Trials@uspto.gov Paper 9
`
`571-272-7822
` Date Entered: July 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`VIZIO, INC,
`Petitioner,
`
`v.
`
`
`NICHIA CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00556
`Patent 7,855,092 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2017-00556
`Patent 7,855,092 B2
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`
`BACKGROUND
`
`Vizio, Inc. (“Petitioner”) filed a petition, Paper 2 (“Pet.”), to institute
`an inter partes review of claims 1–3, 7–9, 12, and 13 (the “challenged
`claims”) of U.S. Patent No. 7,855,092 (“the ’092 Patent”). 35 U.S.C. § 311.
`Nichia Corporation (“Patent Owner”) timely filed a Preliminary Response,
`Paper 8 (“Prelim. Resp.”), contending that the petition should be denied as to
`all challenged claims. We have jurisdiction 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 decline to
`institute inter partes review.
`PENDING LITIGATION
`The Petition states that Patent Owner has asserted Petitioner infringes
`the ’092 Patent in Case No. 8:16-cv-00545 in the Central District of
`California (“California Matter”). Pet. 2.
`REAL PARTIES-IN-INTEREST
`Petitioner identifies itself as the sole real party-in-interest. Pet. 2.
`Patent Owner contends that Petitioner conspicuously failed to list as a
`related matter Patent Owner’s suit against TCL Multimedia Technology
`Holdings Ltd. and its subsidiary, TTE Technology, Inc. (together, “TCL”) in
`Delaware (Nichia Corp. v. TCL Multimedia Tech. Holdings Ltd., Case 1:16-
`cv-00681, filed Aug. 8, 2016) (Ex. 2008), also alleging infringement of the
`’092 Patent. Prelim. Resp. 7. In that suit, TCL engaged as its litigation
`
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`counsel the law firm Petitioner engaged for the California matter and thus,
`Petitioner and TCL share the same lead trial counsel. Id. at 7–8. Noting that
`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. at 8 (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
`all real parties-in-interest. Amazon.com, Inc. v. Appistry, Inc., Case
`IPR2015-00480, slip op. at 6 (PTAB July 13, 2015) (Paper 18). The mere
`existence of a joint defense agreement between parties represented by the
`same trial counsel, however, is not enough to establish that a single
`Petitioner represented by different counsel in an inter partes review has
`failed to name all real parties-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).
`In this case, 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
`
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`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.
`THE ’092 PATENT (EXHIBIT 1001)
`The ’092 Patent discloses that light emitting diodes (LEDs) are
`effective light emitting devices for generating individual colors (e.g., red,
`green, and blue high luminance, high efficiency LEDs), but there was no
`satisfactory source capable of emitting white light using such light emitting
`components. Ex. 1001, 1:40–46; 2:3–7. The ’092 Patent states that its
`applicant had “previously developed light emitting diodes which convert the
`color of light which is emitted by light emitting components” to white and
`other colors using a fluorescent material. Id. at 2:8–16 (citing Japanese
`Patent Kokai Nos. 5-152609, 7-99345,7-176794 and 8-7614). The ’092
`Patent states that by “mixing the light of a plurality of sources,” the
`applicants had obtained white light by molding a light emitting component
`capable of emitting blue light with a resin including a fluorescent material
`that absorbs light emitted by a blue light emitting component, causing the
`resin containing the fluorescent material to emit yellowish light. Id. at 2:25–
`
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`31. The ’092 Patent, however, notes that conventional LEDs caused
`deterioration of the fluorescent material leading to color tone deviations and
`reductions in light extracting efficiency. Id. at 2:32–35.
