PTAB

IPR2019-01155

LG Innotek Co. Ltd. v. Seoul Semiconductor Co., Ltd.

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1. Case Identification

  • Case #: IPR2018-01155
  • Patent #: 9,664,356
  • Filed: June 11, 2019
  • Petitioner(s): LG Innotek Co., Ltd.
  • Patent Owner(s): David G Pelka, et al.
  • 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 provide wide-angle illumination patterns suitable for short-throw lighting applications, such as backlighting for LCD televisions or lighting for refrigerator cabinets. The technology focuses on a lens with a specific geometry, including a concave-plano center, to create uniform illumination for close-range targets, as opposed to spot lighting for distant targets.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are anticipated by Smits under 35 U.S.C. §102, or alternatively, are obvious over Smits in view of Muschaweck under 35 U.S.C. §103.

  • Prior Art Relied Upon: Smits (Application # 2006/0102914) and Muschaweck (Application # 2009/0284951).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Smits, which relates to a "wide-emitting lens" for LCD backlighting, discloses every limitation of independent claim 1. Smits teaches a lens with a rotationally symmetric cavity, a light-exiting surface with a flat top portion and convex sides, and an inclined bottom surface, which Petitioner asserted is structurally and functionally identical to the lens claimed in the ’356 patent. Petitioner contended that figures in Smits illustrate all claimed geometric features, including the specific intersection points with a horizontal axis detailed in dependent claims 2-4 and the superposition of surfaces in claim 5.
    • Motivation to Combine (for §103 grounds): In the alternative, if the top surface of the Smits lens were considered slightly curved rather than perfectly flat, Petitioner argued a POSITA would combine Smits with Muschaweck. Muschaweck explicitly teaches that shaping a lens with a flat central area advantageously improves off-axis light distribution for homogenous back-lighting. A POSITA would combine these teachings by substituting the known flat surface from Muschaweck into the Smits lens design to predictably achieve the desired wide-angle illumination.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as this combination represents a simple substitution of one known lens surface type for another to achieve a well-understood and predictable optical effect.

Ground 2: Claims 1-7 are anticipated by Parkyn under §102, or alternatively, are obvious over Parkyn in view of Muschaweck under §103.

  • 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 from the same inventors as the ’356 patent, anticipates claims 1-7. Parkyn describes a comparable wide-angle lens for similar applications (e.g., refrigerator lighting) featuring a "bell-shaped circularly symmetric lower surface," a flat-topped upper surface, and inclined bottom surfaces. Petitioner argued Parkyn's disclosed lens designs meet all limitations of claims 1-6. For claim 7, Parkyn explicitly discloses "mounting pegs" attached to the bottom surface of the lens for securing it to a circuit board.
    • Motivation to Combine (for §103 grounds): Similar to Ground 1, if Parkyn’s top surface were deemed not perfectly flat, a POSITA would look to Muschaweck’s explicit teaching of using a flat central area on a lens to achieve the same goal of advantageous off-axis light distribution.
    • Expectation of Success (for §103 grounds): The motivation and expectation of success are high because it involves modifying the inventors' own prior design with a well-known technique (a flat top surface) for its known purpose.

Ground 3: Claims 7-11 are obvious over Smits and Muschaweck in view of Hwang and/or Chung under §103.

  • Prior Art Relied Upon: Smits (Application # 2006/0102914), Muschaweck (Application # 2009/0284951), Hwang (Patent 7,766,530), and Chung (Application # 2008/0158472).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the lens disclosed by the Smits/Muschaweck combination. To arrive at claim 7, Petitioner argued a POSITA would incorporate the "fixing protrusions" (pegs) taught by Hwang, which discloses adding pegs to a lens rim to fix it to a substrate. To arrive at claims 8-11, Petitioner argued a POSITA would add the "light absorbing layer" taught by Chung, which discloses applying a black, light-absorbing material to a circuit board to protect underlying components from light damage.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Hwang to solve the basic problem of mounting the lens, a known technique for a predictable result. A POSITA would combine Chung to improve the reliability of the backlighting system by shielding circuitry from stray light, addressing a known problem with a known solution.
    • Expectation of Success (for §103 grounds): The proposed modifications are simple additions of known elements (pegs, absorptive layers) to a base system to achieve their conventional functions, leading to a high expectation of success.
  • Additional Grounds: Petitioner asserted an additional anticipation challenge against claims 1-7 based on Kim (Application # 2014/0117394), which discloses a similar wide-angle lens with a flat central surface, inclined bottom, and mounting pegs.

4. Key Claim Construction Positions

  • Petitioner argued that the transitional phrase "a lowermost part of the bottom surface has two intersecting points" should be interpreted as open-ended (i.e., "at least two"), consistent with its plain meaning and the prosecution history. This construction is critical because prior art references like Smits show a flat bottom surface with more than two intersecting points. Petitioner contended the Patent Owner did not traverse the examiner's interpretation of this term as open-ended during prosecution, thereby accepting it.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner argued that the ’356 patent is not entitled to the filing date of its provisional application. The provisional allegedly lacks written description support for key limitations recited in the independent claims, such as "a light exiting surface comprising a flat surface" and a "cavity having rotational symmetry." Consequently, Petitioner asserted the correct critical date for prior art purposes is the filing date of the subsequent non-provisional application, which qualifies all asserted prior art references.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the Parkyn reference was cited during prosecution, it was never substantively discussed or applied by the Examiner in a rejection. Petitioner contended it was presenting Parkyn in a new context, supported by combinations with new prior art (Muschaweck, Chung) and new evidence in the form of expert testimony, which "sheds a different light" on the reference and warrants consideration by the Board.

7. Relief Requested

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