Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 9
`Filed: July 7, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`0
`
`Case IPR2017-00558
`Patent 8,309,375 B2
`_______________
`
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 9
`Filed: July 7, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`0
`
`Case IPR2017-00558
`Patent 8,309,375 B2
`_______________
`
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00551
`Patent 7,915,375 B2
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`
`A. Background
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`I. INTRODUCTION
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`Vizio, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking to
`
`institute an inter partes review of claims 1 and 4 of U.S. Patent No.
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`8,309,375 B2 (Ex. 1001, “the ’375 patent”) pursuant to 35 U.S.C. §§ 311–
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`319. Nichia Corporation (“Patent Owner”) filed a Preliminary Response.
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`(Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
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`which provides that an inter partes review may not be instituted “unless . . .
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.”
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`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. § 103 on the following specific grounds (Pet. 17–82):
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`References
`Baretz1 and Pinnow2
`Baretz, Pinnow, Nakamura3, and Schuil4
`
`Claims Challenged
`1 and 4
`1 and 4
`
`For reasons discussed below, we deny Petitioner’s request to institute
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`inter partes review of claims 1 and 4 of the ʼ375.
`
`B. Related Proceedings
`
`We have been informed that Nichia Corp. v. VIZIO, Inc., C.A. No.
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`C.A. No. 8:16-cv-545 (C.D. Cal.), may be impacted by this proceeding.
`
`Pet. 2. In addition, Petitioner has filed petitions seeking inter partes review
`
`
`1 U.S. Patent No. 6,600,175 (Ex. 1004, “Baretz”).
`2 U.S. Patent No. 3,699,478 (Ex. 1005, “Pinnow”).
`3 Shuji Nakamura et al., “High-Power InGaN Single-Quantum-Well-
`Structure Blue and Violet Light-Emitting Diodes,” APPLIED PHYSICS
`LETTERS 67, 1868 (1995) (Ex. 1014, “Nakamura”).
`4 U.S. Patent No. 4,024,070 (Ex. 1015, “Schuil”).
`
`2
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`IPR2017-00551
`Patent 7,915,375 B2
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`of several related patents, 7,915,631 (IPR2017-00551), 7,901,959 (IPR2017-
`
`00552), and 7,855,092 (IPR2017-00556). See id. at 2–3.
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`C. The ʼ375 patent
`
`The ’375 patent describes a method for manufacturing a light emitting
`
`diode (“LED”). See Ex. 1001, Abstract. As described in the specification,
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`prior attempts to emit white light from LEDs had unsatisfactory results due
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`to “variations in the tone, luminance and other factors of the light emitting
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`component” and in addition, it was sometimes necessary to use complex
`
`circuitry to compensate for variations between materials used to create the
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`LEDs. Id. at 1:55–61. The ’375 patent purports “to solve the problems
`
`described above and provide a light emitting device which experiences only
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`extremely low degrees of deterioration in emission light intensity, light
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`emission efficiency and color shift over a long time of use with high
`
`luminance.” Id. at 3:1–7. Figure 1 of the ’375 patent is reproduced below.
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`
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`3
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`IPR2017-00551
`Patent 7,915,375 B2
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`Figure 1 is a schematic sectional view of a lead type LED. Id. at 4:59–61.
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`LED 100 has light emitting component 102, which is installed in cup 105a.
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`Id. at 8:40–41. The light emitting component has an active layer comprising
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`a gallium nitride based semiconductor containing indium and is capable of
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`emitting a blue color light. Id. at Abstract. Coating resin 101 fills cup 105a
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`and the resin contains a specified phosphor to cover light emitting
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`component 102. Id. at 8:41–43. Light emitting component 102, which is
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`also known as an LED chip, “excites the phosphor contained in the coating
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`resin 101 to generate fluorescent light having a wavelength different from
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`that of LED light, so that the fluorescent light emitted by the phosphor and
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`LED light which is output without contributing to the excitation of the
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`phosphor are mixed and output.” Id. at 8:49–54. Thus, LED 100 emits light
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`having a different wavelength than the light emitted by the LED chip. Id. at
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`8:54–56.
