Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No.9
`Entered: 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 IPR2017-00552
`Patent 7,901,959 B2
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
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`
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`TCL 1042, Page 1
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`
`Tel: 571-272-7822
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`Paper No.9
`Entered: 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 IPR2017-00552
`Patent 7,901,959 B2
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
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`TCL 1042, Page 1
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`IPR2017-00552
`Patent 7,901,959 B2
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`INTRODUCTION
`
`A. Background
`Vizio, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`an inter partes review of claims 1, 3–5, 7–9, 11–13, and 15–20 (the
`“challenged claims”) of U.S. Patent No. 7,901,959 (Exhibit 1001, the
`“’959 Patent”). Nichia Corporation (“Patent Owner”) timely filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). We have authority under
`37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes
`review may not be instituted unless the information presented in the Petition
`“shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Having
`considered the arguments and the associated evidence presented in the
`Petition and the Preliminary Response, for the reasons described below, we
`deny Petitioner’s request to institute inter partes review of claims 1, 3–5, 7–
`9, 11–13, and 15–20.
`
`B. Related Proceedings
`Petitioner states the ʼ959 Patent is asserted in Nichia Corp. v. VIZIO,
`Inc., C.A. No. 8:16-cv-545 (C.D. Cal.) (“District Court Case”). Petitioner
`also states that U.S. Patent Nos. 5,998,925 and 7,531,960, which are in the
`same family as the ʼ959 Patent, are asserted in Nichia Corp. v. Everlight
`Americas, Inc., Case No 12-11758 (E.D. Mich.). Pet. 5. In addition,
`Petitioner has filed, concurrent with the present Petition, petitions for inter
`partes review of U.S. Patent Nos. 7,915,631 (IPR2017-00551); 7,855,092
`(IPR2017-00556); and 8,309,375 (IPR2017-00558); which are in the same
`family as the ʼ959 Patent.
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`C. The ʼ959 Patent
`The ʼ959 Patent generally relates to light emitting diodes used in
`devices such as LED displays, back light sources, traffic signals,
`illuminating switches and indicators. More particularly, the ʼ959 Patent
`relates to light emitting diodes containing a light emitting component and a
`phosphor, where the phosphor absorbs part of the light emitted from the light
`emitting component at one wavelength and emits light at a different
`wavelength for the purpose of making a light source for white light. See
`Ex. 1001 Abstract; 1:25–32.
`The ʼ959 Patent explains that light emitting diodes previously have
`been used to emit white light by arranging red, blue, and green light emitting
`components closely together and mixing the light emitted by them. Id. at
`1:48–54. This arrangement has several drawbacks stemming from variations
`in tone, luminance, power requirements, and other factors of the various
`light emitting components. Id. at 1:54–62. To address the problems caused
`by variations in different components, some light emitting diodes use only
`one kind of light emitting component that emits light of one color (such as
`blue light), and a fluorescent material that absorbs some of this light and
`emits light of a different color (such as yellow). When the light emitted by
`the light emitting component is mixed with the light emitted by the
`fluorescent material, the result is white light. Id. at 2:23–29.
`The ʼ959 Patent further explains that exposure to high intensity light
`and high temperatures can deteriorate the fluorescent material, leading to
`color tone deviation, darkening of the fluorescent material, and increasing
`absorption of light. Id. at 2:30–59. Additionally, exposure to moisture from
`the outside or during the production process can accelerate the deterioration
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`of the fluorescent material. Id. at 2:60–64. Further, the ʼ959 Patent explains
`that a fluorescent material that absorbs light of a short wavelength and emits
`light of a long wavelength has higher efficiency than a fluorescent material
`that absorbs light of a long wavelength and emits light of a short
`wavelength. Thus, a light emitting component that emits light in the
`wavelength range of 400 to 530 nm and a phosphor with a main emission
`wavelength that is longer than the main emission peak of the light emitting
`component is preferable. Id. at 4:51–56; 6:27–41.
`To accomplish the goals and address the concerns described above,
`embodiments of the ʼ959 Patent use a light emitting component that can emit
`light with high luminance at the appropriate wavelength range, and a
`fluorescent material with excellent resistance to high intensity light that can
`absorb part of the light emitted by the light emitting component and emit
`light at a longer wavelength. One embodiment of the light emitting diode of
`theʼ959 Patent is illustrated in Figure 1, reproduced below with annotations
`indicating the elements corresponding to some of the features discussed
`herein.
