Nichia Corp v. Lighting Science Group Corp

1. Case Identification

• Case #: IPR2019-01260
• Patent #: 7,528,421
• Filed: June 28, 2019
• Petitioner(s): Nichia Corp, OSRAM Opto Semiconductors, Inc.
• Patent Owner(s): Lighting Science Group Corp.
• Challenged Claims: 1, 2, 6, and 10

2. Patent Overview

• Title: LED Assembly for Surface Mounting
• Brief Description: The ’421 patent discloses a light-emitting diode (LED) assembly designed for surface mounting and high-temperature operation. The technology aims to overcome thermal limitations and high fabrication costs of conventional LED packaging by using a thermally conducting base overlaid by electrically insulating layers that define a surface cavity for housing one or more LED dies.

3. Grounds for Unpatentability

Ground 1: Anticipation by Andrews - Claims 1, 2, 6, and 10 are anticipated by Andrews under 35 U.S.C. §102.

• Prior Art Relied Upon: Andrews (Application # 2004/0079957).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Andrews discloses every limitation of the challenged claims. Specifically, Andrews' conductive plate 51 and substrate 20b constitute the claimed "thermally conducting base." Andrews' insulating film 48, an overcoat material, and top heat sink 40 together form the "one or more electrically insulating layers" that define a "surface cavity." The LED 66 is the "LED die" disposed within the cavity, thermally coupled to the base. For dependent claims, Petitioner asserted that Andrews' thermal contact pad 36 is an "integral part" of the base (claim 2), the base includes a metal plate 51 (claim 6), and the LED is encapsulated by material 46 (claim 10). Finally, Andrews' solder pads 34 and 38 were identified as the claimed "solderable bonding pad" for mounting.

Ground 2: Anticipation by Bogner - Claims 1, 2, 6, and 10 are anticipated by Bogner under 35 U.S.C. §102.

• Prior Art Relied Upon: Bogner (WO 02/084749).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Bogner discloses a surface-mountable, high-temperature LED assembly meeting all claim limitations. Bogner’s "thermal connecting part 4" was mapped to the "thermally conducting base." Its plastic "base body 1" was identified as the "insulating layer" that overlies the base and defines a "recess 8," which constitutes the claimed "surface cavity." The "radiation-emitting chip" is the claimed "LED die." Petitioner asserted that Bogner’s "solder connecting strips 3a, 3b" are the claimed "solderable bonding pad." For dependent claims, Petitioner argued Bogner’s base surface 6 is integral to the thermal part 4 (claim 2), the thermal part is made of metal (claim 6), and a casting compound encapsulates the die (claim 10).

Ground 3: Obviousness over Bogner and Andrews - Claims 1, 2, 6, and 10 are obvious over Bogner in view of Andrews under 35 U.S.C. §103.

• Prior Art Relied Upon: Bogner (WO 02/084749) and Andrews (Application # 2004/0079957).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative to the Bogner anticipation ground. Petitioner argued that if Bogner’s "solder connecting strips" are not considered to be the claimed "solderable bonding pad," a person of ordinary skill in the art (POSITA) would have looked to references like Andrews. Andrews was argued to explicitly teach different configurations for assembly mounts, including the use of solderable pads (pads 34 and 38) for direct mounting to a circuit board without metal leads.
  • Motivation to Combine: A POSITA would combine Bogner with the teachings of Andrews to improve the mounting mechanism. Both references address the same problems of surface mounting and heat dissipation in LED packages. A POSITA would substitute Bogner’s lead-style connecting strips with Andrews' more mechanically robust solder pad design to achieve a well-known, predictable improvement in manufacturability and reliability.
  • Expectation of Success: Petitioner asserted success would be expected, as the modification was a simple substitution of one known mounting element (leads) for another known element (pads) to achieve a predictable result.

• Additional Grounds: Petitioner asserted an additional anticipation challenge based on Yoganandan (Application # 2002/0163006) and a separate obviousness challenge based on combining different embodiments within Andrews itself.

4. Key Claim Construction Positions

• "base": Petitioner proposed this term be construed as "support or foundation." This construction was supported by the patent’s description of a "metal base" and "metal support board" (Fig. 10) as a foundational structure, as well as by dictionary definitions.
• "integral part of": Petitioner proposed this term be construed as "a part of a whole." Petitioner argued this construction is consistent with the patent's usage, which does not require the parts to be made of the same material or be embedded within each other. This construction prevents reading a product-by-process limitation into the apparatus claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date: Petitioner dedicated significant argument to contending that the ’421 patent is not entitled to the filing date of its parent or provisional applications. Petitioner argued that the claimed "LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad" constitutes new matter. Specifically, the "electrically insulated fastener" for a "bolt down assembly" (BDA) was introduced for the first time in the ’421 patent and was not disclosed or supported by the earlier applications, which focused only on solder mounting. Therefore, Petitioner argued the patent’s effective filing date should be its actual filing date of July 12, 2005, making references like Andrews, Bogner, and Yoganandan valid prior art under §102(b).

6. Relief Requested

• Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1, 2, 6, and 10 of Patent 7,528,421 as unpatentable.