PTAB

IPR2020-00813

Satco Products Inc v. Regents Of University Of California

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1. Case Identification

2. Patent Overview

  • Title: Light Emitting Diode
  • Brief Description: The ’464 patent discloses a light-emitting diode (LED) package designed to extract light from both the front and back sides of the device. The invention describes an LED chip attached to a lead frame via a transparent plate, allowing omnidirectional light emission.

3. Grounds for Unpatentability

Ground 1: Anticipation over Okamoto - Claims 1, 9, 11, and 19 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 Okamoto discloses every limitation of the challenged claims under the Patent Owner’s proposed “package construction” of the term “lead frame.” This construction defines the lead frame as the entire support structure, including both the conductive leads and the transparent plate. Okamoto taught an LED device with an LED chip mounted on a transparent glass plate, which is attached to conductive leads. Petitioner asserted this structure meets the claim limitation of a "lead frame including a transparent plate." Okamoto further taught that its device was designed for omnidirectional light emission, necessarily extracting light from both the front and back sides of the package. For dependent claims 9 and 19, Okamoto disclosed that the LED chip could use a transparent sapphire substrate, which is positioned adjacent to the transparent glass plate.
    • Key Aspects: This ground relied on adopting the Patent Owner’s own broad claim construction from a related ITC case to argue that Okamoto, which was cited on the face of the ’464 patent but never analyzed by the Examiner, inherently anticipates the claims.

Ground 2: Obviousness over Okamoto and Shimizu - Claims 1, 9, 11, and 19 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: This ground applied Petitioner’s narrower “traditional construction” of “lead frame,” defining it as only the conductive support structure of the package. Under this construction, Okamoto’s device does not meet the claims because its lead frame is located on the transparent plate, not including it. However, Petitioner contended that Shimizu taught an alternative, well-known “chip-type” LED package where the transparent plate is located in the lead frame (i.e., partially surrounded by the conductive leads).
    • Motivation to Combine: Petitioner argued a POSITA would combine Okamoto’s omnidirectional LED-on-glass-plate design with Shimizu’s more compact and robust “chip-type” lead frame. Okamoto used a “lead-type” package with protruding legs, which could be cumbersome. A POSITA would have been motivated to substitute this with Shimizu’s lower-profile chip-type frame to create a less cumbersome device, a simple substitution of one known package type for another.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely involved placing Okamoto’s LED-on-glass assembly into Shimizu’s well-understood chip-type lead frame, which was a predictable design modification.

Ground 5: Anticipation over Miyahara - Claims 1, 2, 11, and 12 are anticipated by Miyahara.

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Miyahara disclosed all limitations under any reasonable construction of “lead frame.” Miyahara taught an LED chip mounted on a transparent submount (the “transparent plate”) for omnidirectional light emission. This transparent plate was partially surrounded by thick-film metallization that provided both mechanical support and electrical connection (the “lead frame”). This configuration satisfied both the broad “package construction” and the narrower “traditional construction” where the plate is in the lead frame. For dependent claims 2 and 12, Petitioner argued Miyahara explicitly taught that phosphors could be blended with a resin to seal the LED and convert its light to any color, including white light, anticipating this feature.
    • Key Aspects: This ground presented a single reference that allegedly disclosed all limitations of the key independent and dependent claims, providing an alternative to the Okamoto-based grounds.

  • Additional Grounds: Petitioner asserted additional obviousness challenges. These included combining Okamoto and Shimizu with prior art teaching the use of phosphors for creating white light (Ground 3), and combining the Okamoto/Shimizu and Miyahara references with Lester-085 (Patent 6,091,085) and/or Tadatomo (a 2004 SPIE publication) to render obvious the claims requiring roughened or patterned surfaces for increased light extraction (Grounds 4 and 7). Another ground argued Miyahara rendered claims 9 and 19 obvious by teaching a simple and predictable modification of its flip-chip orientation to a conventional orientation (Ground 6).

4. Key Claim Construction Positions

  • "lead frame": This term was central to the petition’s alternative arguments.
    • Petitioner primarily advocated for a “traditional construction”: “a conductive support structure in an LED package that provides an interface for an external electrical connection.” Under this view, the lead frame is only the metal part.
    • Petitioner also argued invalidity under the Patent Owner’s alleged “package construction” from a related case: “a support structure formed by leads and a transparent plate.” This broader construction treats the entire package, including the non-conductive plate, as the lead frame.
    • The distinction was critical: Ground 1 (Anticipation over Okamoto) succeeded only under the broad "package construction," while Ground 2 (Obviousness over Okamoto and Shimizu) was necessary under the narrower "traditional construction."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 8-12, and 18-20 of the ’464 patent as unpatentable.