`
`D. Challenged Claims
`
`Petitioner challenges claims 1 and 4 of the ʼ375 patent, of which claim
`
`1 is independent. The challenged claims are reproduced below:
`
`1. A method for manufacturing a light emitting device
`comprising:
`
`preparing a light emitting component having an active layer of a
`semiconductor, said active layer comprising a gallium
`nitride based semiconductor containing indium and being
`capable of emitting a blue color light having a spectrum
`with a peak wavelength within the range from 420 to 490
`nm;
`
`preparing a phosphor capable of absorbing a part of the blue
`color light emitted from said light emitting component
`and emitting a yellow color light having a broad emission
`spectrum comprising a peak wavelength existing around
`
`4
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`IPR2017-00551
`Patent 7,915,375 B2
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`the range from 510 to 600 nm and a tail continuing
`beyond 700 nm, wherein selection of said phosphor is
`controlled based on an emission wavelength of said light
`emitting component; and
`
`combining said light emitting component and said phosphor so
`that the blue color light from said light emitting
`component and the yellow color light from said phosphor
`are mixed to make a white color light, wherein a
`chromaticity point of the white color light is on a straight
`line connecting a point of chromaticity of the blue color
`light and a point of chromaticity of the yellow color light,
`and
`
`wherein a content of said phosphor in said light emitting device
`is selected to obtain a desired chromaticity of the white
`color light.
`
`4. The method for manufacturing a light emitting device
`according to claim 1, wherein the emission spectrum of
`said phosphor comprises a peak wavelength existing
`around the range from 530 to 570 nm and a tail
`continuing beyond 700 nm.
`
`Ex. 1001, 30:55–31:14, 31:21–26.
`
`II. IDENTIFICATION OF REAL PARTIES-IN-INTEREST
`
`Petitioner declares that it is the real party-in-interest (“RPI”) pursuant
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`to 37 C.F.R. § 42.8(b)(1). Pet. 2. That rule requires the Petition to
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`“[i]dentify each real party-in-interest.” 37 C.F.R. § 42.8(b)(1) (emphasis
`
`added). Patent Owner questions whether this is a complete listing of RPIs
`
`because “facts presently available to Nichia suggest that TCL Multimedia
`
`Technology Holdings Ltd. and its subsidiary, TTE Technology, Inc.
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`(together, ‘TCL’), may also be real parties-in-interest.” Prelim. Resp. 7.
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`5
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`IPR2017-00551
`Patent 7,915,375 B2
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`Patent Owner contends that Petitioner conspicuously failed to list as a
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`related matter Patent Owner’s suit against TCL in Delaware (Nichia Corp. v.
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`TCL Multimedia Tech. Holdings Ltd., Case 1:16-cv-00681 filed Aug. 8,
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`2016) (Ex. 2008), also alleging infringement of the ’375 patent. Id. at 8.
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`TCL engaged as its litigation counsel the same law firm that Petitioner
`
`engaged in Nichia Corp. v. VIZIO, Inc., C.A. No. 8:16-cv-545 (C.D. Cal.).
`
`Id. Thus, Petitioner and TCL share the same lead trial counsel in their
`
`district court proceedings. Id. In the Delaware case, TCL responded to
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`discovery requests concerning preparation and filing of the Petition by
`
`asserting the joint defense privilege and common interest doctrine, Patent
`
`Owner contends that TCL essentially acknowledges it was communicating
`
`with counsel for third parties, likely including Petitioner’s counsel
`
`concerning the preparation and filing of the Petition. Id. at 8–9 (citing Ex.
`
`2011, Response Request 50).
`
`In this proceeding Petitioner is represented by a law firm and named
`
`counsel that is different from the firm and counsel engaged by Petitioner and
`
`TCL in the district court cases. As Patent Owner notes, it is Petitioner’s
`
`burden to establish it has complied with the statutory requirement to identify
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`all real parties-in-interest. Id. at 9 (citing Amazon.com, Inc. v. Appistry, Inc.,
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`Case IPR2015-00480, slip op. at 6 (PTAB July 13, 2015)). On this record,
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`we find that the mere existence of a joint defense agreement between parties
`
`represented by the same trial counsel is insufficient to establish that
`
`Petitioner, which is represented by different counsel in this inter partes
`
`review, has failed to name all real parties-in-interest. There is no bright line
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`test for determining the necessary quantity or degree of participation to
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`qualify as a real party-in-interest, although whether the unnamed party could
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`have exercised control over a party’s participation is a common
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`consideration. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 58
`
`(Aug. 14, 2012).
