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.
`_______________
`
`Case IPR2017-00551
`Patent 7,915,631 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
`
`
`
`
`
`TCL 1041, Page 1
`
`
`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.
`_______________
`
`Case IPR2017-00551
`Patent 7,915,631 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
`
`
`
`
`
`TCL 1041, Page 1
`
`
`
`IPR2017-00551
`Patent 7,915,631 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`Vizio, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) seeking to
`
`institute an inter partes review of claims 1–4, 7, 8, 10, and 11 of U.S. Patent
`
`No. 7,915,631 B2 (Ex. 1001, “the ’631 patent”) pursuant to 35 U.S.C.
`
`§§ 311–319. Nichia Corporation (“Patent Owner”) filed a Preliminary
`
`Response. (Paper 8, “Prelim. Resp.”). We have jurisdiction under
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`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`Petitioner contends the challenged claims are unpatentable under
`
`35 U.S.C. § 103 on the following specific grounds (Pet. 15–57):
`
`References
`Baretz1
`Baretz and Matoba2
`Baretz and Pinnow3
`Baretz, Matoba, and Pinnow
`
`Claims Challenged
`1, 2, 10, and 11
`1, 2, 10, and 11
`3, 4, 7, and 8
`3, 4, 7, and 8
`
`For reasons discussed below, we deny Petitioner’s request to institute
`
`inter partes review of claims 1–4, 7, 8, 10, and 11 of the ʼ631.
`
`
`1 U.S. Patent No. 6,600,175 (Ex. 1004, “Baretz”).
`
`2 JP Patent Pub. No. H7-99345 with certified translation (Ex. 1005,
`“Matoba”).
`
`3 U.S. Patent No. 3,699,478 (Ex. 1006, “Pinnow”).
`
`2
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`TCL 1041, Page 2
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`IPR2017-00551
`Patent 7,915,631 B2
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`
`B. Related Proceedings
`
`We have been informed that Nichia Corp. v. VIZIO, Inc., C.A. No.
`
`C.A. No. 8:16-cv-545 (C.D. Cal.), may be impacted by this proceeding.
`
`Pet. 5. In addition, Petitioner has filed petitions seeking inter partes review
`
`of several related patents, 7,901,959 (IPR2017-00552), 7,855,092 (IPR2017-
`
`00556), and 8,309,375 (IPR2017-00558). See id.
`
`A. The ʼ631 patent
`
`The ’631 patent describes a light emitting diode (“LED”) containing
`
`phosphor. Ex. 1001, 1:28–31. LEDs “emit[] light of clear color with high
`
`efficiency” and are free from such trouble as burn-out and are durable
`
`enough to endure repetitive ON/OFF operations. Id. at 1:33–37. As
`
`described in the specification, prior attempts to emit white light from LEDs
`
`had unsatisfactory results due to “variations in the tone, luminance and other
`
`factors of the light emitting component” and in addition, it was sometimes
`
`necessary to use complex circuitry to compensate for variations between
`
`materials used to create the LEDs. Id. at 1:55–61. The ’631 patent purports
`
`“to solve the problems described above and provide a light emitting device
`
`which experiences only extremely low degrees of deterioration in emission
`
`light intensity, light emission efficiency and color shift over a long time of
`
`use with high luminance.” Id. at 3:1–7. Figure 1 of the ’631 patent is
`
`reproduced below.
`
`3
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`TCL 1041, Page 3
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`IPR2017-00551
`Patent 7,915,631 B2
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`
`
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`Figure 1 is a schematic sectional view of a lead type LED. Id. at 4:53–55.
`
`LED 100 has light emitting component 102, which is installed in cup 105a.
`
`Id. at 8:34–35. Coating resin 101 fills cup 105a and the resin contains a
`
`specified phosphor to cover light emitting component 102. Id. at 8:35–37.
`
`Light emitting component 102, which is also known as an LED chip,
`
`“excites the phosphor contained in the coating resin 101 to generate
`
`fluorescent light having a wavelength different from that of LED light, so
`
`that the fluorescent light emitted by the phosphor and LED light which is
`
`output without contributing to the excitation of the phosphor are mixed and
`
`output.” Id. at 8:45–50. Thus, LED 100 emits light having a different
`
`wavelength than the light emitted by the LED chip. Id. at 8:50–53.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–4, 7, 8, 10 and 11 of the ʼ631 patent, of
`
`which claim 1 is independent. Claim 1 is illustrative of the challenged
`
`claims and is reproduced below:
`
`4
`
`TCL 1041, Page 4
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`
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`IPR2017-00551
`Patent 7,915,631 B2
`
`
`1. A light emitting diode comprising:
`
`an LED chip having an electrode;
`
`a transparent material covering said LED chip, and a phosphor
`contained in said transparent material and absorbing a
`part of light emitted by said LED chip and emitting light
`of wavelength different from that of the absorbed light;
`
`wherein the main emission peak of said LED chip is within the
`range from 400 nm to 530 nm,
`
`a concentration of said phosphor in the vicinity of said LED
`chip is larger than a concentration of said phosphor in the
`vicinity of the surface of said transparent material, and
`
`said phosphor diffuses the light from said LED chip and
`suppresses a formation of an emission pattern by a partial
`blocking of the light by said electrode.