`The ’092 Patent discloses a white light emitting device in which the
`light emitting component is a nitride compound semiconductor capable of
`emitting light of high luminance, preferably a gallium nitride semiconductor
`including indium (In) as the light emitting layer, and a phosphor that has
`high resistance against light so that its fluorescent properties change little
`even when used over a long period of time. Id. at 3:37–65. The phosphor
`preferably contains a yttrium-aluminum-garnet fluorescent material in which
`yttrium (Y) and Aluminum (Al) enable it to increase the luminance of the
`light emitting device and part of the Al is substituted by gallium (Ga) and
`part of the yttrium-aluminum-garnet fluorescent is substituted by gadolinium
`(Gd). Id. at 4:9–12; 4:61–5:6. The light generated by mixing blue light
`emitted by the light emitting component and the fluorescent light of the
`fluorescent material is a white light. Id. at 5:7–12. A fluorescent material
`that absorbs light of a short wavelength and emits light of a long wavelength
`has a higher efficiency than fluorescent material that absorbs long
`wavelengths and emits short wavelengths. Id. at 6:29–33. To improve
`efficiency and extend life, in the LED of the ’092 Patent, the main emission
`peak of the light emitting component is set to a relatively short wavelength
`between 400 nm and 520 nm in the visible light region, and the emission
`wavelength of the phosphor is set longer than the main emission peak of the
`light emitting component. Id. at 6:36–43. The ’092 Patent describes a first
`embodiment using a garnet phosphor activated with cerium to emit yellow
`light when excited by a blue light component that “can emit white light by
`
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`blending blue light emitted by the light emitting components 102, 202, and
`yellow light emitted by phosphor excited by the blue light.” Id. at 10:3–11.
`The embodiment shown in Figure 1 is a lead type light emitting diode
`in which the light emitting component is installed on a cup of a mount lead
`and the cup is filled with a coating resin that contains a specified phosphor
`to cover the light emitting component and is molded in resin. Ex. 1001, 8:
`38–44. Part of the light emitted by the light emitting component excites the
`phosphor in the resin to generate fluorescent light at a wavelength different
`from that of the light emitted by the LED component. Id. at 8:47–52. The
`part of the LED light that does not contribute to the excitation of the
`phosphor is output and mixed with the fluorescent light, causing the entire
`LED device to output a wavelength different from that of the light emitting
`component. Id. at 8:52–57.
`Figure 2 illustrates a chip type light emitting diode in which the LED
`chip is installed in a recess of a casing filled with a material containing a
`specified phosphor to form a coating, such that “fluorescent light emitted by
`the phosphor and LED light transmitted which is transmitted without being
`absorbed by the phosphor are mixed” to output light whose wavelength is
`different from that of the LED light.” Ex. 1001, 8:57–9:6.
`The ’092 Patent also discloses a second embodiment, similar to the
`first embodiment, with a light emitting component and a fluorescent material
`including two or more phosphors of different compositions activated with
`cerium, allowing a desired color tone by controlling the contents of the
`phosphors. Id. at 17:38–57, 18:6–12. The color tone of the light emitting
`diode can be adjusted between white and incandescent lamp color by mixing
`the proportion or quantity of the resin in the recess of the casing in
`
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`accordance with the wavelength of the light emitted by the gallium nitride
`emitting component. Id. at 10:45–50. Distribution of the phosphor
`concentration also influences the color blending and durability. Id. at 10:51–
`52.
`
`Patent Owner notes that the use of pulse signals to control the
`brightness of the white LED to achieve a stable white color is a focus of the
`’092 Patent. Prelim. Resp. 6. Figure 10 of the ’092 Patent, shown below,
`illustrates LED display unit 601 and drive circuit 610. Id. at 20:64–21:1.
`
`Figure 10 of the ’092 Patent
`Drive circuit 610 includes driver 602, video data storage means 603
`(image data memory (RAM)), and tone control means 604 (gradation control
`
`
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`unit (CPU)). Id. at 21:1–3. LED device 601 has white light emitting diodes
`501 arranged in a matrix configuration in a casing 504 with integrally
`formed light blocking material as shown in Figure 11 to form a
`monochromatic LED display device. Id. at 21:3–8. Video data storage
`means (RAM) 603 stores display data. Id. at 21:9–11. Tone control means
`604 retrieves data from the RAM and computes and outputs tone signals for
`controlling the brightness and the duration of the lighting of individual light
`emitting diodes of the LED display by outputting pulse signals that turn the
`light emitting diodes on and off. Id. at 21:11–21. Tone control means 602
`also provides switching signals to driver 602 that drives the LEDs. Id. at
`21:14–16. Thus, the LED display device can display images according to
`the pulse signals input from the drive circuit. Id. at 21:23–25; 25:60–26:2.