`
`On the current record, Patent Owner has offered no evidence that TCL
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`assisted in preparation or financing of the Petition or exerted any control
`
`over its filing or content. TCL’s assertion of the joint defense privilege in
`
`the district court, in and of itself, does not indicate that TCL participated in
`
`this proceeding in such a manner as to be a real party-in-interest. TCL’s
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`response to Patent Owner’s discovery request is in the form of an objection
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`and states that subject to its objections, TCL will produce relevant, non-
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`privileged documents responsive to this request that are in TCL’s
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`possession, custody, and control that are located after a reasonably diligent
`
`search. Ex. 2011, Request Response 50. Patent Owner does not state
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`whether any such documents have been received, whether TCL has refused
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`to produce any such documents, or whether there are any other indications
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`that TCL exercised control over the filing or content of the Petition. We are
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`not persuaded that the circumstances raise sufficient doubt about whether
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`Petitioner has satisfied its obligation to name all real parties in interest. We,
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`therefore, decline to deny the Petition for failure to comply with the
`
`requirement of 35 U.S.C. § 312(a)(2) for instituting an inter partes review.
`
`
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`III. CLAIM CONSTRUCTION
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`As stated in our Order entered on April 6, 2017, recognizing that the
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`’375 Patent is likely to expire during this inter partes review, we apply a
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`district court-type claim construction in this proceeding. Paper 7, 2–3.
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`Petitioner asserts all terms should be given their plain and ordinary meaning
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`Patent 7,915,375 B2
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`consistent with the ’375 specification. Pet. 25. As an example of its view of
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`the plain and ordinary meaning of the claim terms, Petitioner discusses the
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`meaning of “peak wavelength.” Id. Patent Owner “reserves further
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`discussion about claim construction as may be appropriate for its patent
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`owner’s response under 37 C.F.R. § 42.120, if a trial is instituted.” Prelim.
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`Resp. 17. We decline to provide an express construction for any terms in the
`
`’375 patent because we determine that no such construction is required for
`
`the purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642
`
`F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to
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`the extent necessary to resolve the controversy’”).
`
`IV. LEVEL OF ORDINARY SKILL
`
`Petitioner cites the testimony of its declarant, Dr. Paul R. Prucnal, that
`
`a person of ordinary skill in the art of the ’375 patent would have had a
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`minimum of a bachelor’s degree in electrical engineering, chemistry,
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`physics, or a related field and approximately two years of professional
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`experience in optoelectronics or other relevant field. Pet. 24 (citing Ex.
`
`1002 ¶ 37). Dr. Prucnal further opines that additional graduate education
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`could substitute for professional experience or significant experience in the
`
`field could substitute for formal education. Id. (citing Ex. 1002 ¶ 37).
`
`Noting that a person of ordinary skill in the art is a hypothetical construct,
`
`but should be tethered to reality, Patent Owner critiques Petitioner’s
`
`description of such a person as inadequate because it fails to define
`
`optoelectronics, is overbroad and too flexible, and attempts to sweep non-
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`analogous art into the obviousness analysis. Prelim. Resp. 14–16. Patent
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`Owner, however, does not propose an alternative description of a person of
`
`ordinary skill.
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`8
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`IPR2017-00551
`Patent 7,915,375 B2
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`The manufacture of white light LED devices described in the ’375
`
`patent concerns aspects of electrical engineering (e.g., the control circuitry),
`
`physics (e.g., wavelengths of the spectrum to generate white light), and
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`chemistry (e.g., the composition of phosphors to absorb various wavelengths
`
`and to cause fluorescence). Thus, persons of ordinary skill in this field are
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`likely to have different technical backgrounds and professional experience.
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`We are persuaded that Petitioner’s description of a person of ordinary skill
`
`in the art recognizes the wide range of backgrounds of persons working in
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`the field and is adequate for purposes of this proceeding.
