Samsung Electronics Co Ltd v. LED Wafer Solutions LLC

1. Case Identification

• Case #: IPR2021-01526
• Patent #: 9,786,822
• Filed: September 10, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): LED Wafer Solutions LLC
• Challenged Claims: 1, 2, 5-10

2. Patent Overview

• Title: Light Emitting Diode (LED) Device
• Brief Description: The ’822 patent relates to a light emitting diode (LED) device. The disclosed technology builds upon known gallium nitride (GaN) LED structures by incorporating additional layers, such as passivation and carrier layers, intended to improve the mechanical, electrical, thermal, and optical characteristics of the final device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wirth - Claims 1, 2, and 5-9 are obvious over Wirth.

• Prior Art Relied Upon: Wirth (Patent 8,835,937).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wirth, which teaches a method for producing optoelectronic components like LEDs in a simplified manner, discloses every limitation of claims 1, 2, and 5-9. Wirth’s optoelectronic component allegedly includes a semiconductor LED (semiconductor function region 2) with p-doped and n-doped layers and an active zone between them, a carrier layer (carrier 3), an optically transparent cover substrate (window 17), and an optically transparent layer containing optically definable material (envelope 4 containing phosphor). Wirth also allegedly teaches a passivation layer (encapsulating element 18) and first and second electrical contacts (interconnects 11 and 12) disposed within contact holes. Petitioner contended that while Wirth shows an optional isolation material in one embodiment, another embodiment omits it, and a POSITA would have found it obvious to omit this material, thereby allowing the semiconductor LED to directly contact the transparent layer as claimed.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference. The motivation was based on Wirth’s own teachings, arguing that a POSITA would have recognized that combining the disclosed elements, including making obvious design choices like omitting an optional isolation layer, would result in the claimed device.
  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success because implementing the claimed configuration based on Wirth’s teachings involved applying known manufacturing principles to achieve a predictable LED structure.

Ground 2: Obviousness over Wirth and Camras - Claims 1, 2, and 5-9 are obvious over Wirth in view of Camras.

• Prior Art Relied Upon: Wirth (Patent 8,835,937) and Camras (Patent 7,419,839).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative argument for the "intrinsic region" limitation of claim 1. To the extent Wirth’s "active zone 400" was not considered inherently intrinsic, Petitioner argued Camras explicitly remedies this. Camras teaches an LED structure where the light-emitting active region (active region 112) is situated between p-type and n-type layers and includes intrinsic (undoped) semiconductor material. The remaining limitations were mapped to Wirth as detailed in Ground 1.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to implement the LED device in Wirth would have looked to other references in the same field, such as Camras, for guidance on active layer configurations. Because Camras taught the benefits of using an undoped intrinsic layer, a POSITA would combine this known feature into Wirth's GaN LED structure to achieve the predictable result of light emission from the intrinsic region.
  • Expectation of Success (for §103 grounds): Success was expected because LEDs with intrinsic light-emitting layers were well-known in the art, as demonstrated by Camras and admissions in the ’822 patent itself, making the integration a straightforward application of a known technology.

Ground 3: Obviousness over Wirth and Lin - Claim 10 is obvious over Wirth in view of Lin.

• Prior Art Relied Upon: Wirth (Patent 8,835,937) and Lin (Patent 6,562,709).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically targeted the limitation of claim 10, which requires the first and second electrical contacts to "comprise an electroplated material." While Wirth discloses electrical interconnects made of metal, it is silent on the method of deposition. Lin explicitly teaches using electroplating to form connection joints on a semiconductor chip to create a reliable and inexpensive assembly.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Wirth’s LED structure with Lin’s fabrication technique to improve the performance and reliability of the electrical contacts. Since electroplating was a well-known, easy-to-control method for depositing conductive materials like copper onto contacts, it would have been an obvious technique to apply to Wirth's device.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as applying the known process of electroplating from Lin to the known metal contacts of Wirth was a mere combination of known technologies to achieve a predictable improvement in contact performance.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Wirth with Applicant Admitted Prior Art (AAPA) to render claims 1, 2, and 5-9 obvious, and combining Wirth, AAPA, and Lin, or Wirth, Camras, and Lin to render claim 10 obvious, relying on similar combination rationales.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. Key arguments included that the parallel district court case was in its earliest stages with no trial date set and minimal investment by the parties or the court. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court litigation, thus avoiding duplicative efforts. Petitioner also noted that this is the sole challenge to the ’822 patent before the Board, which weighs in favor of institution to serve the public interest against leaving potentially invalid patents in force.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, and 5-10 of Patent 9,786,822 as unpatentable.