`
`Ex. 1001, 30:59–31:6.
`
`D. Identification of Real Parties-in-interest
`
`Petitioner declares that it is the real party-in-interest (“RPI”) pursuant
`
`to 37 C.F.R. § 42.8(b)(1). Pet. 5. That rule requires the Petition to
`
`“[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.
`
`(together, ‘TCL’), may also be real parties-in-interest.” Prelim. Resp. 7.
`
`Patent Owner contends that Petitioner conspicuously failed to list as a
`
`related matter Patent Owner’s suit against TCL in Delaware (Nichia Corp. v.
`
`TCL Multimedia Tech. Holdings Ltd., Case 1:16-cv-00681 fled Aug. 8,
`
`2016) (Ex. 2008), also alleging infringement of the ’631 patent. Id. TCL
`
`engaged as its litigation counsel the same law firm that Petitioner engaged in
`
`5
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`TCL 1041, Page 5
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`IPR2017-00551
`Patent 7,915,631 B2
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`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. at 8. In the Delaware case, TCL responded to 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. (citing Ex. 2011, Response
`
`Request 50).
`
`In this proceeding Petitioner is represented 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
`
`all real parties in interest. Id. at 9 (citing Amazon.com, Inc. v. Appistry, Inc.,
`
`Case IPR2015-00480, slip op. at 6 (PTAB July 13, 2015)). On this record,
`
`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. A non-party is not
`
`necessarily a real party-in-interest by virtue of its status as a co-defendant or
`
`co-member of a joint defense group with a petitioner. See Trial Practice
`
`Guide at 48,760; see also, Petroleum Geo-Servs. Inc. v. WesternGeco LLC,
`
`Case IPR2014-00687, slip op. at 16 (PTAB Dec. 15, 2014) (Paper 33)
`
`(holding petitioner and non-party’s shared interest in invalidating patent at
`
`issue, “collaborat[ion] together, and invo[cation of the] common interest
`
`6
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`TCL 1041, Page 6
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`
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`IPR2017-00551
`Patent 7,915,631 B2
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`privilege with respect to sharing potentially invalidating prior art references”
`
`was insufficient to render non-party a real party in interest).
`
`There is no bright line test for determining the necessary quantity or
`
`degree of participation to qualify as a real party in interest, although whether
`
`the unnamed party could have exercised control over a party’s participation
`
`is a common 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 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 response to Patent Owner’s discovery request is in the form
`
`of an objection and states that subject to its objections, TCL will produce
`
`relevant, non-privileged documents responsive to this request that are in
`
`TCL’s possession, custody, and control that are located after a reasonably
`
`diligent search. Ex. 2011, Request Response 50. Patent Owner does not
`
`state whether any such documents have been received, whether TCL has
`
`refused to produce any such documents, or whether there are any other
`
`indications that TCL exercised control over the filing or content of the
`
`Petition. We are not persuaded that the circumstances raise sufficient doubt
`
`about whether Petitioner has satisfied its obligation to name all real parties
`
`in interest.).
`
`E. Patent Owner’s Arguments under 35 U.S.C. § 325(d)
`
`Patent Owner argues the Board should deny institution of inter partes
`
`review because the same or substantially the same prior art or arguments
`
`previously were presented during prosecution of the ʼ631 Patent. Prelim
`
`7
`
`TCL 1041, Page 7
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`
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`IPR2017-00551
`Patent 7,915,631 B2
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`Resp. 11–13. Patent Owner points out that Baretz, Pinnow, and Matoba
`
`were all cited in Information Disclosure Statements before the Examiner.
`
`Prelim. Resp. 12–13.
`
`We note that 35 U.S.C. § 325(d) includes permissive language
`
`regarding the Board’s discretion with respect to institution of inter partes
`
`review and does not require the Board to decline institution. 35 U.S.C.
`
`§ 325(d) (“the Director may take into account whether, and reject the
`
`petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office”) (emphasis added).
