PTAB

IPR2020-01313

Samsung Electronics Co Ltd v. Ultravision Technologies LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: LED Lighting Assembly
  • Brief Description: The ’946 patent relates to a light-emitting diode (LED) lighting assembly for externally illuminating a sign, such as a billboard. The assembly is designed to provide uniform illumination and maintain that uniformity even if some LEDs fail.

3. Grounds for Unpatentability

Ground 1: Obviousness over Shimada - Claims 1-10, 12, 14, 16-17, 29, and 30 are obvious over Shimada.

  • Prior Art Relied Upon: Shimada (Application # 2008/0084693).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shimada, which discloses a compact LED lighting system for applications like an outdoor spotlight, teaches all key limitations of the challenged claims. Specifically, Shimada’s aluminum housing (14) was identified as the claimed "thermally conductive support structure configured for outdoor use" that also functions as a "heat sink." Petitioner asserted Shimada’s wiring substrate (15) is the claimed "substantially planar circuit board" with an array of LEDs (11). Further, Shimada’s deflection lens array (13) was mapped to the claimed "single transparent substrate" with "convex optical elements" overlying the LEDs. Petitioner contended that Shimada achieves uniform illumination without hot spots, even upon LED failure, by superimposing light from each LED over the entire target area (Z).
    • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference. Petitioner asserted that all claimed features were either explicitly disclosed or would have been obvious modifications of Shimada's system, such as using it to illuminate a sign-like surface like a building wall.
    • Expectation of Success (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would have had a high expectation of success in implementing Shimada’s disclosed spotlight for outdoor illumination, as this was an intended use.

Ground 2: Obviousness over Shimada in view of Marcoux - Claims 1-10, 12, 14, 16-17, 29, and 30 are obvious over Shimada in view of Marcoux.

  • Prior Art Relied Upon: Shimada (Application # 2008/0084693) and Marcoux (Application # 2010/0128488).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground relied on Shimada for the structural elements of the light assembly, as detailed in Ground 1. The argument added Marcoux to explicitly teach the application of such an LED lighting system to a "sign" or "billboard." Marcoux discloses an LED system specifically for providing uniform illumination to remote targets like "billboards" and "public signs."
    • Motivation to Combine (for §103 grounds): Petitioner argued that to the extent Shimada’s teaching of illuminating a building wall was insufficient to render obvious the illumination of a "sign," a POSITA would combine Shimada’s lighting system with Marcoux’s teachings. The motivation was to apply the known benefits of Shimada’s uniform and redundant lighting design to the well-known and commercially important application of billboard illumination, as explicitly taught by Marcoux.
    • Expectation of Success (for §103 grounds): A POSITA would expect success because it involved applying a known type of lighting system (Shimada) to a known and suitable application (billboards, per Marcoux) to achieve the predictable result of uniform illumination.

Ground 3: Obviousness over Shimada in view of Holder - Claims 1-10, 12, 14, 16-17, 29, and 30 are obvious over Shimada in view of Holder.

  • Prior Art Relied Upon: Shimada (Application # 2008/0084693) and Holder (Patent 7,674,018).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground primarily added Holder to address the modularity features recited in dependent claims 16 and 17, which require a second circuit board and a second plurality of LEDs. Petitioner asserted that Shimada suggests modularizing its LEDs, and Holder provides an explicit example of an LED lighting system using multiple light modules that could be combined to adjust illumination levels. Holder also discloses weatherproof and even submersible lighting arrays, reinforcing the teachings for outdoor use.
    • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement the modular concept suggested in Shimada, would look to references like Holder for specific implementation details. Combining the teachings would allow for a scalable lighting system where the number of modules could be easily adjusted to meet specific illumination requirements, a clear design advantage.
    • Expectation of Success (for §103 grounds): Success was expected because it involved implementing a known engineering principle (modularity) using conventional components as taught by Holder to enhance the scalability of the lighting system disclosed in Shimada.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge over Shimada in view of Holder and Marcoux, combining the rationales from Grounds 2 and 3.

4. Key Claim Construction Positions

  • "area" (claims 1, 2, 29, 30): Petitioner argued that while its invalidity arguments prevail under the plain and ordinary meaning of "area," the term should be construed to mean "sign" consistent with the patent’s specification. The petition contended that the ’946 patent consistently describes the illuminated area as a sign or billboard. This construction was central to the argument for combining Shimada with references like Marcoux that explicitly teach sign illumination.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d) because the primary prior art references, while listed in an Information Disclosure Statement (IDS) during prosecution, were never substantively relied upon by the examiner to reject the claims.
  • Petitioner also argued against discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors related to a co-pending district court case. Key arguments included:
    • The district court litigation was in its earliest stages, with no trial date set and no significant investment in validity issues.
    • The statutory deadline for a Final Written Decision (FWD) in the IPR would likely occur long before any potential trial.
    • Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR was instituted, thus avoiding overlap and preserving resources.

6. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-10, 12, 14, 16-17, 29, and 30 of the ’946 patent as unpatentable.