PTAB

IPR2020-00579

Satco Products Inc v. Regents Of University Of California

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1. Case Identification

2. Patent Overview

  • Title: Opto-Electronic Devices with Multi-Directional Light Emission
  • Brief Description: The ’789 patent relates to opto-electronic devices, specifically light-emitting diodes (LEDs) with improved light extraction. The invention describes LEDs where all layers are transparent except the emitting layer to allow light emission from multiple sides, and LEDs mounted on transparent plates within a lead frame to achieve omnidirectional light output.

3. Grounds for Unpatentability

Ground 1: Anticipation over Nishida - Claims 1, 9, 29, and 37 are anticipated by Nishida.

  • Prior Art Relied Upon: Nishida (a 2003 article in the JAPANESE JOURNAL OF APPLIED PHYSICS).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nishida, which describes a "highly transparent structure for nitride ultraviolet light emitting diodes," discloses every limitation of independent claims 1 and 29. Nishida's device is an opto-electronic device with an LED that emits light from its top and bottom sides. Critically, Petitioner asserted that Nishida explicitly confirmed through transmittance spectra that all layers of its UV-LED (including sapphire substrate, AlN templates, and AlGaN buffers) are transparent at the emission wavelength, except for the active/emitting layer. Nishida also discloses the transparent p-type contact layers required by dependent claims 9 and 37.

Ground 2: Obviousness over Nishida, APA, and Roughening Art - Claims 3, 5, 31, and 33 are obvious over Nishida in view of the Admitted Prior Art (APA), and further in view of Lester-085 and/or Tadatomo.

  • Prior Art Relied Upon: Nishida, the Admitted Prior Art (APA) from the ’789 patent’s specification, Lester-085 (Patent 6,091,085), and Tadatomo (a 2004 SPIE conference paper).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that these dependent claims add the limitation of shaping, patterning, texturing, or roughening a layer of the LED (claim 3) or specifically the substrate (claim 5) to increase light extraction. While Nishida provides the base transparent LED, the APA (from the ’789 patent's own disclosure) concedes it was conventional to roughen an exterior layer to enhance light extraction. Further, Lester-085 and Tadatomo were cited to show it was well-known to roughen or pattern a sapphire substrate—the specific type used in Nishida—for the express purpose of increasing light extraction efficiency.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to improve the light extraction of the base LED in Nishida, an improvement Nishida itself suggests is expected from "appropriate chip shape design." A POSITA would combine Nishida’s transparent structure with the conventional surface roughening techniques taught by the APA, Lester, and Tadatomo to achieve this predictable enhancement in brightness.
    • Expectation of Success: A POSITA would have had a high expectation of success, as applying known surface texturing methods to a standard LED structure to improve light output was a routine and predictable practice in the field.

Ground 3: Obviousness over Okamoto and Ishizaka - Claims 28 and 56 are obvious over Okamoto in view of Ishizaka-361.

  • Prior Art Relied Upon: Okamoto (Japan Patent App. Pub. No. 2000/277808) and Ishizaka-361 (Application # 2003/0151361).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination renders claims 28 and 56 obvious under its proposed construction for "lead frame." Okamoto disclosed a "lead-type" package with LEDs on a transparent plate for omnidirectional light, meeting most claim limitations. However, in Okamoto, the lead frame sits on the transparent plate. Ishizaka-361 was introduced for its teaching of a "chip-type" lead frame package where the lead frame electrodes structurally contain the substrate, thus satisfying the "transparent plate in a lead frame" limitation.
    • Motivation to Combine: Petitioner contended that a POSITA would find it obvious to modify Okamoto's device by replacing its cumbersome "lead-type" package with the more versatile "chip-type" package from Ishizaka-361. This modification would facilitate simpler interconnections, allow for different device orientations, and was merely the substitution of one well-known, conventional package type for another to gain a known benefit.
    • Expectation of Success: The combination was presented as a simple design choice with a predictable outcome, requiring only ordinary skill to modify the wiring pattern to connect Okamoto's LEDs to Ishizaka's chip-type leads.
  • Additional Grounds: Petitioner asserted additional challenges, including anticipation of claims 28 and 56 by Okamoto (Ground 6) and Miyahara (Ground 8); and obviousness challenges based on combinations including Nishida with Krames-924, Tadatomo, and Basin-484 to teach various packaging and light extraction features.

4. Key Claim Construction Positions

  • "lead frame": Petitioner argued that this term should be construed as “a conductive support structure in an LED package that provides an interface for an external electrical connection.” This construction is central to Ground 7, as Petitioner contended that the Patentee’s proposed construction from a related ITC proceeding improperly conflates the "lead frame" and "transparent plate" limitations. Petitioner's construction allows for a distinction between Okamoto's "lead-type" package and the "chip-type" package taught by Ishizaka-361.
  • "transparent": Petitioner argued that no specific construction is necessary because the prior art discloses the very same materials (e.g., glass, sapphire, GaN, ITO) that the ’789 patent identifies as transparent. Therefore, Petitioner contended the limitation is met under any reasonable interpretation, including the more restrictive constructions proposed by other parties in the related ITC case.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 5, 9, 12-13, 15, 18, 28-29, 31, 33, 37, 40-41, 43, 47, and 56 of Patent 7,781,789 as unpatentable.