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`
`Figure 1, with annotations showing a lead type light emitting diode
`according to one embodiment of the ʼ959 Patent.
`
`
`The embodiment depicted in Figure 1 employs an LED chip mounted
`in a cup of the light emitting diode. Id. at 5:40–42. The LED chip
`comprises a nitride compound semiconductor capable of emitting blue light
`of short wavelength. Id. at 5:49–50; 9:31–37. The cup is filled with a
`transparent coating material which is then covered by a molding material.
`Id. at 5:43–46. The coating material and molding material may be different
`materials, or they may be made of the same material. Id. at 17:4–11. The
`fluorescent material may be contained in the coating material or molding
`material or both. Id. at 15:15–20; 16:64–17:4. To provide resistance to high
`light intensity and heat this fluorescent material comprises a garnet phosphor
`activated with cerium with at least one element selected from a group
`
`5
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`consisting of Y, Lu, Sc, La, Gd, and Sm and at least one other element
`selected from a group consisting of Al, Ga, and In. Id. at 3:38–44; 10:8–25.
`Further, to address concerns about exposure to moisture, the concentration
`of the phosphor can be varied so that the concentration increases from the
`surface of the coating or molding material toward the light emitting
`component. Id. at 10:45–51. Such a distribution of phosphor concentration
`can be achieved by selecting or controlling the material which contains the
`phosphor. Id. at 10:57–60.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 9 are independent claims.
`Claims 3–5, 7, and 8 depend from claim 1, and claims 11–13 and 15–20
`depend from claim 9.
`Claim 1, reproduced below, is illustrative:
`1.
`A liquid crystal display comprising:
`a back light having a light emitting diode;
`a liquid crystal injected between glass substrates; and
`a color filter,
`wherein said light emitting diode comprising:
`an LED chip,
`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 said LED chip emits light having a
`spectrum with a peak in the range from 420 to 490 nm,
`said phosphor emits light having a spectrum with a peak
`in the range from 530 to 570 nm and a tail continuing
`beyond 700 nm, and said spectrum of the light emitted
`from said phosphor and said spectrum of the light emitted
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`from said LED chip overlap with each other to make a
`continuous combined spectrum,
`wherein 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.
`E. Prior Art Relied Upon
`Petitioner relies upon the following references:
`
`Designation
`Baretz
`Matoba
`Pinnow
`O’Mara
`
`Reference
`U.S. Patent No. 6,600,175
`JP Patent Pub. No. H7-99345
`U.S. Patent No. 3,699,478
`W. O’Mara, Liquid Crystal Flat
`Panel Displays: Manufacturing
`Science & Technology, Van
`Nostrand Reinhold
`
`Ex. No.
`Date
`July 29, 2003 Ex. 1004
`Apr. 11, 1995 Ex. 1005
`Oct. 17, 1972 Ex. 1006
`Feb. 7, 1994
`Ex. 1009
`
`F. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 3–5, 7–9, 11–13, and 15–20 of the
`ʼ959 Patent on the following grounds:
`
`Challenged Claims
`Ground Basis
`1
`§ 103 1, 3–5, 7, 8, 17, 18
`2
`§ 103 1, 3–5, 7, 8, 17, 18
`
`References
`Baretz, O’Mara, and Pinnow
`Baretz, O’Mara, Pinnow,
`and Matoba
`§ 103 9, 11–13, 15, 16, 19, 20 Baretz and Pinnow
`§ 103 9, 11–13, 15, 16, 19, 20 Baretz, Pinnow, and Matoba
`
`3
`4
`
`G. Claim Interpretation
`As stated in our Order entered on April 6, 2017, recognizing that the
`’959 Patent is likely to expire during this inter partes review, we apply a
`district court-type claim construction in this proceeding. Paper 7. Neither
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`Petitioner nor Patent Owner proposes explicit constructions for any claim
`term.
`Petitioner states that for purposes of this review, all terms should be
`interpreted “according to their plain and ordinary meaning consistent with
`the ʼ959 specification.” Pet. 13. Patent Owner states, however, that
`“Petitioner relies on an implicit construction of ‘transparent material’ that is
`unreasonable and plainly wrong.” Prelim. Resp. 21. According to Patent
`Owner, “Petitioner implicitly construes ‘transparent material’ to mean any or
`all of the transparent materials that may be included in a device, completely
`ignoring the fact that the ‘transparent material’ of the claims is the material
`that contains the phosphor.” Prelim. Resp. 23. Patent Owner argues that
`“[a] proper construction . . . would at least recognize that ‘a transparent
`material,’ as required by claim 1, is a unitary material that is transparent (e.g.
