PTAB

IPR2025-00333

Samsung Electronics Co Ltd v. Sinotechnix LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Side Illumination Lens
  • Brief Description: The ’873 patent describes a side-emitting lens for a light-emitting diode (LED). The lens includes a central total reflection surface that redirects light outwards and at least one linear or curved refractive surface that extends away from the central axis and beyond the periphery of the total reflection surface.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4-7 are obvious over Odawara in view of West

  • Prior Art Relied Upon: Odawara (Japanese Patent Publication No. 2002-344027) and West (Patent 6,598,998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Odawara, a side-emitting LED lens, discloses all limitations of independent claim 1. Odawara teaches a lens with a cone-shaped recessed part (the "total reflection surface") that reflects light laterally. This lens also has a linear upper refractive surface and a curved side refractive surface, both extending beyond the periphery of the recessed part. West is introduced primarily to address dependent claims, teaching a total internal reflection (TIR) surface with multiple sloped regions (a V-shaped recess with a second, less sloped region extending from it), which Petitioner mapped to claim 6. For claim 5 ("bent more than once"), Petitioner argued a POSITA would modify Odawara’s flat upper surface with the sawtooth patterns taught by West to reduce unwanted internal reflection and improve side-emission efficiency.
    • Motivation to Combine: A POSITA would combine Odawara and West because both relate to side-emitting LED lenses and share the common goal of maximizing horizontal light output. A POSITA would have been motivated to replace Odawara's single-slope reflecting surface with West's multi-slope TIR surface or add West's sawtooth refractive surfaces to Odawara to predictably improve light distribution and efficiency, which are known design goals in the field.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involves substituting known optical surfaces (West's TIR funnel or sawtooth pattern) for functionally similar surfaces in a known device (Odawara's lens) to achieve the predictable result of enhanced side emission.

Ground 2: Claims 1, 3, 4, 5-7 are obvious over Sommers in view of West

  • Prior Art Relied Upon: Sommers (Patent 6,674,096) and West (Patent 6,598,998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Sommers discloses an encapsulant lens for a side-emitting LED that meets the limitations of independent claim 1 and dependent claim 3. Sommers's lens includes a "depression" with a reflective coating (the "total reflection surface") and a side surface with both a curved refractive portion and a linear refractive portion. West is combined to render claim 5 ("bent more than once") obvious by teaching the use of sawtooth patterns on a refractive surface to control light direction and prevent undesirable TIR. West is also used to teach a multi-slope TIR surface for claim 6.
    • Motivation to Combine: A POSITA would combine Sommers and West to improve the optical performance of the Sommers lens. Recognizing that the linear surface in Sommers could be prone to unwanted TIR, a POSITA would be motivated to apply the known technique from West—adding sawtooth patterns—to predictably increase side-emitted light. The combination represents applying a known technique to a known device to achieve a predictable result.
    • Expectation of Success: The modification involves a simple, well-understood optical design choice. Adding sawtooth patterns as taught by West to the linear surface of Sommers's lens would predictably improve light extraction with a high expectation of success.

Ground 3: Device Claims 8 and 10-13 are obvious over Elpedes in view of Odawara/Sommers, optionally with West

  • Prior Art Relied Upon: Elpedes (Application # 2004/0140543) in view of Odawara, Sommers, and optionally West.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Elpedes teaches the base luminescent device of independent claims 8 and 12, including a package housing, lead terminals, and a heat sink with the claimed structural arrangements. However, Elpedes’s lens is a simple dome. The invalidity argument is that a POSITA would substitute the specific side-emitting lenses taught by Odawara or Sommers (as modified by West) for the simple lens in Elpedes. The features of the claimed lens (limitation [8d] and [12e]) are supplied by the secondary references as detailed in the grounds above.
    • Motivation to Combine: A POSITA would combine these references as a matter of simple substitution. Elpedes provides a standard LED package, while Odawara, Sommers, and West provide specialized lenses for side emission. A POSITA seeking to build a side-emitting luminescent device would have been motivated to incorporate a known side-emitting lens into a known LED package structure, as this is a common and predictable design approach.
    • Expectation of Success: The combination would have yielded a predictable result. Given the interchangeability of components in LED package design, a POSITA would reasonably expect that placing a side-emitting lens from Odawara or Sommers onto the package from Elpedes would successfully create a functional side-emitting device.
  • Additional Grounds: Petitioner also asserted that claims 1, 2, 4, 5, and 7 are anticipated by or obvious over Odawara alone, and that claims 1, 3, 4, and 7 are anticipated by or obvious over Sommers alone.

4. Key Claim Construction Positions

  • "the linear refractive surface is bent more than once" (Claim 5): Petitioner argued this term requires the linear refractive surface itself to have at least two bends along its length. It does not refer to the bends that occur at the junctions where the linear surface meets the total reflection surface or the curved refractive surface. This construction was central to Petitioner's argument that Odawara and Sommers do not disclose this feature, necessitating the combination with West's sawtooth patterns.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both §325(d) (Advanced Bionics) and §314(a) (Fintiv).
    • Advanced Bionics: Petitioner asserted that the primary references, Odawara and Sommers, were never considered by the USPTO during prosecution. Therefore, the petition raises new arguments based on new art. Even for the art that was considered (West and a counterpart to Elpedes), Petitioner argued the Examiner erred by not appreciating how they could be combined to teach the claimed inventions after the claims were amended to overcome a rejection over West alone.
    • Fintiv: Petitioner argued the Fintiv factors favor institution because the parallel district court litigation is in its very early stages, with minimal investment and an uncertain trial date more than two years away. Petitioner also stipulated it would not pursue the same invalidity grounds in district court if the IPR is instituted.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-8 and 10-13 of the ’873 patent as unpatentable.