`
`ILLUSTRATIVE CLAIM
`1. A device for emitting white-color light comprising:
`(i) a light emitting diode including:
`an LED chip comprising a gallium nitride compound
`semiconductor containing indium and being capable of
`emitting a blue color light, and
`a phosphor capable of absorbing a part of the blue color light
`and emitting a light having longer wavelength than the
`blue color light,
`the blue color light and the light from said phosphor being
`mixed to make the white-color,
`(ii) a control unit for converting an input to pulse signals,
`(iii) a driver receiving said pulse signals from said control unit
`to drive said LED chip,
`wherein the brightness of the white-color light from said light
`emitting diode is controlled by a width of said pulse signals.
`
`
`
`
`
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`
`ART CITED IN PETITIONER’S CHALLENGES
`
`Designation
`
`Exhibit No.
`
`Petitioner cites the following references in its challenges to
`patentability:
`Reference
`U.S. Patent No.
`6,600,175 issued
`July 29, 2003
`U.S. Patent No.
`5,796,376 issued
`August 18, 1998
`U.S. Patent No.
`3,699,478 issued
`October 17, 1972
`U.S. Patent No.
`3,816,576 issued
`June 11, 1974
`U.S. Patent No.
`3,774,021 issued
`November 20, 1973
`U.S. Patent No.
`5,001,609 issued
`March 19, 1991
`Japanese Patent No.
`H7-99345 published
`April 11, 1995
`
`Baretz
`
`Banks
`
`Pinnow
`
`Auzel
`
`Johnson
`
`Gardner
`
`Matoba
`
`1004
`
`1005
`
`1009
`
`1006
`
`1007
`
`1008
`
`1010
`
`
`CHALLENGES ASSERTED IN PETITION
`Statutory Basis
`Challenge
`Obvious over Baretz in
`35 U.S.C. § 103(a)
`view of Banks
`Obvious over Baretz in
`view of Banks and further
`in view of Pinnow
`
`35 U.S.C. § 103(a)
`
`Claims
`1–3, 8, and 13
`
`12
`
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`
`7
`
`7
`
`8
`
`9
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Obvious over Baretz in
`view of Banks and further
`in view of Auzel
`Obvious over Baretz in
`view of Banks and further
`in view of Johnson
`Obvious over Baretz in
`view of Banks and further
`in view of Gardner
`Obvious over Baretz in
`view of Banks and further
`in view of Matoba
`
`
`CLAIM CONSTRUCTION
`As stated in our Order entered on April 6, 2017, recognizing that the
`’092 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.
`Neither Petitioner nor Patent Owner proposes a construction for any claim
`term. Nevertheless, Patent Owner argues that Petitioner implicitly construes
`as a “key term applied in its invalidity arguments” the expression “the blue
`color light and the light from said phosphor being mixed to make the white
`color” to equate with a “partial conversion” in which “some but not all” light
`from the LED chip is absorbed and down converted by the phosphor, as
`contrasted to “full conversion” where “all” of the light from the LED is
`absorbed and down-converted by the phosphor. Prelim. Resp. 18.
`According to Patent Owner, Petitioner treats this term as if it meant “any
`amount of blue light emitted by the LED chip is emitted by the device,
`without being absorbed by said phosphor, in which the light emitted by the
`device is a white color.” Id. at 19. Patent Owner argues that, under
`Petitioner’s view, “any LED that has a blue LED chip and emits white light
`
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`would be considered to ‘mix’ the blue light from the LED chip with that of
`the phosphor to make white light, if any light emitted by the LED chip
`evades the phosphor and escapes . . . . regardless of whether that light is
`necessary or contributes in any way to creation of the white color emitted by
`the LED.” Id. Patent Owner contends Petitioner’s implied construction
`removes from the claim the limitation that the blue from the LED actually
`must be used “to make” the white light from light that would not be white
`otherwise. Id. Patent Owner argues that Petitioner’s implied construction is
`not supported by the specification, ignores the context of the claim and the
`dual roles of the light from the LED chip. Id.
`As neither Petitioner nor Patent Owner proposes any explicit claim
`construction and Patent Owner asserts Petitioner implicitly asserts a claim
`construction in its arguments, we address this issue further in our analysis of
`parties’ arguments below.