`a resin), which, as further required by the claim, contains the phosphor.”
`Prelim. Resp. 23.
`Thus, even though neither party explicitly proposes constructions for
`any claim terms, there is an apparent dispute regarding the scope of at least
`the term “transparent material.” For the reasons stated below, we decline to
`address the claim construction dispute between the parties as it is not
`necessary to our decision with respect to this Petition. 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’”)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
`
`8
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`ANALYSIS
`A. Real Parties in Interest
`Petitioner identifies only itself as the Real Party in Interest under
`37 C.F.R § 42.8(b)(1). Patent Owner argues “[t]he 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 sued TCL in Delaware
`and, according to Patent Owner, TCL engaged as its litigation counsel the
`same law firm and lead trial counsel as the Petitioner has in its District Court
`Case. As further evidence, Patent Owner provides a discovery response
`from TCL stating that communications between TCL and third parties
`concerning the preparation and/or filing of this Petition were covered by “the
`joint defense privilege and common interest doctrine,” which, according to
`Patent Owner, indicates TCL’s counsel was communicating with third
`parties “likely including Petitioner’s counsel, concerning the preparation and
`filing of the Petition . . . .” Prelim. Resp. 8–9.
`A petition for inter partes review may be considered only if, among
`other requirements, “the petition identifies all real parties in interest.”
`35 U.S.C. § 312(a)(2). The Trial Practice Guide provides guidance
`regarding the factors we consider in determining whether a party is a real
`party-in-interest. For example, “[a] common consideration is whether the
`non-party exercised or could have exercised control over a party’s
`participation in a proceeding.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). Other
`considerations may include whether the non-party is funding or directing the
`proceeding. Id. at 48,760.
`
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`We are unpersuaded that Petitioner has failed to identify all real
`parties-in-interest in this proceeding. Although Patent Owner correctly
`notes that Petitioner has the burden to establish it has complied with the
`requirement to identify all real parties-in-interest, there is no persuasive
`evidence in this case that Petitioner has not done so. For example, the fact
`that Petitioner and TCL may be part of the same joint defense group, or that
`Petitioner and TCL have a common interest with respect to issues regarding
`validity of the ʼ959 Patent, does not demonstrate that TCL has the ability to
`control this Petition or is directing or funding the present proceeding. 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 privilege with respect to sharing potentially
`invalidating prior art references” was insufficient to render non-party a real
`party in interest). Moreover, although Petitioner and TCL may share
`common litigation counsel, Petitioner is represented by different counsel in
`this proceeding.
`We, 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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`B. Patent Owner’s Arguments Raising Issues 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 ʼ959 Patent. Prelim
`Resp. 11–15. Patent Owner points out that Baretz, Pinnow, and Matoba
`were all cited in Information Disclosure Statements before the Examiner and
`while, O’Mara itself was not before the Examiner, Patent Owner argues that
`it is substantially similar to a reference that was before the Examiner.
`Prelim. Resp. 13–14.
`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 during prosecution of the ʼ959 Patent,
`the references were not applied against the claims of the ʼ959 Patent and
`there is no evidence that the Examiner considered the particular disclosures
`cited by Petitioner in the Petition or addressed arguments similar to those
`Petitioner now presents before the Board.
`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).
`
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`C. Summary of Prior Art
`1. Overview of Baretz
`Baretz relates generally to a light emitting assembly comprising a
`solid state device, such as a semiconductor light emitting diode, and a
`luminophoric medium, such as phosphor. Ex. 1004, 7:8–18. The light
`emitting diode emits light at a relatively shorter wavelength, such as
`monochromatic blue or ultraviolet light, and the luminophoric medium
`absorbs the shorter wavelength light, down-converts it to yield longer
`wavelength light that appears as white light. Id. at 7:13–27.
`Baretz’s light emitting assembly is depicted in Figure 1, reproduced
`below with annotations.
`
`
`Figure 1 of Baretz, with added annotations identifying features discussed
`herein, depicting white light emitting diode assembly according to one
`embodiment of Baretz.
`
`
`Baretz’s light emitting assembly comprises an enclosing wall (7)
`defining a light transmissive enclosure (11) that may be formed of any
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`suitable light transmissive material, such as translucent polymer or glass. Id.
