Samsung Electronics Co Ltd v. LED Wafer Solutions LLC

1. Case Identification

• Case #: IPR2021-01491
• Patent #: 8,952,405
• Filed: September 3, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): LED Wafer Solutions LLC.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Light Emitting Diode Package and Method of Manufacture
• Brief Description: The ’405 patent describes the structure and manufacturing methods for light emitting diode (LED) devices. The technology is directed to an LED device implemented on a wafer cover layer, featuring a specific layering including positively-doped, negatively-doped, and intrinsic regions, along with metallization, passivation, and optically permissive layers to improve manufacturing efficiency and device performance.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-6, and 8-16 are obvious over Sugizaki in view of Camras.

• Prior Art Relied Upon: Sugizaki (Application # 2010/0148198) and Camras (Patent 7,419,839).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sugizaki teaches nearly all elements of the challenged claims. This includes a semiconductor LED with p-type and n-type regions grown on a sapphire substrate, a recess etched to expose the n-type surface for metallization, an optically permissive phosphor layer, a cover substrate with a lens, and a dielectric passivation layer. However, Sugizaki did not explicitly disclose an intrinsic region between the p-type and n-type layers. Camras was introduced to supply this missing element, as it expressly teaches an LED active region that includes an undoped (intrinsic) layer positioned between p-type and n-type layers. Petitioner contended that combining these references renders the claimed P-I-N structure obvious. Dependent claims reciting features like a patterned metal seed layer, specific metal layer thicknesses, and a non-conductive passivation layer were also alleged to be disclosed or suggested by Sugizaki.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Sugizaki and Camras because Sugizaki did not specify the composition of its light-emitting layer, and Camras provided a known and limited alternative—an intrinsic layer—for such structures. A POSITA would have been motivated to incorporate an intrinsic layer to improve LED efficiency and performance, a well-understood goal. Both references are in the same field and address similar LED architectures, making the combination logical.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because P-I-N LED structures were well-known and conventional, as demonstrated by Camras and acknowledged as prior art within the ’405 patent itself. The combination represented a straightforward implementation of known technologies to achieve predictable results.

Ground 2: Claim 4 is obvious over Sugizaki in view of Camras and Tanimoto.

• Prior Art Relied Upon: Sugizaki (Application # 2010/0148198), Camras (Patent 7,419,839), and Tanimoto (Application # 2009/0001869).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Sugizaki/Camras combination to address claim 4, which added the limitation of a passivation layer with a "shaped edge...configured to reflect light...outwardly." While the base combination disclosed a passivation layer, it did not teach this specific reflective shaping. Tanimoto was asserted to teach this feature by disclosing an LED with a reflecting plate having shaped edges designed to direct light outward from the device.
  • Motivation to Combine: A POSITA would combine Tanimoto’s teaching with the Sugizaki/Camras device to improve light extraction efficiency and directionality, which is a primary objective in LED design. Petitioner argued it would have been obvious to shape the passivation layer of the base combination to incorporate the reflective properties taught by Tanimoto.
  • Expectation of Success: Success would be expected, as using shaped reflective surfaces to direct light was a common and well-understood technique in the field of optoelectronics.

Ground 3: Claims 7 and 17 are obvious over Sugizaki in view of Camras and Tanaka.

• Prior Art Relied Upon: Sugizaki (Application # 2010/0148198), Camras (Patent 7,419,839), and Tanaka (Application # 2008/0031295).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 7 and 17, which require at least one "alignment mark indicative of a required position" for aligning the LED with its cover substrate. The base combination of Sugizaki/Camras did not disclose alignment marks. Tanaka was introduced because it explicitly teaches using a marker to ensure the proper alignment of a lens relative to the light-emitting region of an LED during manufacturing.
  • Motivation to Combine: A POSITA would be motivated to incorporate Tanaka's alignment marks into the manufacturing process for the Sugizaki/Camras device to ensure precise, repeatable, and cost-effective assembly. Proper alignment is critical for optical performance, and using such marks is a standard solution to a known manufacturing challenge.
  • Expectation of Success: The expectation of success was high, as alignment marks were a commonplace and predictable feature in semiconductor fabrication and device assembly.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 1, 3, and 8-16 based on Sugizaki in view of Applicant Admitted Prior Art (AAPA) from the ’405 patent itself. This ground argued the AAPA, which described conventional P-I-N junction LEDs, could supply the intrinsic layer element in place of Camras.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors. It was contended that institution was favored because the parallel district court litigation was in its early stages with no trial date set and minimal investment by the parties. Petitioner further stipulated that, if the IPR is instituted, it would not pursue the same invalidity grounds in the district court, thereby avoiding duplicative efforts and conserving judicial resources. Finally, Petitioner noted that this was the sole PTAB challenge to the ’405 patent, weighing in favor of institution to serve the public interest of reviewing potentially invalid patents.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of the ’405 patent as unpatentable.