`ISSUES UNDER 37 U.S.C. § 325(d)
`Patent Owner urges us to decline institution of inter partes review
`because Petitioner requests that the panel revisit the same prior art
`considered by the Examiner. Prelim. Resp. 9. As noted above, each of
`Petitioner’s challenges cites Baretz as a primary reference. With the
`application that matured into the ’092 Patent, the Applicant filed a Petition
`to Make Special Under Accelerated Examination Program (Ex. 1003
`Petition to Make Special) and an Accelerated Examination Support
`Document (“Accl. Exam Support Doc.”) that identified Baretz as one of four
`“references deemed most closely related to the subject matter of the claims.”
`
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`Ex. 1003, Accl. Exam. Support Doc., 5.1,2 The Accelerated Examination
`Support Document states that Baretz discloses a light emitting diode that
`employs a different light emitting mechanism from that of the claimed
`invention. Id. at 18 (citing Ex. 1004, 7:19–27, disclosing that
`“monochromatic blue or UV radiation output from 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 appears as
`white light”). According to Patent Owner, in Baretz, light from the LED die
`is not used to make white light; instead, white light is obtained from red,
`green and blue emission centers of Bartez’s luminophoric medium. Id. at 19
`(citing Ex. 1004 8:35–36). Patent Owner concludes, “[t]herefore, in Baretz,
`light from LED die 13 and the light from the luminophoric medium is not
`mixed to make the white-color.” Id.
`It appears that the application resulted in a first action allowance. The
`Examiner’s Notice of Allowability states:
`The following is an examiner’s statement of reasons for
`allowance:
`The prior art found by the examiner Brando et al.3
`disclose the development of highbright white light emitting
`diode lamps.
`
`
`1 We are unable to provide precise page citations to Ex. 1003, which
`contains 1,053 pages, because Petitioner failed to number the pages of
`Exhibit 1003 sequentially.
`2 The other three references are: Japanese Patent Appl. Publ. No. JP 07-
`306659 (“Nagai”); U.S. Patent No. 5,334,855 (“Moyer”), and Japanese
`Patent Appl. Publ. No. JP 07-176794 (“JP’794”).
`3 The Examiner appears to be referring to the entry on line U of the
`accompanying Form PTO-892 Notice of References immediately following
`Notice of Allowability (Ex. 1003) “Branko, et al Development and
`applications of highbright white LED lamps, November 29, 1996, The 264th
`
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`
`There was no prior art found by the examiner anticipate
`or make obvious the claimed;
`“an LED chip comprising a gallium nitride compound
`semiconductor containing indium and being capable of emitting
`a blue color light, and a phosphor capable of absorbing [a] part
`of the blue color light and emitting a light having a longer
`wavelength than the blue color light, the blue color light and the
`light from said phosphor being mixed to make the white color”,
`as required by Claim1 and dependent Claims thereof.
`
`Ex. 1003, Notice of Allowability, 2.
`Cases in which we denied institution under 35 U.S.C. § 325(d) based
`on consideration of a reference during prosecution of the corresponding
`patent application often involve extensive substantive discussion of that
`reference. See Yotrio Corp. v. Lakesouth Holdings LLC, Case IPR2017-
`00298 (PTAB May 15, 2017) ( Paper 12) (denying institution where
`Examiner expressly considered the reference). In this case, Applicant’s
`substantive discussion distinguishing Baretz constitutes about 17 lines of the
`1,053 page file history. Ex. 1003, Accel. Exam. Support Doc. 18–19. The
`Notice of Allowability states only that “no prior art found by the Examiner
`anticipate[s] or makes obvious” the limitations concerning the LED chip
`emitting a blue color light, the phosphor capable of absorbing a part of the
`blue color light and emitting a wavelength longer than the blue color light,
`and the blue color light and the light from the phosphor being mixed to make
`the white color. Ex. 1003, Notice of Allowability 2. Although we assume
`that the Examiner considered Baretz, in the Notice of Allowability the
`Examiner does not mention Baretz or discuss his reasoning concerning its
`specific application to the claims. Id. A major focus of disagreement
`
`Proceedings of the Institute of Phosphor Society, pages 4–16 of the
`translation provided by the Applicant.”
`
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`between Petitioner and Patent Owner concerns the implications of the
`disclosure in Baretz to the claims at issue in this proceeding. Prelim. Resp.
`11. In view of these circumstances, we decline to exercise our discretion to
`deny institution under 35 U.S.C. §325(d).