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`V. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
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`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
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`A. Analysis of Asserted Ground of Obviousness over Baretz and Pinnow
`
`1. Overview of Baretz
`
`Baretz relates generally to a light emitting assembly comprising a
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`solid state device, such as a semiconductor light emitting diode, and a
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`luminophoric medium, such as phosphor. Ex. 1004, 7:8–18. The light
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`emitting diode emits light at a relatively shorter wavelength, such as
`
`monochromatic blue or ultraviolet light, and the luminophoric medium
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`absorbs the shorter wavelength light, down-converts it to yield longer
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`wavelength light that appears as white light. Id. at 7:13–27.
`
`Baretz’s light emitting assembly is depicted in Figure 1, reproduced
`
`below. As depicted, Baretz’s light emitting assembly comprises enclosing
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`wall (7) defining light-transmissive enclosure (11) that may be formed of
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`any suitable light transmissive material, such as translucent polymer or
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`glass. Id. at 8:60–64. The light transmissive enclosure houses light emitting
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`IPR2017-00551
`Patent 7,915,375 B2
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`diode die (13) which emits blue or UV light. Id. at 8:64–9:4, 9:10–13.
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`Enclosure (11) is filled with down-converting medium (20) such as
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`fluorescer and/or phosphor that down-converts the light emitted by the LED
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`to a longer wavelength so that light output appears to be white light. Id. at
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`9:4–9.
`
`
`
`Figure 1 of Baretz depicting white light emitting diode assembly according
`to one embodiment of Baretz
`
`
`2. Overview of Pinnow
`
`Pinnow generally relates to projection laser display systems that
`
`produce black and white images. Ex. 1006, 1:5–7. The system includes a
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`laser that emits light at a shorter wavelength and a phosphorescent screen of
`
`cerium-activated garnet that, when energized by the laser, emits light at a
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`longer wavelength than the laser light. Id. at 1:33–43. Figure 2 of Pinnow
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`illustrates an embodiment of the laser display system and is reproduced
`
`below.
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`10
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`IPR2017-00551
`Patent 7,915,375 B2
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`Figure 2 of Pinnow depicting an embodiment of
`Pinnow’s laser display system
`
`
`
`
`
`Pinnow discloses that the laser may be an argon-ion laser which emits
`
`light at 4,880 A (488 nm) or a cadmium-ion laser that emits light at 4,416 A
`
`(442 nm). Id. at 1:44–48; 2:19–26. Pinnow further discloses that the
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`cerium-activated phosphor emits light centering about 5,500 A (550 nm).
`
`Id. at 1:47–49; 2:12–16. Figure 1 of Pinnow is reproduced below.
`
`
`
`
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`11
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`IPR2017-00551
`Patent 7,915,375 B2
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`Figure 1, depicted above, illustrates a plot of the emission spectra of the
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`laser and phosphorescent screen.
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`
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`B. Whether Pinnow Is Analogous to the ʼ375 Patent
`
`As a prerequisite to our analysis of the obviousness challenges, we
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`must first determine whether the asserted art is such that it may be properly
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`considered under 35 U.S.C. § 103. In re Clay, 966 F.2d 656, 658 (Fed. Cir.
`
`1992). Patent Owner argues that all of the asserted grounds should fail
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`because Pinnow is not analogous art to the ’375 patent. Prelim. Resp. 49–
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`59. In both of the asserted grounds, Petitioner alleges that the challenged
`
`claims are obvious over combinations of references that include Pinnow.
`
`See Pet. 5. “Although § 103 does not, by its terms, define the ‘art to which
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`[the] subject matter [sought to be patented] pertains,’ this determination is
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`frequently couched in terms of whether the art is analogous or not, i.e.,
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`whether the art is ‘too remote to be treated as prior art.’” Id. (quoting In re
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`Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). “Prior art is analogous if it is
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`from the same field of endeavor or if it is reasonably pertinent to the
`
`particular problem the inventor is trying to solve.” Circuit Check Inc. v.
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`QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). According to Patent
`
`Owner, Pinnow fails both prongs of the analogous art test and as such all of
`
`the asserted grounds should fail. Prelim. Resp. 49–50.