`at 8:60–64. The light transmissive enclosure houses a light emitting diode
`die (13) which emits blue or UV light. Id. at 8:64–9:4, 9:10–13. The
`enclosure (11) is filled with a down-converting medium (20) such as
`fluorescer and/or phosphor that down-converts the light emitted by the LED
`to a longer wavelength so that light output appears to be white light. Id. at
`9:4–9.
`
`2. Overview of O’Mara
`O’Mara is a textbook titled “Liquid Crystal Flat Panel Displays” that
`“describes the construction, operation, and manufacturing of flat panel
`displays . . . .” Ex. 1009, xiv. Chapter 1 describes the basic technology
`involved in flat panel displays and Chapter 2 describes the display
`manufacturing process. As part of the general background on flat panel
`displays discussed in these two chapters, O’Mara describes that a common
`arrangement is to have two parallel glass plates with the space between filled
`with liquid crystal polymer. Id. at 14. Figure 1-6 of O’Mara illustrates this
`arrangement and is reproduced below.
`
`
`Figure 1-6 illustrating two glass plates with the space between
`filled with liquid crystal polymer.
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`In providing further background on flat panel displays, O’Mara
`further describes that color filters have been used with LCD screens since
`the mid 1980s. Id. at 118. O’Mara explains that red, green, and blue (RGB)
`color filters on the outer glass plate of computer displays or televisions
`provide full color displays. Id. at 21.
`
`3. 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
`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
`longer wavelength than the laser light. Id. at 1:33–43. Figure 2 of Pinnow
`illustrates an embodiment of the laser display system and is reproduced
`below.
`
`
`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 1:44–47; 2:19–26. Pinnow further discloses that the
`cerium-activated phosphor emits light centering about 5,500 A (550 nm).
`
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`Id. at 1:47–48; 2:12–16. Figure 1 of Pinnow, below, illustrates a plot of the
`emission spectra of the laser and phosphorescent screen.
`
`
`Figure 1 of Pinnow depicting the emission spectra of the laser and of the
`phosphorescent screen.
`4. Overview of Matoba
`Matoba relates generally to an LED that absorbs and converts a
`wavelength of light emitted by a light-emitting chip. Ex. 1005 ¶ 1. The
`LED includes a light-emitting chip that is disposed of in a cup and is sealed
`by a first resin that fills the inside of the cup and a second resin that encloses
`the first resin. Id. ¶ 6. The first resin contains a fluorescent substance that
`converts the wavelength of light emitted by the light-emitting chip. Id. ¶ 9.
`The second resin may be made of the same material as the first resin, but
`may not contain any fluorescent material. Id.
`The Figure below illustrates an embodiment of Matoba’s LED with
`added annotations indicating which elements correspond to certain features
`that were discussed above.
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`Figure 1 of Matoba illustrating an embodiment of Matoba’s LED.
`
`D. Analysis of Obviousness under Grounds 1 and 3 (Baretz, O’Mara,
`and Pinnow)
`Petitioner contends claims 1, 3–5, 7–8, and 17–18 would have been
`obvious over Baretz, O’Mara, and Pinnow. Pet. 6. Petitioner additionally
`contends claims 9, 11–13, 15, 16, 19, and 20 would have been obvious over
`Baretz and Pinnow. Id. For the reasons that follow, we are not satisfied that
`the Petition provides adequate explanation or is appropriately precise and
`specific in articulating the basis of the proposed grounds to establish a
`reasonable likelihood that the references teach the limitations of the
`challenged claims.
`
`1. Whether Petitioner Has Complied with 35 U.S.C. § 312(a)(3)
`and 37 C.F.R. § 42.22(a)(2)
`Under 35 U.S.C. § 312(a)(3), a petition for inter partes review “may
`be considered only if . . . the petition identifies, in writing and with
`particularity, each claim challenged, the grounds on which the challenge to
`each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim.” Similarly, 37 C.F.R. § 42.22(a)(2) states that a
`petition “must include . . . [a] full statement of the reasons for the relief
`requested, including a detailed explanation of the significance of the
`evidence.” 37 C.F.R. § 42.22(a)(2) (emphases added).
`Petitioner’s claim chart for claim 1 spans twenty-two pages and
`consists of block quotes from the prior art references purporting to show
`where claim 1’s limitations are taught by the prior art references. These
`quotes largely are unaccompanied by requisite explanation of how the cited
`portions teach or disclose the claim limitations or of their significance to the
`analysis. Moreover, Dr. Paul Prucnal’s declaration largely consists of
`statements that a particular prior art reference discloses a particular
`limitation followed by a string citation of the same quotes that appear in
`Petitioner’s claim charts for that limitation. See e.g., Ex. 1003 ¶¶ 119–126.