`
`ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`Introduction
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The test for obviousness is whether the combination of references,
`taken as a whole, would have suggested the patentees’ invention to a person
`having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091,
`1097 (Fed. Cir. 1986). The question of obviousness is resolved on the basis
`of underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Whether a patent claiming the combination of prior art elements
`would have been obvious is determined by whether the improvement is more
`than the predictable use of prior art elements according to their established
`functions. KSR v. Teleflex, 550 U.S. at 417. To reach this conclusion,
`however, requires more than a mere showing that the prior art includes
`separate references covering each separate limitation in a claim under
`examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
`
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`Cir. 2011). Obviousness requires the additional showing that a person of
`ordinary skill at the time of the invention would have selected and combined
`those prior art elements in the normal course of research and development to
`yield the claimed invention. Id. However, a precise teaching directed to the
`specific subject matter of a challenged claim is not necessary to establish
`obviousness. KSR v. Teleflex, 550 U.S. at 418. As the Supreme Court
`recognized, in many cases a person of ordinary skill “will be able to fit the
`teachings of multiple patents together like pieces of a puzzle,” recognizing
`that a person of ordinary skill “is also a person of ordinary creativity, not an
`automaton.” KSR v. Teleflex, 550 U.S. at 420–21. Against this general
`background, we consider the references, other evidence, and arguments of
`the parties.
`
`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 ’092 Patent would have had a
`minimum of a bachelor’s degree in electrical engineering, chemistry,
`physics, or a related field and approximately two years of professional
`experience in optoelectronics or other relevant field. Pet. 32 (citing Ex.
`1002, Dec. of Dr. Paul Prucnal (“Prucnal Decl.”) ¶ 37). Dr. Prucnal further
`stated that additional graduate education could substitute for professional
`experience or significant experience in the field could substitute for formal
`education. Id. (citing Ex. 1002, Prucnal Decl. ¶¶36–37). 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-analogous art into the
`
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`obviousness analysis. Prelim. Resp. 14–16. Patent Owner, however, does
`not propose an alternative description of a person of ordinary skill.
`The subject matter of white light LED devices in the ’092 Patent
`concerns aspects of electrical engineering (e.g., the control circuitry),
`physics (e.g., wavelengths of the spectrum to generate white light), and
`chemistry (e.g., the composition of phosphors to absorb various wavelengths
`and to cause fluorescence). Thus, persons of ordinary skill in this field are
`likely to have different technical backgrounds and professional experience.
`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
`the field and is adequate for purposes of this proceeding.
`Claims 1–3, 8, and 13 As Obvious Over Baretz In View Of Banks
`Claim 1
`With respect to claim 1, Petitioner demonstrates that Baretz discloses
`a device for emitting white-color light, as recited in the preamble (Pet. 33–
`35), comprising a “light emitting diode,” designated element 1.A (Pet. 36),
`“an LED chip comprising a gallium nitride compound semiconductor
`containing indium and being capable of emitting a blue color light,”
`(designated element 1.A.1)(id at 36–38), and “a phosphor capable of
`absorbing a part of the blue color light and emitting a light having longer
`wavelength than the blue color light.” (id. at 37–40).
`In its Accelerated Examination Support Document, Patent Owner
`acknowledges that Baretz discloses the preamble and the elements Petitioner
`designates as 1.A, 1.A.1, 1.A.2, as well as a controller, stating:
`With respect to claim 1, Baretz discloses:
`a device for emitting white-color light comprising (col.
`11 lines 33-42, display 30 illustrated in Fig. 4):
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`
`a light emitting diode assembly (light emitting diode
`assembly 10 in Fig. 1, col. 8 lines 58-61) including:
`an LED chip (LED die 13 in Fig. 1, col. 8 lines 66-67)
`comprising a gallium nitride compound semiconductor
`containing indium (LED 13 is described as including indium
`gallium nitride at col. 10 lines 24-26) and being capable of
`emitting a blue color light (col. 10 lines 24- 25), and
`a phosphor capable of absorbing a part of the blue color
`light and emitting a light having longer wavelength than the
`blue color light (down-converting material 20 in fig. 1,
`described at col. 9 lines 3-9, where phosphorescent centers can
`emit blue, red, green light, col. 8 lines 26-36); and
`a controller (controller 31 in fig. 4, col. 11lines 43-52).
