PTAB

IPR2020-00410

Satco Products Inc v. Seoul Semiconductor Co Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Light Emitting Device
  • Brief Description: The ’967 patent discloses a light-emitting device (LED) package designed to improve structural integrity. It features first and second lead frames with three inset "undercut sidewalls" that define a "fixing space," which enhances the adhesive force with an overmolded resin body, preventing delamination caused by thermal stress.

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are anticipated under 35 U.S.C. §102 by Lee-401.

  • Prior Art Relied Upon: Lee-401 (Application # 2006/0043401).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lee-401, which was cited on the face of the ’967 patent but never analyzed during prosecution, discloses every limitation of the challenged claims. Specifically, Petitioner asserted that the seventh embodiment of Lee-401 (FIGS. 24-26) describes a high-powered LED package with lead frames formed in a "half T shape." This structure, where a shorter lower portion is attached to a wider upper portion, inherently creates the claimed three "undercut sidewalls" on each lead frame, which in turn define the claimed "fixing space." Petitioner provided annotated figures comparing Lee-401's lead frame geometry directly to the figures in the ’967 patent, contending they disclose the identical structure, including the parallel and perpendicular arrangement of the sidewalls required by independent claims 1 and 9. The arguments for dependent claims 2-8 and 10-16 followed from this primary mapping, asserting Lee-401 also discloses the resin part, exposed bottom surfaces, and other claimed features.

Ground 2: Claims 1-16 are obvious under 35 U.S.C. §103 over Lee-401.

  • Prior Art Relied Upon: Lee-401 (Application # 2006/0043401).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to anticipation. Petitioner reasserted that the structure in Lee-401's FIGS. 24-26 meets the claim limitations. However, even if the term "undercut" were construed to require a specific manufacturing process (which Petitioner disputed), Lee-401 would render the claims obvious. The embodiment in FIGS. 24-26 is formed from two adhered metal pieces, but Lee-401 elsewhere discloses forming similar lead frame structures from a single piece of sheet metal via known techniques like "cutting and punching a source sheet metal plate, and selectively reducing thickness through etching and the like."
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to apply the single-piece manufacturing methods disclosed in Lee-401 to create the lead frame structure shown in FIGS. 24-26 of that same reference. Lee-401 emphasizes the importance of thermal and electrical conductivity. A POSITA would recognize that a single, monolithic metal piece offers superior conductivity compared to two pieces joined by an adhesive, providing a clear motivation to create the structure of FIGS. 24-26 from a single metal sheet.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success. The required metal forming techniques (cutting, punching, etching) were conventional and explicitly taught by Lee-401 for creating lead frames with inset sidewalls. Applying these known techniques to form the specific geometry of FIGS. 24-26 would have been a routine design choice.

4. Key Claim Construction Positions

  • "undercut sidewalls": This term was central to Petitioner's invalidity case. Petitioner argued that "undercut sidewall" is a structural limitation, not a process limitation requiring a specific metal-working step like etching or carving. Based on the ’967 patent's specification, dictionary definitions cited by both the Examiner and Patent Owner during prosecution, and industry usage, Petitioner contended the term simply means a sidewall that is indented relative to an upper portion of the lead frame, creating an overhanging portion. This construction is critical, as it allows the inherent "half T shape" of the lead frames in Lee-401 to directly satisfy the claim limitation without needing to find a specific disclosure of a "cutting" or "etching" process for that particular embodiment.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of the ’967 patent as unpatentable.