`
`Although Baretz, Pinnow, and Matoba were listed on Information Disclosure
`
`Statements submitted to the Examiner and Matoba was cited in the
`
`“Background of the Invention,” there is no evidence that the references were
`
`applied against the claims of the ʼ631 patent. We also have no evidence that
`
`the Examiner considered, in the context of the claims of the ’631 patent, the
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`particular disclosures cited by Petitioner in the Petition or addressed
`
`arguments similar to those Petitioner now presents before the Board.
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`Having considered Patent Owner’s arguments and the particular facts
`
`and circumstances of the instant proceeding, we are not persuaded that it is
`
`appropriate to exercise our discretion to deny the Petition under 35 U.S.C.
`
`§ 325(d).
`
`II. CLAIM CONSTRUCTION
`
`As stated in our Order entered on April 6, 2017, recognizing that the
`
`’631 Patent is likely to expire during this inter partes review, we apply a
`
`district court-type claim construction in this proceeding. Paper 7, 2–3.
`
`Petitioner asserts constructions for the terms “electrode” and “main emission
`
`peak.” Pet. 14. Patent Owner “reserves further discussion about claim
`
`8
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`TCL 1041, Page 8
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`
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`IPR2017-00551
`Patent 7,915,631 B2
`
`construction as may be appropriate for its patent owner’s response under 37
`
`C.F.R. § 42.120, if a trial is instituted.” Prelim. Resp. 19. We decline to
`
`provide an express construction for any terms in the ’631 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 the extent
`
`necessary to resolve the controversy’”).
`
`III. ANALYSIS
`
`Petitioner asserts four grounds of unpatentability. Pet. 6. The first
`
`and second asserted grounds allege that claims 1, 2, 10, and 11 would have
`
`been obvious over Baretz or Baretz and Matoba. Id. The third and fourth
`
`grounds allege that claims 3, 4, 7, and 8 would have been obvious over
`
`Baretz and Pinnow or Baretz, Matoba, and Pinnow. Id. Patent Owner
`
`asserts that Petitioner fails to provide proper analysis to support these
`
`grounds. Prelim. Resp. 14. According to Patent Owner, “Petitioner
`
`proceeds to combine bits of its favored references, but fails to provide any
`
`substantive analysis of, for example, the scope and content of the prior art
`
`and the level of ordinary skill in the pertinent art.” Id. We find Patent
`
`Owner’s argument to be persuasive.
`
`The Petition provides a short description of the asserted references
`
`(Pet. 15–22), argument for combining Baretz and Matoba (id. at 22–24),
`
`argument for combining Baretz and Pinnow (id. at 24–28), and then a single
`
`combined claim chart for grounds 1–4 (id. at 28–57). The claim chart is
`
`composed of short conclusions stating that the art discloses a particular
`
`limitation and then a series of quotes from the cited art without a narrative
`
`discussion of the art as applied to the claim limitations. For example,
`
`9
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`TCL 1041, Page 9
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`
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`IPR2017-00551
`Patent 7,915,631 B2
`
`Petitioner lists limitation “1C” on the claim chart. Id. at 35. This portion of
`
`claim 1 recites “a phosphor contained in said transparent material and
`
`absorbing a part of light emitted by said LED chip and emitting light of
`
`wavelength different from that of the absorbed light.” The claim chart
`
`contains the following statement:
`
`Baretz discloses that said light emitting diode comprises a
`phosphor (e.g., “fluorescer(s) and/or phosphor(s)”) contained in
`said transparent material (see [1.B]) and absorbing a part of
`light emitted by said LED chip (e.g., “output of the LED is
`absorbed”) and emitting light of wavelength different from that
`of the absorbed light (e.g., “emit second, relatively longer
`wavelength”).
`
`Id. Then the chart reproduces a dozen quotes from Baretz and Figure 1 of
`
`Baretz (with an annotation pointing to phosphor). Id. at 35–37. This portion
`
`of the claim chart concludes with a “see also” citation listing two other
`
`figures and five other citations to Baretz. Id. at 37. There is, however, no
`
`explanation of how Petitioner interprets these quotes or why Petitioner
`
`believes that these quotes teach or suggest the limitation. Petitioner leaves
`
`us to weave together these quotes in a manner that would have rendered the
`
`claim obvious. That, however, is not our role.
`
`Rule 42.22(a)(2) requires the Petition to contain “a detailed
`
`explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2).
`
`Such explanation is lacking in this Petition. For example, the Petition does
`
`not explain why Petitioner believes that the recited “absorbing a part of light
`
`emitted by said LED chip” is disclosed Baretz. We instead must glean from
`
`the quotes that Petitioner believes this limitation to be taught or suggested by
`
`Baretz statement that the “output of the LED is absorbed.” See Pet. 35. We,
`
`however, do not have argument or explanation from Petitioner as to why this
`
`10
`
`TCL 1041, Page 10
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`
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`IPR2017-00551
`Patent 7,915,631 B2
`
`or any other statement found in Baretz would have taught one of ordinary
`
`skill in the art the recited absorption of “part” of the light emitted.