`
`Ex. 1003, Accl. Exam. Support Doc. 18.4
`In view of the parties’ general agreement that Baretz discloses the
`preamble and elements 1.A, 1.A.1, and 1.A.2, of claim 1 of the ’092 Patent,
`we turn our attention to the claim element designated 1.A.3 by Petitioner,
`which recites “the blue color light and the light from said phosphor being
`mixed to make the white-color.” Pet. 40. The question of whether Baretz
`discloses this limitation is a main disagreement between Petitioner and
`Patent Owner. Prelim. Resp. 11. According to Patent Owner, Petitioner has
`tried to write out of this limitation the requirement that the blue from the
`LED chip must be used to make the white light from light that would not
`otherwise be white. Id. at 19. As noted above, although neither party seeks
`a construction of the meaning of “a phosphor capable of absorbing a part of
`the blue color light” in limitation 1.A.2, Patent Owner argues that Petitioner
`implies a construction that unreasonably broadens claim limitation 1.A.3,
`
`
`4 At page 19 of the Accelerated Examination Support Document, Applicant
`reproduced the entirely of claim 1, including these limitations, stating that it
`was not disclosed by Baretz.
`
`17
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`IPR2017-00556
`Patent 7,855,092 B2
`
`which recites mixing the blue light and the light from the phosphor to make
`the white light. Prelim. Resp. 17–20. The issue arises in the context of what
`it means for a part of the blue light to mix with the longer wavelength
`emitted by the phosphor as claimed in the ’092 Patent.
`A phosphor capable of absorbing a part of the blue color light
`In patent law, “the name of the game is the claim.” In re Hiniker Co.,
`150 F.3d 1362, 1369 (Fed. Cir. 1998). Section 112 of the 1952 Patent Act
`requires that the claims themselves set forth the limits of the patent grant.
`Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
`Thus, we consider the limitation “the blue color light and the light from said
`phosphor being mixed to make the white color” in the context of the
`antecedent claim language.
`Claim 1 recites that the LED chip is “capable of” emitting a blue color
`light and that the phosphor is “capable of absorbing a part of the blue color
`light and emitting a light having longer wavelength than the blue color
`light.” This language does not exclude the possibility that the LED chip and
`the phosphor are “capable of” other performance. We further note that the
`“part” of the blue color light that the phosphor is “capable of” absorbing is
`not defined in the claim. The Specification does not discuss what part of the
`blue light emitted by the LED chip is absorbed by the phosphor nor do the
`parties identify any other discussion in the ’092 Patent Specification of what
`constitutes a “part” of the blue color light as recited in claim 1. The ’092
`Patent’s discussion of the spectrum emitted by the phosphor is in the context
`of the wavelength of the light emitted by the phosphor, but does not speak to
`what “part” of the blue light is absorbed.
`
`18
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`TCL 1043, Page 18
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`IPR2017-00556
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`
`In this case, we do not apply the broadest reasonable construction, but
`instead employ a Philips type construction. The recitation that the phosphor
`emits “a light having a longer wavelength than the blue color light” does not
`specify any particular range of wavelengths. During prosecution, Applicant
`identified several paragraphs of the Application as disclosing the claimed
`“phosphor capable of absorbing a part of the blue color light and emitting a
`light having a longer wavelength than the blue color light.” Ex. 1003, Accl.
`Exam Support Doc. 33 (identifying Application paragraph 17 (which
`corresponds to Ex. 1001, 3:37–41), Application paragraph 29 (which
`corresponds to Ex. 1001, 4:55–66), Application paragraph 47 (which
`corresponds to Ex. 1001, 6:29–54), and Application paragraph 147 (which
`corresponds to 19:56–20:5). Beginning with the word “[t]hus,” the subject
`matter of Application paragraph 17 follows from the disclosure preceding it
`in Application paragraph 16 (which corresponds to Ex. 1001, 3:31–36).
`Here the ’092 Patent discloses that:
`With regard to the relationship with the light emitting
`component, the fluorescent material must be capable of
`absorbing with high
`efficiency
`the
`light of high
`monochromaticity emitted by the light emitting component and
`emitting light of a wavelength different from that of the light
`emitted by the light emitting component.
`
`Id. at 3:31–36. Other than the reference to the absorption of the
`monochromatic light from the light emitting component by the fluoresc