Samsung Electronics Co Ltd v. Sinotechnix LLC

1. Case Identification

• Case #: IPR2025-00336
• Patent #: 7,901,113
• Filed: January 17, 2025
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Sinotechnix LLC
• Challenged Claims: 1-11

2. Patent Overview

• Title: Light Emitting Device
• Brief Description: The ’113 patent relates to a light-emitting diode (LED) device featuring a lens designed for side illumination. The lens comprises a central "total reflection surface" that redirects light from the LED chip horizontally, and at least one "linear refractive surface" or "curved refractive surface" that extends beyond the periphery of the central reflector to emit the redirected light outwards.

3. Grounds for Unpatentability

Ground I/II: Anticipation and Obviousness over Odawara - Claims 1, 2, 4, 5, 7, 8, and 10 are anticipated or obvious over Odawara.

• Prior Art Relied Upon: Odawara (Japanese Patent Publication No. 2002-344027).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Odawara, which discloses a side-emitting LED lens, teaches every limitation of the challenged claims. Odawara’s "cone-shaped recessed part" was identified as the claimed "total reflection surface" that reflects light horizontally. Petitioner asserted that Odawara’s lens further includes an "upper surface" that is the claimed "linear refractive surface" and a "side surface 14b" that is the claimed "curved refractive surface," both of which extend beyond the central recessed part as required. The argument relies on the clear depiction of these distinct surfaces and their functions in Odawara’s figures.
  • Key Aspects: Petitioner contended that even if not explicitly described in text, the linear and curved nature of the respective refractive surfaces is unmistakably taught by Odawara's drawings to a person of ordinary skill in the art (POSITA).

Ground III: Obviousness over Odawara in view of West - Claims 1, 2, 4-8, and 10 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: This ground asserted that Odawara provides the basic lens structure for a side-emitting LED, including the required linear and curved refractive surfaces. To the extent Odawara’s "recessed part" was not considered a "total reflection surface" operating on the principle of total internal reflection (TIR), West was argued to cure this deficiency by teaching a "funnel portion 58" explicitly designed as a TIR surface. For claim 6, which requires a multi-sloped reflection surface, West's bent-line funnel shape was argued to teach this feature.
  • Motivation to Combine: A POSITA would combine these references as both are directed to the same field of side-emitting LEDs and share the objective of maximizing horizontal light emission. Modifying Odawara's lens with West's well-understood TIR funnel was presented as a simple and predictable substitution of one known reflective element for another to improve performance.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying a known technique (TIR) from West to a known device (Odawara's lens) to achieve the predictable result of more efficient side illumination.

Ground VI: Obviousness over Sommers in view of West - Claims 1, 3-7, 9, and 11 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 argued that Sommers discloses a side-emitting LED with an encapsulant lens having a coated "reflective surface 328" (the total reflection surface) and a side surface with both linear and curved refractive portions. West was used to supply limitations not expressly met by Sommers. Specifically, for claims 5 and 11 requiring a linear refractive surface "bent more than once," Petitioner argued West's "sawtooth portion 56" teaches adding multiple bends to a refractive surface to improve light extraction efficiency.
  • Motivation to Combine: A POSITA seeking to improve the side-emission efficiency of Sommers’s device would have been motivated to address the known problem of undesirable internal reflection. West taught a known solution: incorporating a sawtooth pattern onto a refractive surface to control light exit angles. This modification was argued to be a predictable design choice to improve performance.
  • Expectation of Success: Success would be expected as the modification involved applying a well-understood optical design principle from West (sawtooth surfaces to reduce TIR) to a known device from Sommers to achieve the desired, predictable outcome of increased side-emitted light.

• Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges against claims 1, 3, 4, 7, and 9 based on Sommers as a standalone reference, arguing its lens with a reflective depression and a side surface having linear and curved portions met all limitations.

4. Key Claim Construction Positions

• "the linear refractive surface is bent more than once" (claims 5, 10, 11): Petitioner contended this term requires the linear surface itself to possess at least two distinct bends along its path. The construction asserted that this language does not merely refer to the bends that form the junctions between the linear surface and adjacent surfaces (i.e., the total reflection surface or the curved refractive surface). This interpretation was crucial to the obviousness argument that a POSITA would add sawtooth patterns from West to meet the limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a).
  • Under Advanced Bionics (§325(d)): Petitioner contended that the primary prior art references, Odawara and Sommers, were never considered by the USPTO during prosecution of the ’113 patent or its parent. Therefore, the arguments and art presented in the petition were not the same or substantially the same as those previously considered.
  • Under Fintiv (§314(a)): Petitioner argued against denial based on a parallel district court litigation, asserting that the Fintiv factors favored institution. Key reasons included that the scheduled trial date (May 2026) is more than a year after the projected Final Written Decision date, investment in the parallel litigation has been minimal, and Petitioner would stipulate not to pursue in court the same grounds on which inter partes review (IPR) is instituted.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-11 of the ’113 patent as unpatentable.