Savant Technologies LLC v. Feit Electric Co Inc

1. Case Identification

• Case #: IPR2025-00260
• Patent #: 8,604,678
• Filed: December 9, 2024
• Petitioner(s): Savant Technologies LLC d/b/a GE Lighting, Elong International USA Inc., and Xiamen Longstar Lighting Co. Ltd.
• Patent Owner(s): Feit Electric Company, Inc.
• Challenged Claims: 1, 11-14

2. Patent Overview

• Title: Wavelength Conversion Component with a Diffusing Layer
• Brief Description: The ’678 patent discloses a component for light emitting devices (LEDs) that uses a phosphor-based wavelength conversion layer and a separate light diffusing layer containing light scattering particles (e.g., TiO₂). The diffusing layer is designed to improve the off-state appearance of the component, making it appear white rather than the typical yellow of the phosphor.

3. Grounds for Unpatentability

Ground 1: Claims 11-14 are obvious over Basin-2007, Basin-2005, and Stokes

• Prior Art Relied Upon: Basin-2007 (Application # US2009/0057699), Basin-2005 (Application # US2007/0045761), and Stokes (Patent 6,791,259).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Basin-2007 taught a white-light LED with a phosphor layer and a TiO₂ diffusing layer to achieve a "Non-Yellow Off-State Color," meeting most limitations of claim 1. Basin-2005 was cited to supply the common knowledge that such LEDs emit blue light in a range including wavelengths greater than 440 nm. For the dependent claims, Petitioner asserted that Stokes explicitly taught selecting the average particle size of the scattering material to preferentially scatter blue excitation light more than the converted yellow light. Stokes disclosed this selection improves lamp uniformity and provided exemplary particle size ranges (100-200 nm) that overlap with and render obvious the ranges required by claims 12 ("at least twice as much") and 14 ("less than about 150 nm").
  • Motivation to Combine: A POSITA would combine Basin-2007 with Basin-2005 to ascertain the conventional operating wavelength of the blue LED disclosed in Basin-2007. A POSITA would further combine these references with Stokes to apply its known technique of optimizing particle size to improve the light conversion efficiency and output uniformity of the LED device, a well-understood goal in the art.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because applying Stokes's teachings involved optimizing a known parameter (particle size) within ranges disclosed by the primary reference (Basin-2007) to achieve a predictable improvement in performance.

Ground 2: Claims 1 and 11-14 are obvious over Krummacher, Shimizu, and Stokes

• Prior Art Relied Upon: Krummacher (Application # US 2008/0079015), Shimizu (Patent 6,069,440), and Stokes (Patent 6,791,259).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Krummacher taught a white-light optoelectronic component comprising a luminescence conversion layer and an outer light-scattering translucent layer containing TiO₂ particles. This diffusing layer explicitly served to solve the problem of an unattractive yellow off-state appearance, thus teaching the core elements of claim 1. Shimizu, an admitted prior art reference in the ’678 patent, was cited to provide the specific detail of a blue LED emitting light at a wavelength greater than 440 nm. The arguments for the obviousness of claims 11-14 mirrored those in Ground 1, relying on Stokes to teach the intentional selection of TiO₂ particle size to preferentially scatter blue light over yellow light.
  • Motivation to Combine: A POSITA would be motivated to look to a well-known reference like Shimizu to implement the conventional blue LED chip called for in Krummacher’s device. The motivation to incorporate the teachings of Stokes was to apply a known design principle to improve the performance of Krummacher’s device by enhancing light conversion and uniformity.
  • Expectation of Success: Success would be expected as the combination involved the simple substitution of a known blue LED (from Shimizu) into a described system (Krummacher) and applying a standard optimization technique (from Stokes) to achieve predictable results.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 1 over Basin-2007 in view of Basin-2005.

4. Key Technical Contentions (Beyond Claim Construction)

• Petitioner contended that Figure 10 of the ’678 patent, which provides the technical basis for claims 11-14 by showing relative light scattering versus TiO₂ particle size, was not original work. It argued the figure was lifted without attribution from widely available prior art, including DuPont marketing materials and the Stokes patent itself (which labeled a similar graph as "prior art"). This contention directly challenged the non-obviousness of selecting a specific particle size to preferentially scatter blue light, arguing it was a well-known concept based on publicly available data.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under the General Plastic factors, explaining that this petition was filed to challenge newly-asserted claims (11-12) and related claims (13-14) not included in a prior petition (IPR2024-01357). It asserted that using the same prior art and arguments would not burden the Board and suggested consolidation.
• Petitioner also argued against denial under §325(d), emphasizing that the primary prior art references (Basin-2007, Krummacher, Stokes) were materially different from the art considered during prosecution and were never before the Examiner. It contended the patent was allowed precisely because the Examiner was not aware of this art disclosing diffusing layers in white-light LEDs.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1 and 11-14 of the ’678 patent as unpatentable.