, would have been motivated to consult known manufacturing techniques to form it reliably and inexpensively. A POSITA would combine Okazaki '696 or Watanabe with Konishi to use a known, effective molding process to create the desired focusing dome.
    • Expectation of Success: Molding was a routine and highly popular method for encapsulating electronic packages. A POSITA would have had a high and reasonable expectation of success in applying the standard molding techniques taught by Konishi to form the encapsulant domes disclosed in either Okazaki '696 or Watanabe.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-9 are obvious over Okazaki '696 alone (Ground 2) and that claims 1-9 are obvious over Watanabe alone (Ground 4). These grounds were presented as alternative arguments in the event certain elements were found not to be explicitly disclosed for the anticipation challenges, arguing that any missing element would have been an obvious modification for a POSITA.

4. Key Claim Construction Positions

  • "said platform being located outside of said aperture" (claims 1-5, 7-8): Petitioner proposed this phrase means "a horizontal flat portion of the platform is located outside the aperture." This construction is critical to Petitioner's arguments because it supports the interpretation that the platform can have two distinct parts: a horizontal portion outside the aperture and another portion that extends into the aperture to cover the sidewalls. This allows Petitioner to map prior art showing such a structure, which it argues the Patent Owner disclaimed during prosecution by amending the claims to add this limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) or §325(d). This petition was filed after a prior petition (IPR2018-01167) was denied institution due to substantial overlap with an earlier-filed IPR by a different petitioner (Seoul, in IPR2018-00265). Petitioner asserted this new petition is a "protective" filing to avoid prejudice, as Petitioner would be time-barred if the Seoul IPR were to terminate via settlement before a final written decision. Petitioner represented that it would withdraw this petition if a final written decision is issued in the Seoul IPR. Petitioner also contended that the existence of multiple petitions is a direct result of the Patent Owner's serial litigation campaign against numerous LED manufacturers, a factor that should weigh against discretionary denial.

6. Relief Requested

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