`For most limitations, Dr. Prucnal does not provide further explanation not
`already contained in the claim charts.
`
`a. Phosphor Absorbing a Part of Light Emitted by the LED
`For example, 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.” Claim 9
`recites the same limitation. Petitioner’s claim chart for this limitation
`consists of twelve block quotes from Baretz and a citation of Figure 1 of
`Baretz. These quotes describe that a luminophoric medium such as a
`fluorescers or phosphors absorb monochromatic blue or UV radiation output
`from an LED and then down convert the blue or UV radiation to a broad
`spectrum of frequencies which appear white. See Pet. 44–45 (citing e.g.
`Ex. 1004, Abstract, 7:19–27, 9:4–9). None of these quotes, however, appear
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`to address whether the phosphor absorbs part of the light emitted by the
`LED, as opposed to all of it, and no explanation is provided by Petitioner
`that would help determine whether one of ordinary skill in the art would
`understand such a teaching from the cited portions of Baretz. We instead
`must glean from the quotes that Petitioner believes this limitation to be
`taught or suggested by Baretz’s statement that the “output of the LED is
`absorbed.” See Pet. 44–45. Petitioner also does not engage in any explicit
`claim construction that could demonstrate that the cited portions of Baretz
`are encompassed by the claim limitation.
`The portion of Dr. Prucnal’s declaration addressing this limitation also
`does not explain whether, and how, Baretz discloses that the down-
`converting phosphor absorbs part of the light emitted by Baretz’s LED. See
`Ex. 1003 ¶¶ 135–138. Indeed, Dr. Prucnal states only that “[t]he
`fluorescer(s) and phosphor(s) of Baretz absorb light emitted from the LED
`chip, and through down-conversion, emit light of wavelength different from
`that of the absorbed light” without addressing the “part of” language
`contained in the claim. Ex. 1003 ¶ 136 (emphasis added).
`Petitioner has not demonstrated with reasonable likelihood that Baretz
`teaches a phosphor that absorbs “part of” the light emitted by the LED as
`required by independent claims 1 and 9.
`
`b. 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
`As another example, claims 1 and 9 recite “wherein 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,”
`(“the concentration limitation”). Petitioner cites to Baretz as teaching this
`
`18
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`IPR2017-00552
`Patent 7,901,959 B2
`
`limitation. Pet. 52–54. Petitioner’s claim chart again contains only a set of
`quotes from Baretz and an annotated version of Figure 1. Id. We are not
`able to discern, however, from these quotes alone or from the annotated
`Figure 1, what region of Baretz’s LED Petitioner identifies as the vicinity of
`the surface of said transparent material and, the evidence showing that the
`concentration of phosphor in this region is less than the concentration of
`phosphor in the vicinity of Baretz’s LED chip. Instead, Petitioner states in
`conclusory manner that the “concentration of the phosphor in the vicinity of
`the surface of enclosure 11 is zero.” Pet. 56 (citing Ex. 1004, 8:60–66).
`While Baretz does state the LED “assembly comprises an enclosing wall 7
`defining a light-transmissive enclosure 11 having an interior volume
`therewithin . . . [t]he enclosure [being] filled with a suitable down-
`converting material 20” (Ex. 1004, 8:60–9:5) it does not identify portions of
`this LED assembly that either do not contain phosphor or contain phosphor
`at a lower concentration than contained in the interior volume of enclosure
`11. Petitioner does not provide any explanation of the cited portions of
`Baretz that would help identify these parts of the LED assembly, nor does
`Petitioner explicitly provide such an identification. For example, Petitioner
`does not explicitly identify the enclosing wall 7 as containing zero phosphor.
`Dr. Prucnal’s declaration similarly states that the “concentration of
`phosphor in the vicinity of the surface of enclosure 11 is zero” (Ex. 1003
`¶ 159) but, like Petitioner’s claim charts, does not explicitly identify the part
`of Baretz’s LED assembly that satisfies this limitation, nor does it explain
`how one of ordinary skill in the art would understand the cited portions of
`Baretz to teach or suggest this limitation.
`
`19
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`TCL 1042, Page 19
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`IPR2017-00552
`Patent 7,901,959 B2
`
`Petitioner has not demonstrated with reasonable likelihood that Baretz
`teaches the concentration limitation as recited in independent claims 1 and 9.
