Samsung Electronics Co Ltd v. LED Wafer Solutions LLC

1. Case Identification

• Case #: IPR2021-01506
• Patent #: 8,941,137
• Filed: September 7, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): LED Wafer Solutions LLC
• Challenged Claims: 1-4, 6-11

2. Patent Overview

• Title: Light Emitting Diode Device
• Brief Description: The ’137 patent discloses a light emitting diode (LED) device with a layered structure designed to enhance mechanical, electrical, thermal, and optical characteristics. The structure builds upon a conventional Gallium Nitride (GaN) semiconductor LED by adding specific components such as a conducting support layer, an optically permissive layer, and a flat cover substrate.

3. Grounds for Unpatentability

Ground 1: Obviousness over Keller and Chakraborty - Claims 1, 7, and 8 are obvious over Keller in view of Chakraborty.

• Prior Art Relied Upon: Keller (Patent 9,634,191), Chakraborty (Patent 9,287,469).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Keller discloses a light emitting device that meets nearly all limitations of claim 1, including a semiconductor LED with doped and intrinsic regions, a conducting support layer separated from the LED by a metallic interface, an optically permissive layer (a phosphor layer), and a metal pad. Petitioner asserted that the only key element missing from Keller is an "optically permissive flat cover substrate." Chakraborty was alleged to disclose this missing element, teaching a flat, optically permissive encapsulant (made of silicone) that covers the underlying LED components to protect them.
  • Motivation to Combine: A POSITA would combine Chakraborty’s protective flat encapsulant with Keller's LED device to achieve the predictable benefits of protecting the sensitive LED components and shaping the emitted light. Petitioner noted that Keller itself suggests adding encapsulants to alter the optical beam, providing a clear reason to look to references like Chakraborty that teach specific encapsulant structures.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in applying Chakraborty's well-understood encapsulation technology to Keller's device to achieve the known benefits of protection and light shaping without undue experimentation.

Ground 2: Obviousness over Keller and Wirth - Claims 1-3, 7, and 8 are obvious over Keller in view of Wirth.

• Prior Art Relied Upon: Keller (Patent 9,634,191), Wirth (Patent 8,835,937).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is similar to Ground 1, with Keller providing the base LED structure. Wirth was introduced to teach an alternative encapsulating element, specifically an "envelope" and a "window" that covers the phosphor and semiconductor layers. For claim 2, Petitioner argued Wirth’s "window" includes an optical element configured as a convex lens. For claim 3, Petitioner asserted Wirth teaches a non-conductive passivation layer (an encapsulating element) disposed on the support layer, which embraces the carrier and is configured with apertures for electrical interconnects.
  • Motivation to Combine: A POSITA would be motivated to incorporate Wirth's encapsulation element into Keller's LED device for the known purpose of protecting the underlying components from harmful external influences. Adding Wirth’s passivation layer would provide predictable mechanical stabilization and ensure electrical separation between electrodes, representing a straightforward application of basic engineering principles to improve the robustness of Keller’s device.
  • Expectation of Success: The combination involved applying known encapsulation and passivation techniques from Wirth to a standard LED structure from Keller to obtain the foreseeable results of protection, stabilization, and improved optical efficiency.

Ground 3: Obviousness of Method Claims over Wirth, AAPA, and Keller - Claims 9 and 10 are obvious over Wirth in view of Applicant Admitted Prior Art (AAPA) and Keller.

• Prior Art Relied Upon: Wirth (Patent 8,835,937), AAPA (from the ’137 patent), Keller (Patent 9,634,191).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets method claims 9 and 10. Petitioner argued Wirth discloses most of the claimed method steps for making an LED device, including growing doped layers on a substrate, depositing a metallic interface, and lifting off the substrate. However, Wirth does not explicitly teach "electroplating" the conductive support layer. Petitioner asserted this gap is filled by AAPA and Keller. The AAPA from the ’137 patent itself admits that conventional LEDs used conductive carrier layers made of copper. Keller was cited to show it was well-known to use electroplating to apply such a conductive copper layer onto a metallic interface in an LED.
  • Motivation to Combine: When implementing Wirth’s manufacturing process, a POSITA would need a method to form the conductive support layer. Faced with this design choice, a POSITA would look to conventional, known techniques. The combination of the AAPA (showing copper carriers were common) and Keller (showing electroplating was a known method to form them) would make it obvious to form Wirth’s conductive support layer by electroplating copper.
  • Expectation of Success: Applying the well-known technique of electroplating (from Keller) to form a conventional copper carrier layer (disclosed in AAPA) within Wirth's manufacturing process would be a straightforward combination with predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations with Tanimoto (Application # 2009/0001869) to teach a shaped edge on the passivation layer (claim 4) and with Tanaka (Application # 2008/0031295) to teach the use of alignment marks for positioning the cover substrate (claims 6 and 11).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. The petition contended that the Fintiv factors weigh in favor of institution because the parallel district court litigation was in its early stages, with no trial date set and no significant investment of resources by the court or parties. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court, mitigating concerns of duplicative efforts.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 and 6-11 of the ’137 patent as unpatentable.