PTAB

IPR2020-00780

Satco Products Inc v. Regents Of University Of California

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: LED Package with Transparent Plate for Omnidirectional Light Extraction
  • Brief Description: The ’916 patent describes light-emitting devices (LEDs) and manufacturing methods where an LED chip is mounted on a lead frame that incorporates a transparent plate. This configuration is designed to allow light emitted from both the front and back sides of the LED chip to be extracted, improving overall light output.

3. Grounds for Unpatentability

Ground 1: Anticipation by Okamoto (under Patentee's Claim Construction) - Claims 1, 5, 14, and 18 are anticipated by Okamoto.

  • Prior Art Relied Upon: Okamoto (Japan Patent App. Pub. No. 2000/277808A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that this ground applies under the Patentee’s proposed construction of “lead frame” as “a support structure formed by leads and a transparent plate.” Okamoto disclosed a light source device with a GaN blue LED element mounted on a light-transmissive glass substrate (the transparent plate). This glass substrate had a wiring pattern connected to a lead frame structure for external connection. Petitioner asserted that the combination of Okamoto’s leads (lead frame 8) and its glass plate (substrate 2) formed a "support structure" that met all limitations of independent claims 1 and 14, including the LED chip being placed on the transparent plate and emitting light omnidirectionally. Dependent claims 5 and 18 were also met because Okamoto's LED chip included a transparent substrate (e.g., sapphire) adjacent to the glass plate.

Ground 2: Obviousness over Okamoto and Shimizu (under Petitioner's Claim Construction) - Claims 1, 5, 9, 14, 18, and 22 are obvious over Okamoto in view of Shimizu.

  • Prior Art Relied Upon: Okamoto (Japan Patent App. Pub. No. 2000/277808A) and Shimizu (Patent 5,998,925).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this ground under its own, more traditional construction of “lead frame” as a "conductive support structure." Under this construction, Okamoto’s lead frame sat on its transparent plate, meaning the plate was not in the lead frame as required. Shimizu disclosed a common "chip-type" LED package where the LED chip was mounted on a plate partially surrounded by conductive lead frames. Combining Okamoto's omnidirectional LED-on-plate design with Shimizu's chip-type lead frame would result in a structure where the transparent plate was situated in the lead frame, thus meeting the limitations of claim 1.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to replace Okamoto’s cumbersome “lead-type” package with Shimizu’s well-known, lower-profile “chip-type” package. This substitution would facilitate less cumbersome interconnections and create a more compact and sturdy device, particularly for applications like the stacked signal lights disclosed by Okamoto.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved substituting one conventional LED packaging style for another to gain a predictable improvement in form factor without altering the fundamental light-emitting function of Okamoto's device.

Ground 3: Anticipation/Obviousness by Miyahara - Claims 1, 9, 13, 14, 22, and 26 are anticipated or rendered obvious by Miyahara.

  • Prior Art Relied Upon: Miyahara (Japan Patent App. Pub. No. 2005/035864A).

  • Core Argument for this Ground:

    • Prior Art Mapping: Miyahara disclosed an LED device designed for omnidirectional light emission by mounting an LED chip on an optically transparent submount (plate). This submount was partially surrounded by "thick-film metallization" that provided electrical connections. Petitioner contended this structure met the limitations of independent claims 1 and 14 under either party's construction of "lead frame," as the metallization acted as the conductive lead frame and the transparent submount was "in" it. Miyahara further disclosed that phosphors could be used to convert light color (meeting claims 9/22) and that the LED chip comprised a plurality of III-nitride layers, with all layers except the active region being transparent (meeting claims 13/26).

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Okamoto or Miyahara with Lester-085 and Tadatomo to teach substrate roughening/patterning (for claims 6-7 and 19-20), and with the patent’s Admitted Prior Art (APA) to further support the conventional nature of III-nitride layer structures.

4. Key Claim Construction Positions

  • “lead frame”: This term was a central point of dispute.
    • Petitioner's Proposed Construction: "a conductive support structure in an LED package that provides an interface for an external electrical connection." Petitioner argued this construction aligned with the traditional understanding of a lead frame as the metallic, conductive part of a package.
    • Patentee's Alleged Construction (from ITC case): "a support structure formed by leads and a transparent plate." Petitioner argued this construction was improper because it conflated two distinct claim elements ("lead frame" and "transparent plate") and defined the lead frame as the entire package. The differing constructions formed the basis for the alternative arguments in Ground 1 versus Ground 2.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-7, 9, 13, 14, 18-20, 22, and 26 of the ’916 patent as unpatentable.