`
`a. Field of Endeavor
`
`The first prong of the analogous art test asks us to determine whether
`
`the challenged claims and the disputed reference are “from the same field of
`
`endeavor, regardless of the problem addressed.” Unwired Planet, LLC v.
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`Google Inc., 841 F.3d 995, 1000 (Fed. Cir. 2016) (quoting Clay, 966 F.2d
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`656.) “The field of endeavor of a patent is not limited to the specific point
`
`of novelty, the narrowest possible conception of the field, or the particular
`
`focus within a given field.” Id. at 1001. We instead must analyze the
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`disclosures of the asserted reference and the challenged patent in order to
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`ascertain whether their areas of focus overlap such that the teachings of
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`Pinnow would have had relevance to the manufacture of LEDs described in
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`the challenged claims. Id.
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`According to Patent Owner, Pinnow and the ’375 patent are directed
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`to two distinct fields of endeavor, “Pinnow is a gas ion laser projection
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`display system and the [’375 patent] invention is, in contrast, directed to
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`LED light sources.” Prelim. Resp. 49. As noted in its specification, Pinnow
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`describes its field of invention as “concerned with projection display
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`systems and is primarily concerned with those producing black and white
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`images.” Ex. 1006, 1:5–7. Further, Pinnow’s claims all are directed to a
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`“[v]isual display apparatus comprising a laser.” Id. at 5:8–9 (preamble of
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`Pinnow’s sole independent claim). Based on our review of Pinnow’s
`
`disclosures, we find no reference to an LED in the text of Pinnow. In
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`addition, Patent Owner contends that “[a]ll of Pinnow’s embodiments
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`concern gas ion laser display systems that use a phosphor screen to create
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`black and white images.” Prelim. Rep. 50.
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`In contrast, the ’375 patent is directed to “[a] method for
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`manufacturing a light emitting device.” Ex. 1001, abstract. As described in
`
`the specification, “[t]he present invention relates to a light emitting diode
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`used in LED display, back light source, traffic signal, trailway signal,
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`illuminating switch, indicator, etc.” Id. at 1:25–29. “[A]n object of the
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`present invention is to . . . provide a light emitting device which experiences
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`only extremely low degrees of deterioration in emission light intensity, light
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`emission, efficiency and color shift over a long time of use with high
`
`luminance.” Id. at 3:7–11. The challenged claims both are directed to “[a]
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`method for manufacturing a light emitting device.” Id. at 30:55–56
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`(preamble for independent claim 1). Based on our review of the ’375
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`patent’s disclosures, we find no reference to a laser or laser projection
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`display in the text of the ’375 patent.
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`We find Patent Owner’s argument to be persuasive that Pinnow and
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`the ’375 patent are in different fields of endeavor. As an initial matter we
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`note that Petitioner has not provided any evidence or argument as to whether
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`Pinnow is in the same field of endeavor as the ’375 patent. Petitioner’s
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`declarant, Dr. Paul Prucnal mentions the term “field of endeavor” (Ex. 1002
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`¶¶ 92, 94), but does not discuss his view of Pinnow’s field of endeavor. See
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`generally, Ex. 1002 ¶¶ 82–85. We also note, that we do not assume Pinnow
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`to be analogous art merely because it was submitted to the Office as part of
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`an Information Disclosure Statement (“IDS”) during the prosecution of the
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`application that led to the ’375 patent. Pet. 16 (citing Ex. 1003); see Prelim.
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`Resp. 59. Applicant’s decisions as to which references to include on an IDS
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`are guided by their duty to disclose material information during prosecution,
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`however, the standards for determining whether prior art is analogous and
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`whether an applicant should submit a reference pursuant to the duty of
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`disclosure are distinct and should not be conflated. See 37 C.F.R. § 1.56.
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`“Thus, with the mere listing of references in an IDS, the applicant has
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`admitted no more than that references in the disclosure may be material to
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`prosecution of the pending claims.” Abbott Labs. v. Baxter Pharm. Prod.,
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`Inc., 334 F.3d 1274, 1279 (Fed. Cir. 2003).
