LG Innotek Co Ltd v. Seoul Semiconductor Co Ltd

1. Case Identification

• Case #: IPR2019-01155
• Patent #: 9,664,356
• Filed: June 11, 2019
• Petitioner(s): LG Innotek Co., Ltd.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Illumination Lens for Short-Throw Lighting
• Brief Description: The ’356 patent discloses an illumination lens designed to produce wide-angle light patterns suitable for short-throw applications, such as backlighting for LCD televisions and commercial refrigerator cabinets. The invention centers on a specific lens geometry, including a concave-plano center lens, to achieve uniform illumination of close targets.

3. Grounds for Unpatentability

Ground 1: Obviousness over Smits-based Combinations - Claims 1-11 are obvious over combinations of [Smits](https://ai-lab.exparte.com/case/ptab/IPR2019-01155/doc/1006), [Muschaweck](https://ai-lab.exparte.com/case/ptab/IPR2019-01155/doc/1009), [Hwang](https://ai-lab.exparte.com/case/ptab/IPR2019-01155/doc/1010), and [Chung](https://ai-lab.exparte.com/case/ptab/IPR2019-01155/doc/1011).

• Prior Art Relied Upon: Smits (Application # 2006/0102914), Muschaweck (Application # 2009/0284951), Hwang (Application # 2008/0100773), and Chung (Application # 2008/0158472).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smits, which teaches a "wide-emitting lens" for LCD backlighting, discloses the core features of the challenged claims. Smits’s lens allegedly includes a rotationally symmetric, light-incident cavity and a light-exiting surface with a flat top portion and convex sides. To the extent the top surface of Smits’s lens was not considered perfectly flat, Muschaweck was introduced for its explicit teaching of using a planar central area on a lens to achieve advantageous off-axis light distribution. For other claims, Petitioner mapped Hwang’s disclosure of "fixing protrusions" to the claimed "peg disposed on a rim," and mapped Chung’s disclosure of a black "light absorbing layer" on a circuit board to the claimed absorptive material.
  • Motivation to Combine: A POSITA would combine Smits with Muschaweck by substituting one known lens surface type for another to achieve the predictable result of a desired divergent light pattern. A POSITA would be motivated to incorporate Hwang’s mounting pegs as a well-known method for attaching a lens to a substrate. Finally, a POSITA would combine the teachings of Chung to add a light-absorbing layer to the Smits backlight assembly to solve the known problem of stray light damaging underlying circuitry, thereby improving system reliability.
  • Expectation of Success: Petitioner contended that combining these known elements—modifying a lens surface, adding mounting pegs, and applying a protective coating—involved conventional techniques applied for their intended purposes, leading to a high expectation of success.

Ground 2: Unpatentability over Parkyn - Claims 1-7 are anticipated by Parkyn or, alternatively, are obvious over Parkyn in view of Muschaweck.

• Prior Art Relied Upon: Parkyn (Application # 2009/0040769) and Muschaweck (Application # 2009/0284951).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Parkyn, an earlier application by the same inventors as the ’356 patent, anticipates claims 1-7. Parkyn discloses a lens for wide-angle illumination in similar applications (e.g., refrigerator displays) that allegedly possesses all claimed features. These features include a "bell-shaped circularly symmetric lower surface" (the claimed cavity), a "super-ellipsoid upper surface" with a flat central portion (the claimed light-exiting surface), an inclined bottom surface, and a plurality of mounting pegs.
  • Motivation to Combine: In the alternative obviousness argument, Petitioner argued that if Parkyn’s top surface were considered slightly curved rather than flat, a POSITA would have been motivated to modify it based on Muschaweck’s explicit teaching of a flat central lens area to predictably achieve the desired optical performance.
  • Key Aspects: The primary reference, Parkyn, was co-authored by the named inventors of the challenged patent and describes their own lens designs from at least four years prior to the ’356 patent’s effective filing date.

Ground 3: Anticipation by Kim - Claims 1-7 are anticipated by Kim.

• Prior Art Relied Upon: Kim (Application # 2014/0117394).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Kim, which is directed to a "light emitting module" for providing uniform light over a wide area, discloses every limitation of claims 1-7. Kim expressly teaches a wide-angle lens comprising a concave, shell-shaped inner cavity for receiving light. Its outer surface has a "relatively flat surface" near the central axis from which a convex surface extends outwardly. Kim further discloses that the lens has an inclined bottom surface and "leg portions" (pegs) that are coupled to the circuit board to fix the lens in place.
  • Expectation of Success: As an anticipation ground, this argument does not rely on a combination of references or an expectation of success.

• Additional Grounds: Petitioner asserted that claims 8-11 are obvious over Parkyn in view of Muschaweck and Chung, relying on arguments analogous to those presented in Ground 1 and Ground 2.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the Parkyn reference was cited during prosecution of the ’356 patent, it was never substantively discussed or applied in a rejection by the Examiner. The petition contended that it presented Parkyn "anew" with new arguments, evidence, and combinations that shed a different light on the reference and were not previously considered by the Patent Office.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of Patent 9,664,356 as unpatentable.