IKEA Supply AG v. Everlight Electronics Co Ltd

1. Case Identification

• Case #: IPR2024-00972
• Patent #: 9,640,733
• Filed: May 29, 2024
• Petitioner(s): IKEA Supply AG
• Patent Owner(s): Everlight Electronics Co., Ltd.
• Challenged Claims: 1-5 and 7

2. Patent Overview

• Title: Light Emitting Device
• Brief Description: The ’733 patent relates to a light emitting device (LED) package. The invention centers on the specific geometric configuration of an LED carrier, which includes a housing and an electrode portion that protrudes from the housing in a particular manner.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5 by Kishikawa

• Prior Art Relied Upon: Kishikawa (Patent 7,771,093).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kishikawa disclosed every limitation of claims 1-5. Specifically, Kishikawa’s light emitting device was asserted to be a carrier comprising a housing (package 15) and at least one electrode portion (metal members 13, 14). Petitioner contended that Kishikawa’s metal members protruded from the housing, comprised a central area and two edge areas, and had cross sections that were "not level with" the housing’s cross section, directly mapping to the structural requirements of claim 1. Dependent claims 2-5, which add limitations such as sloping surfaces, non-coplanar areas, curved surfaces, and rounded corners, were also argued to be explicitly or inherently disclosed in the figures and description of Kishikawa.

Ground 2: Anticipation of Claims 1-5 by Nakashima

• Prior Art Relied Upon: Nakashima (Patent 7,462,870).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Nakashima’s "molded package" device anticipated claims 1-5. The argument mapped Nakashima’s molded package 100 to the claimed "carrier," its mold member 105 to the "housing," and its metal members 102/103 to the "electrode portion." Petitioner argued that these metal members protruded from the housing with a central area and two edge areas, and that cross sections of the electrodes and housing were not level, fulfilling all limitations of independent claim 1. The structures corresponding to dependent claims 2-5, including sloping and curved surfaces, were also alleged to be present in Nakashima’s disclosed "gull-wing" electrode shape and overall package design.

Ground 3: Obviousness of Claims 1-5 and 7 over Umeda in view of Bando

• Prior Art Relied Upon: Umeda (Japanese Patent Publication No. 2014-041966) and Bando (Patent 7,719,024).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Umeda disclosed all elements of claim 1 except for an "encapsulant" covering the LED chip. Umeda was shown to teach a carrier with a resin molded housing and lead electrodes that protruded with the specific central and edge area configuration recited in claim 1. For claim 7, Petitioner argued that Umeda’s electrodes lacked the claimed antioxidant layer.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Umeda with Bando for two primary reasons. First, a POSITA would have been motivated to add an encapsulant, as taught by Bando, to Umeda’s device to achieve the well-known benefits of protecting the LED chip from damage and moisture. Second, to address claim 7, a POSITA would have been motivated to apply an antioxidant plating to Umeda’s electrodes, as taught by Bando, to prevent corrosion, a known problem in the field. Bando further taught that cutting such a plated electrode would necessarily result in an uncovered cross-section, meeting the final limitation of claim 7.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success, as adding an encapsulant or a protective metal plating were routine, well-understood, and predictable modifications in LED package manufacturing.

• Additional Grounds: Petitioner asserted additional anticipation challenges against claims 1-5 and 7 based on Kuramoto (Application # 2014/0124812). Further obviousness grounds were asserted for claim 7 over the primary anticipation references in view of Bando, and for claims 1-5 over any of the primary anticipation references, arguing any minor structural differences would have been inconsequential and obvious to a POSITA.

4. Key Claim Construction Positions

• Petitioner argued that while the claim term "the housing cross section and the electrode portion cross section are not level with one another" was found indefinite in related district court litigation, the prior art structures are so nearly identical to those in the ’733 patent that they would anticipate under any reasonable construction of the term.
• For the term "cross section," Petitioner adopted the construction from the related litigation: "a plane surface formed by cutting a solid."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on the Fintiv factors, asserting that institution is favored. Key arguments included that the parties had agreed to request a stay in the parallel district court litigation ("IKEA-Everlight Litigation"), the trial date is not until November 2025 (close to the IPR statutory deadline), and investment in the parallel case has been minimal.
• Petitioner further argued against discretionary denial under §325(d), noting that the primary prior art references asserted in the petition (Kishikawa, Nakashima, Kuramoto, Umeda, Bando) were never considered by the examiner during the original prosecution of the ’733 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 7 of Patent 9,640,733 as unpatentable.