Satco Products Inc v. Regents Of University Of California

1. Case Identification

• Case #: IPR2021-00794
• Patent #: 10,593,854
• Filed: April 9, 2021
• Petitioner(s): Satco Products, Inc.
• Patent Owner(s): The Regents of the University of California
• Challenged Claims: 1-6

2. Patent Overview

• Title: Light Emitting Device
• Brief Description: The ’854 patent describes a light-emitting device (LED) package comprising a transparent surface structurally supported by a cathode and an anode. The package includes a III-nitride LED on a growth substrate and is encapsulated in a molding containing phosphor.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nakamura-959 in view of Nakamura-949 - Claims 1-6

• Prior Art Relied Upon: Nakamura-959 (Application # 2008/0149959) and Nakamura-949 (Application # 2008/0149949).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nakamura-959, which shares a nearly identical specification with the ’854 patent, discloses every limitation of the challenged claims except for the requirement that both a cathode and an anode provide structural support to a transparent surface. This missing element, Petitioner asserted, is explicitly taught by Nakamura-949, which discloses a lead frame where both the anode and cathode are shaped to provide structural support to a transparent plate.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) reading Nakamura-959 would have been aware of different, conventional lead frame designs, including the two-lead supportive frame taught in Nakamura-949 (which was incorporated by reference into Nakamura-959). A POSITA would combine these teachings by substituting the known supportive anode/cathode lead frame from Nakamura-949 for the one-lead supportive frame in Nakamura-959 to achieve a predictable, functional LED package.
  • Expectation of Success: A POSITA would have had a high expectation of success because combining the references involved the simple substitution of one known, simple lead frame design for another to perform its conventional function of providing electrical connection and structural support.

Ground 2: Anticipation by Tanda - Claims 1, 5-6

• Prior Art Relied Upon: Tanda (Application # 2007/0139949).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tanda discloses every element of independent claim 1. Tanda teaches a light-emitting device with a transparent board (the "transparent surface") supported on opposite ends by two metal plates (the "cathode" and "anode") that provide structural support and electrical connection. The device includes a III-nitride LED on a sapphire growth substrate, which is in mechanical communication with the transparent board. Finally, Tanda discloses a molding containing phosphor that surrounds the LED and is configured to extract light from multiple directions. Tanda also explicitly discloses diamond as a material for the transparent board, anticipating claim 5, and discloses materials transparent for the emission wavelength, anticipating claim 6.

Ground 3: Obviousness over Yamazaki in view of Schubert-2003 - Claims 1, 3, 6

• Prior Art Relied Upon: Yamazaki (Japanese Application # 2003-249692A) and Schubert-2003 (a 2003 textbook, Light-Emitting Diodes).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Yamazaki discloses a light-emitting device with a transparent glass substrate supported on opposite ends by conductive leads (anode and cathode) that wrap around it. Yamazaki's device includes a molding that can contain phosphor and is configured to emit light from both its top and bottom surfaces. While Yamazaki discloses using a "blue" LED, it does not specify the material system. Schubert-2003, a textbook on LED technology, remedies this by teaching that commercially available blue LEDs at the time were conventionally III-nitride LEDs grown on sapphire substrates.
  • Motivation to Combine: A POSITA seeking to implement the device in Yamazaki would have been motivated to use a standard, commercially available blue LED. Schubert-2003 established that the standard blue LED was a III-nitride device on a sapphire substrate. Therefore, a POSITA would combine Yamazaki's package design with the conventional LED taught by Schubert-2003 as a matter of routine design choice.
  • Expectation of Success: A POSITA would expect success because the combination merely involved implementing Yamazaki's device with a well-known, predictable, and commercially standard LED component.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Yamazaki and Schubert-2003 with other references (Uemura, Han, or Feldman) to show alternative lead frame designs, and combining the primary grounds with Tadatomo to teach the use of a patterned sapphire substrate for claim 2.

4. Key Claim Construction Positions

• "transparent surface": Petitioner noted agreement with the ITC construction of "transparent LED support component."
• "wherein the cathode and anode provide structural support to the sapphire plate": Petitioner noted agreement with the ITC construction of "both the cathode and the anode provide structural support to the sapphire plate."
• Petitioner argued that terms like "anode" and "cathode" are well-understood by a POSITA as corresponding to positive and negative electrical leads and do not require formal construction.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner's primary technical contention was that the ’854 patent is not entitled to its claimed 2006 priority date and its effective filing date is its actual filing date of September 13, 2019. The argument is based on a lack of written description support for the "cathode/anode limitation" (where both leads provide structural support) in the priority applications. Petitioner alleged that during prosecution of a parent application, the patent owner improperly incorporated "essential material" from a concurrently filed provisional application to overcome a rejection, breaking the priority chain under Rule 1.57. This later effective filing date makes the patent subject to AIA review and qualifies certain references as prior art under §102(a).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. It was contended that the co-pending district court litigation (EDNY case) was stayed, weighing strongly against denial. Further, it was argued that any decision in a related ITC investigation would not have collateral estoppel effect, and the scope of claims and prior art at the PTAB differs from the ITC case, minimizing overlap and promoting judicial efficiency.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6 of the ’854 patent as unpatentable.