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`We are persuaded by Patent Owner’s argument that Pinnow is not in
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`the same field of endeavor as the ʼ375 Patent because “Pinnow was focused
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`on a projection display system, not an LED light source. . . . Stated another
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`way, Pinnow does not teach a white laser, but only a white image. In
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`contrast, the light source—the white LED—is the primary focus of the [’375
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`patent’s] invention.” Prelim. Resp. 55. Pinnow’s disclosures are focused on
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`laser projection displays and Petitioner has not provided argument or
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`evidence to persuade us that one of ordinary skill in the art would find the
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`Pinnow and the ’375 patent to be in the same field of endeavor. Thus,
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`Petitioner has failed to demonstrate that Pinnow and the ’375 patent are
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`analogous art based a shared field of endeavor.
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`b. Reasonably Pertinent
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`As discussed above, we are not persuaded that Pinnow and the ’375
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`patent are in the same field of endeavor. Thus, we move our analysis to the
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`next prong of the analogous art test to determine if Petitioner has put forth a
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`sufficient case to show that Pinnow is reasonably pertinent to the ’375
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`patent. If the reference is not within the field of the inventor’s endeavor, the
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`art may still be analogous if it is reasonably pertinent to the particular
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`problem with which the inventor is involved. In re Klein, 647 F.3d 1343,
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`1348 (Fed. Cir. 2011). As the Federal Circuit has instructed, in order “[t]o
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`determine if art is analogous, we look to ‘the purposes of both the invention
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`and the prior art.’” Unwired Planet, 841 F.3d at 1001 (quoting Clay, 966
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`F.2d at 659). A reference is reasonably pertinent if it is one which, because
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`of the matter with which it deals, logically would have commended itself to
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`an inventor’s attention in considering his problem. Klein, 647 F.3d at 1348.
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`According to Patent Owner, Pinnow is not reasonably pertinent to the
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`problems faced by the inventors of the ’375 patent because “Pinnow is not
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`pertinent to the entire problem faced by the inventors of the ’375 patent and,
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`in fact, does not address or even mention a single one of the problems they
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`faced and overcame.” Prelim. Resp. 58.
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`Petitioner and its declarant do not provide sufficient analysis under the
`
`second prong of the test to explain why Pinnow should be considered to be
`
`reasonably pertinent to the particular problem with which the inventors of
`
`the ʼ375 Patent were involved. Petitioner describes Pinnow as disclosing
`
`“converting blue light from a monochromatic light source with a YAG:Ce
`
`phosphor to make a black and white display.” Pet. 20. According to
`
`Petitioner, “Pinnow uses YAG:Ce phosphor because ‘the most pronounced
`
`excitation peak’ of YAG:Ce ‘coincides with a pump wavelength of about
`
`0.46 micron [460nm],’ which is within the wavelength spectrum of blue
`
`light.” Id. at 38–39 (citations omitted).
`
`Pinnow, however, states that the problem it seeks to address is that of
`
`providing “laser visual display system producing black and white images
`
`free from speckle problems.” Ex. 1005, 1:28–30. It addresses the problem
`
`of speckled images through “the use of a phosphorescent screen of cerium-
`
`activated garnet energized by a laser emitting in the visible at a somewhat
`
`shorter wavelength than the bulk of the emission from the screen.”
`
`Pinnow’s “[i]nventive novelty is premised largely on the nature of phosphor
`
`screen 15 as incorporated in the overall system.” Ex. 1005, 2:56–58. We
`
`have no evidence or argument from Petitioner explaining why one of
`
`ordinary skill in the art looking to manufacture a white light LED would
`
`look to a reference such as Pinnow which seeks to create a speckle free laser
`
`16
`
`
`
`IPR2017-00551
`Patent 7,915,375 B2
`
`projection display through the use of a phosphorescent screen. Additionally,
`
`Petitioner does not explain why, even if both the ʼ375 Patent and Pinnow
`
`discuss converting light from a monochromatic light source using phosphor,
`
`Pinnow would have commended itself to the attention of the inventors of the
`
`ʼ375 Patent. Thus, on the record before us, we are not persuaded Petitioner
`
`has established Pinnow is reasonably pertinent to the ’375 patent.
`
`Accordingly, we are not persuaded Petitioner has demonstrated that
`
`Pinnow may properly be considered as analogous art to the ’375 patent.
