Samsung Electronics Co Ltd v. Ultravision Technologies LLC

1. Case Identification

• Case #: IPR2020-01311
• Patent #: 8,870,410
• Filed: July 21, 2020
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Ultravision Technologies, LLC
• Challenged Claims: 1-5, 7, 10, 12, 13, 15, 16, 19, and 20

2. Patent Overview

• Title: LED Lighting Assembly
• Brief Description: The ’410 patent describes a light-emitting diode (LED) lighting assembly, particularly for externally illuminating signs like billboards. The technology focuses on using an optics panel with a plurality of LEDs and corresponding optical elements to direct light evenly across a display surface.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kaiya - Claims 1-3, 7, 15, and 19 are anticipated by Kaiya under 35 U.S.C. §102.

• Prior Art Relied Upon: Kaiya (Japanese Patent Application No. 2004-281352).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kaiya discloses every limitation of the challenged claims. Kaiya teaches a "shadowless lamp" with an array of LEDs on a substrate and an optical system with converging lenses to uniformly illuminate an entire "illumination zone S1." Petitioner asserted that this illumination zone is the claimed "display surface," and the lamp itself constitutes the claimed "optics panel." Critically, Petitioner contended that Kaiya's description of converging lenses comprising a "forward convex lens portion" and a "rearward convex lens portion" for each LED meets the limitation of an optical element having a first lens element and a second lens element disposed over the first. The "shadowless" and uniform illumination teachings of Kaiya were argued to meet the claim requirement that each LED evenly illuminates the entire display surface. For claims requiring an "acrylic material substrate," Petitioner argued a POSITA would have understood Kaiya’s "transparent resin material" to be an acrylate-based material like PMMA, which was common in the art.

Ground 2: Obviousness over Kaiya and DES - Claims 1-5, 7, 10, 12, 13, 15, 19, and 20 are obvious over Kaiya in view of DES under 35 U.S.C. §103.

• Prior Art Relied Upon: Kaiya (Japanese Patent Application No. 2004-281352) and DES ("Advanced Lighting Systems for Externally Lit Billboards," Jan. 2010).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that if Kaiya alone does not teach every element, the combination with DES renders the claims obvious. DES is a report assessing lighting systems for billboards which teaches using linear LED fixtures to achieve superior uniform light delivery. Petitioner argued DES explicitly provides the context of applying an LED system like Kaiya’s to a billboard. Further, DES teaches targeting specific illumination uniformity ratios, such as an average-to-minimum light level ratio of "4.0 or less," which encompasses the 3:1 ratio required by claims 5 and 20. DES also discusses minimizing light trespass and pollution, which Petitioner mapped to the claim limitation requiring substantially no illumination beyond the edges of the display surface.
  • Motivation to Combine: A POSITA would combine Kaiya’s efficient shadowless lamp design with the known application and performance criteria for billboard illumination taught by DES. The goal would be to create a commercially desirable, high-performance billboard lighting system that provides uniform illumination while minimizing light pollution, consistent with the recommendations in DES.
  • Expectation of Success: The combination involved applying a known type of LED illumination system (Kaiya) to a known and intended application (billboard lighting, per DES) using established optical principles. Success in achieving uniform billboard illumination was predictable.

Ground 3: Obviousness over Kaiya, DES, and Wilcox - Claims 1-5, 7, 10, 12, 13, 15, 16, 19, and 20 are obvious over Kaiya in view of DES and Wilcox under §103.

• Prior Art Relied Upon: Kaiya (Japanese Patent Application No. 2004-281352), DES ("Advanced Lighting Systems for Externally Lit Billboards," Jan. 2010), and Wilcox (Patent 7,618,163).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, asserting that if the combination of Kaiya and DES was found insufficient to teach the "first lens element and a second lens element" limitation, adding Wilcox would render it obvious. Wilcox discloses an LED lighting apparatus with a distinct, multi-layer lens structure comprising a hemispherical primary lens positioned over an LED and a separate secondary lens disposed over the primary lens. Petitioner argued this explicitly teaches the use of separate, layered lens elements to shape and direct light.
  • Motivation to Combine: A POSITA, seeking to implement the Kaiya/DES system for billboard lighting, would have considered various known lens configurations to optimize manufacturability or optical performance. Wilcox provided a known and viable multi-layer lens design. A POSITA would combine Wilcox’s clear teaching of a separate two-lens structure with the Kaiya/DES system as a predictable design choice to achieve the desired illumination goals.
  • Expectation of Success: Combining a known multi-layer lens technique (Wilcox) with a known LED lighting system (Kaiya) for a specific, known application (billboards, per DES) was a straightforward application of existing technologies with a high likelihood of success.

4. Key Claim Construction Positions

• "[each of the plurality of optical elements comprises] a first lens element and a second lens element disposed over the first lens element": Petitioner argued this term is met by Kaiya's integral, overlapping lens portions. However, as an alternative for its obviousness grounds, Petitioner also addressed a construction where the lens elements are separate physical components, arguing Wilcox teaches such a structure. This flexibility was central to Petitioner's alternative obviousness ground.
• "display surface ... having a predetermined bounded area": Petitioner argued this should be construed as a surface of a sign, like a billboard, that has a bounded region existing independently of the light projected onto it. This construction was used to argue that while Kaiya's "illumination zone" meets the plain meaning, combining it with DES, which explicitly discusses billboards, squarely meets this construction for obviousness purposes.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate due to a co-pending district court litigation. Petitioner argued that a stay in the district court was likely, favoring institution. It further asserted that there was limited overlap in issues because the IPR challenges claims not at issue in the litigation, and Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR was instituted. Finally, Petitioner argued the strong merits of the petition and the public interest in canceling invalid claims weighed heavily in favor of institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 7, 10, 12, 13, 15, 16, 19, and 20 of the ’410 patent as unpatentable.