`
`2. Whether Pinnow Is Analogous to the ʼ959 Patent
`As a prerequisite to our analysis of the obviousness challenges, we
`must first determine whether the asserted art is such that it may be properly
`considered under 35 U.S.C. § 103. In re Clay, 966 F.2d 656, 658 (Fed. Cir.
`1992). Patent Owner argues Pinnow is not analogous art. According to
`Patent Owner, Pinnow is not in the same field of endeavor as the ʼ959 Patent
`because “Pinnow was focused on a projection display system, not an LED
`light source. . . . Stated another way, Pinnow does not teach a white laser,
`but only a white image. In contrast, the light source—the white LED—is the
`primary focus of the Nichia invention.” Prelim. Resp. 41–42. Similarly,
`according to Patent Owner Pinnow is not reasonably pertinent to the
`problems faced by the inventors of the ’959 patent because “Pinnow is not
`pertinent to the entire problem faced by the inventors of the ’959 patent and,
`in fact, does not address or even mention a single one of the problems they
`faced and overcame.” Prelim. Resp. 45.
`“Two separate tests define the scope of analogous prior art:
`(1) whether the art is from the same field of endeavor, regardless of the
`problem addressed and, (2) if the reference is not within the field of the
`inventor’s endeavor, whether the reference still is reasonably pertinent to the
`particular problem with which the inventor is involved.” In re Klein, 647
`F.3d 1343, 1348 (Fed. Cir. 2011). “A reference is reasonably pertinent if,
`even though it may be in a different field from that of the inventor’s
`endeavor, it is one which, because of the matter with which it deals,
`
`20
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`TCL 1042, Page 20
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`IPR2017-00552
`Patent 7,901,959 B2
`
`logically would have commended itself to an inventor’s attention in
`considering his problem.” Id.
`The ʼ959 Patent describes its field of invention as relating to “a light
`emitting diode used in LED display, back light source, traffic signal,
`trailway signal, illuminating switch, indicator, etc.” Ex. 1001, 1:26–28.
`Pinnow, on the other hand, describes its field of invention as “concerned
`with projection display systems and is primarily concerned with those
`producing black and white images.” Ex. 1006, 1:5–7. It is, therefore, not
`immediately apparent that Pinnow is in the same field of endeavor as the
`ʼ959 Patent. Petitioner, however, does not provide an analysis of why the
`ʼ959 Patent and Pinnow would be analogous under either prong of the test.
`No analysis is provided as to why Pinnow would be in the same field of
`endeavor under the first prong of the test. Nor does Petitioner provide
`sufficient analysis under the second prong of the test to explain why Pinnow
`is reasonably pertinent to the particular problem with which the inventors of
`the ʼ959 Patent were involved.
`Petitioner does argue that Pinnow concerns “converting light from
`monochromatic light sources (e.g., LEDs and lasers) to white light using
`phosphor,” but this is in the context of whether one of ordinary skill would
`have combined Baretz with Pinnow, not whether Pinnow is analogous to the
`ʼ959 Patent. Pet. 29–30. Further, “converting light from a monochromatic
`light source” does not relate to a field of invention. Additionally, Petitioner
`does not explain why, even if both the ʼ959 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 ʼ959
`
`21
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`TCL 1042, Page 21
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`IPR2017-00552
`Patent 7,901,959 B2
`
`Patent. Thus, on the record before us, we are not persuaded Petitioner has
`established Pinnow as analogous art.
`Accordingly, we are not persuaded Petitioner has demonstrated a
`reasonable likelihood that the combination of Baretz, O’Mara, and Pinnow
`teaches the limitations of claims 1, 3–5, 7–8, and 17–18. Similarly, we are
`not persuaded Petitioner has demonstrated a reasonable likelihood that the
`combination of Baretz and Pinnow teaches the limitations of claims 9, 11–
`13, 15, 16, 19, and 20.
`
`E. Analysis of Obviousness under Grounds 2 and 4 (Baretz, O’Mara,
`Pinnow and Matoba)
`Petitioner contends claims 1, 3–5, 7–8, and 17–18 would have been
`obvious over Baretz, O’Mara, Pinnow, and Matoba. Pet. 6. Petitioner
`additionally contends claims 9, 11–13, 15, 16, 19, and 20 are obvious over
`Baretz, Pinnow, and Matoba. Id. In presenting these challenges, Petitioner
`relies on the same
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