`
`Thus, we are not persuaded that Petitioner has made a sufficient showing
`
`that the challenged claims would have been obvious over Pinnow and Baretz
`
`or Pinnow, Baretz, Nakamura, and Schuil.
`
`C. Sufficiency of Prior Art Disclosures
`
`As noted above, we are not persuaded that Petitioner has established
`
`that Pinnow may be considered as proper prior art to the ’375 patent. In
`
`addition, we are persuaded that Petitioner has failed to establish that Baretz
`
`and Pinnow teach all of the limitations of the challenged claims.
`
`Independent claim 1 recites, in relevant part, “preparing a phosphor capable
`
`of absorbing a part of the blue color light emitted from said light emitting
`
`component.” Ex. 1001, 30:63–65 (emphasis added). As noted by Petitioner,
`
`Baretz discloses that the “[t]he monochromatic blue [] radiation output of the
`
`LED is absorbed and then down converted by the fluorphore or phosphor to
`
`yield longer wavelengths to include a broad spectrum of frequencies which
`
`appear as white light.” Pet. 36 (citing Ex. 1004, 7:19–27). According to
`
`Petitioner, this shows that Baretz “discloses preparing a phosphor capable of
`
`absorbing a part of the blue color light emitted.” Id. Petitioner, however,
`
`does not explain why it believes this reference to disclose absorbing only “a
`
`17
`
`
`
`IPR2017-00551
`Patent 7,915,375 B2
`
`part” of the blue light. On behalf of Petitioner, Dr. Prucnal concludes,
`
`without explanation, that this limitation is taught by Baretz. Ex. 1002 ¶ 120.
`
`Dr. Prucnal does not explain his view of the import of impact of the phrase
`
`“a part” and Petitioner provides no argument as to why it believe this
`
`particular phrase is taught by the cited art. As such, we are not persuaded
`
`that Petitioner has put forth sufficient evidence to meet the threshold of 35
`
`U.S.C. § 314(a) and thus, we deny Petitioner’s request to institute review of
`
`independent claim 1 and dependent claim 4 over the teachings of Baretz and
`
`Pinnow.
`
`D. Analysis of Asserted Ground of Obviousness over Baretz, Pinnow,
`Nakamura, and Schuil
`
`Petitioner contends claims 1 and 4 would have been obvious over
`
`Baretz, Pinnow, Nakamura, and Schuil. Pet. 71–82. For reasons described
`
`above, these challenges also fail because Petitioner has not established that
`
`Pinnow is analogous art. Here, Petitioner asserts that “preparing a phosphor
`
`capable of absorbing a part of the blue color light emitted from said light
`
`emitting component” is taught by the Baretz as discussed above; Petitioner
`
`also relies upon a disclosure from Schuil to teach a manufacturing method.
`
`See Pet. 75–76. Petitioner, however, provides no argument or evidence to
`
`show that the above discussed deficiencies are corrected through the
`
`additional teachings of Schuil. Thus, for the reasons discussed above, we
`
`are not persuaded that Petitioner has met the threshold requirements of the
`
`35 U.S.C. § 314(a). Therefore, we deny Petitioner’s request to institute an
`
`inter partes review of claims 1 and 4 over the teachings of Baretz, Pinnow,
`
`Nakamura, and Schuil.
`
`18
`
`
`
`IPR2017-00551
`Patent 7,915,375 B2
`
`
`VI. CONCLUSION
`
`For the foregoing reasons, we determine Petitioner has not
`
`demonstrated there is a reasonable likelihood it would prevail in establishing
`
`the unpatentability of claims 1 and 4 of the ʼ375 patent.
`
`VII. ORDER
`
`For the reasons given, it is
`
`
`
`ORDERED that this Petition is denied and no inter partes review
`
`shall be instituted.
`
`
`
`PETITIONER:
`
`David Tennant
`dtennant@whitecase.com
`
`Nathan Zhang
`Nathan.zhang@whitecase.com
`
`
`PATENT OWNER:
`
`Catherine Nyarady
`cnyarady@paulweiss.com
`
`David Cole
`dcole@paulweiss.com
`
`
`19
`
`
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