Satco Products Inc v. Seoul Viosys Co Ltd

1. Case Identification

• Case #: IPR2020-00655
• Patent #: 9,627,435
• Filed: March 2, 2020
• Petitioner(s): Satco Products, Inc.
• Patent Owner(s): Seoul Viosys Co., Ltd.
• Challenged Claims: 1-2 and 6-7

2. Patent Overview

• Title: Light Emitting Device
• Brief Description: The ’435 patent discloses a light-emitting device (LED) comprising multiple light-emitting cells monolithically integrated on a common substrate. The purported invention focuses on improving luminous efficacy by incorporating inclined or beveled sidewalls on the semiconductor layers of the LED cells.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 6-7 are obvious over Yang-042 in view of Schubert and/or Aanegola-227.

• Prior Art Relied Upon: Yang-042 (Application # 2005/0179042), Schubert (a 2003 textbook on light-emitting diodes), and Aanegola-227 (Application # 2005/0239227).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yang-042 discloses nearly every limitation of the challenged claims. Yang-042 teaches a monolithically-integrated LED device with multiple diodes on a common substrate, including all required semiconductor and active layers. Critically, Yang-042 discloses forming beveled (inclined) sidewalls with a slope of 10-50 degrees (preferably 30 degrees) to enhance light extraction, which anticipates the claimed slope of 20-80 degrees. Yang-042 also discloses the first conductive and first insulation layers. The only limitations not explicitly taught by Yang-042 are the "second insulation layer" that overlaps the conductive material (limitation 1g) and that this layer comprises a "light transmitting material" (limitation 1h).
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine the teachings of Yang-042 with Schubert and/or Aanegola-227 to add a final, protective encapsulant. Yang-042 itself acknowledged that LEDs are typically packaged in an "encapsulating epoxy." Schubert and Aanegola-227 both teach that applying a light-transmissive encapsulant (such as epoxy) over an LED array was a conventional and necessary step to protect the device from moisture and physical damage, stabilize its components, and improve light extraction. A POSITA would combine these teachings to apply a standard protective layer to the device of Yang-042.
  • Expectation of Success: A POSITA would have had a high expectation of success, as encapsulating LEDs with a transparent epoxy was a routine, predictable, and well-understood packaging technique for "virtually all LEDs," as taught by Schubert.

Ground 2: Claims 1-2 and 6-7 are obvious over Yang-042 in view of Van Zant, further in view of Hawrylo-011 and/or Yukimoto-989.

• Prior Art Relied Upon: Yang-042 (Application # 2005/0179042), Van Zant (a 2000 textbook on microchip fabrication), Hawrylo-011 (Patent 4,095,011), and Yukimoto-989 (Application # 2003/0010989).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative for supplying the missing "second insulation layer" (limitations 1g-1h) to Yang-042. Instead of an epoxy encapsulant, this combination relied on using a conventional passivation layer like silicon dioxide (SiO2) or silicon nitride (SiN). The mapping of Yang-042's disclosures is identical to that in Ground 1.
  • Motivation to Combine: Petitioner argued that Yang-042 indicates its LEDs would be finalized using "conventional semiconductor processing techniques." Van Zant taught that SiO2 and SiN layers were "best known" and in "wide-spread use" as final passivation layers to provide physical and chemical protection for semiconductor devices. Hawrylo-011 and Yukimoto-989 confirmed that applying such passivation layers to LEDs was common practice. A POSITA would therefore have been motivated to apply a conventional SiO2 or SiN protective layer to the Yang-042 device as a standard, known finishing step to protect the underlying circuits.
  • Expectation of Success: Success would be predictable, as applying SiO2 and SiN passivation layers was a routine technique, and the references showed it was conventional for protecting LEDs specifically.

Ground 3: Claims 1 and 7 are anticipated by Salam-771; Claims 2 and 6 are obvious over Salam-771.

• Prior Art Relied Upon: Salam-771 (Patent 6,346,771).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Salam-771 discloses every element of independent claim 1 and dependent claim 7. Salam-771 describes a single-chip LED lamp with multiple light-emitting elements (cells) on a transparent substrate. It explicitly shows p-type, n-type, and active semiconductor layers. The trench walls forming the cells are disclosed as having an obtuse angle of preferably 110-120 degrees relative to the top face, which Petitioner’s expert calculated corresponds to a 60-70 degree slope from the horizontal plane of the substrate, falling squarely within the claimed 20-80 degree range. Salam-771 further discloses all required first and second conductive layers (gold conductor tracks, conductor 19) and first and second insulation layers (transparent dielectric 17, cover 4), which are described as transparent. For claims 2 and 6, Salam-771 teaches gold conductor tracks (16) that function as electrodes. Petitioner argued it would be obvious that these gold tracks meet the "transparent" requirement of claim 2, as Salam-771 itself discloses that sufficiently thin gold is translucent. Since gold is an enumerated material in claim 6, Salam-771 renders this claim obvious.

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued that denial under 35 U.S.C. §325(d) would be inappropriate. Although references related to Salam-771 and Yukimoto-989 were cited in an Information Disclosure Statement (IDS) during prosecution, they were never substantively used or considered by the examiner in any rejection.
• Fintiv Arguments: The petition noted a co-pending district court case but asserted it was in its "early stages," with claim construction briefing not yet complete and no trial date set, suggesting that an IPR would be a more efficient resolution.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-2 and 6-7 of the ’435 patent as unpatentable.