`
`Petitioner’s declarant Dr. Paul Prucnal similarly states that Baretz discloses
`
`this limitation and then reproduces several quotes from the reference without
`
`further discussion, application, explanation, or analysis. Ex. 1003 ¶ 116
`
`(“Baretz discloses . . . absorbing a part of light emitted by said LED chip
`
`(e.g., ‘output of the LED is absorbed’)”). Recitation of quotes without
`
`explanation or analysis is not sufficient to meet Petitioner’s burden.
`
`The claim chart also contains several passages placed throughout,
`
`wherein the Petitioner recites a number of other references that it believes
`
`would provide a person of ordinary skill in the art with reason to believe the
`
`recited limitation to be obvious. For example, as to limitation “1A” (“an
`
`LED chip having an electrode”), Petitioner asserts that “[t]o the extent it is
`
`argued further disclosure is required, it would have been obvious based on
`
`the knowledge of a POSITA to use an electrode on the LED chip’s emitting
`
`surface in implementing Baretz’s LED.” Pet. 32 (citing Ex. 1003 ¶ 101).
`
`Petitioner then cites four other references (Exs. 1007, 1010, 1011, 1012)
`
`without explaining why those references are pertinent to the asserted
`
`grounds. Id. As the Supreme Court has noted, however, “a patent composed
`
`of several elements is not proved obvious merely by demonstrating that each
`
`element was, independently known in the prior art.” KSR Int’l v. Telefex
`
`Inc., 550 U.S. 398, 418 (2007). Thus, a listing of citations is not sufficient
`
`to prove obviousness without an explanation of the import and impact of the
`
`teaching.
`
`In addition, Petitioner’s omnibus claim chart does not provide
`
`sufficient information to allow us to understand each of their asserted
`
`11
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`TCL 1041, Page 11
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`IPR2017-00551
`Patent 7,915,631 B2
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`grounds. For example, Petitioner alleges that claims 1, 2, 10, and 11 would
`
`have been obvious over Baretz. Petitioner does not explain explicitly what
`
`disclosures it believes to be missing from Baretz. The Petition instead lists a
`
`series of quotes from Baretz and then a series of quotes from Matoba (see
`
`e.g., Pet. 38–42 (claim chart for element “1E”)) followed by a paragraph
`
`stating that
`
`As shown in Figure 1 of Baretz, a concentration of the
`phosphor in the vicinity of the LED chip (concentration of the
`phosphor in down-converting material 20 is larger than 0, e.g.,
`EX1004, 9:4-9) is larger than a concentration of the phosphor in
`the vicinity of the surface of the transparent material
`(concentration of the phosphor in the vicinity of the surface of
`enclosure 11 is zero, EX1004, 8:60-66). EX1004, Fig. 1;
`EX1003¶127; see also EX1008, 435, 688.
`
`Id. at 42. This statement then is followed by paragraph asserting that to the
`
`extent further disclosure is required one of ordinary skill in the art would
`
`have looked to Matoba. Id. Missing from this discussion, however, is the
`
`argument required for the assertion of obviousness over Baretz alone.
`
`Petitioner does not explain what it believes to be missing from Baretz and
`
`why one of ordinary skill would have found it obvious to modify Baretz to
`
`achieve the recited limitation.
`
`Thus, for all of the foregoing reasons, we are not persuaded that
`
`Petitioner has met its burden to establish a reasonable likelihood that it
`
`would prevail in showing claims 1–4, 7, 8, 10, and 11 of the ’631 patent
`
`would have been obvious over the cited references.
`
`12
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`TCL 1041, Page 12
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`IPR2017-00551
`Patent 7,915,631 B2
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`
`IV. 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 1–4, 7, 8, 10, and 11 of the ʼ631 patent.
`
`For the reasons given, it is
`
`V. ORDER
`
`
`
`ORDERED that this Petition is denied and no inter partes review
`
`shall be instituted.
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`13
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`TCL 1041, Page 13
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`IPR2017-00551
`Patent 7,915,631 B2
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`
`PETITIONER:
`
`Gabrielle E. Higgins
`Gabrielle.higgins@ropesgray.com
`
`Jordan M. Rossen
`Jordan.rossen@ropesgray.com
`
`
`PATENT OWNER:
`
`Catherine Nyarady
`cnyarady@paulweiss.com
`
`David Cole
`dcole@paulweiss.com
`
`
`14
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`TCL 1041, Page 14
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