Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 7
`Entered: April 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LOWE’S COMPANIES, INC. LOWE’S HOME CENTERS, LLC and
`L G SOURCING, INC.,
`Petitioners
`v.
`NICHIA CORPORATION,
`Patent Owner
`
`Case IPR2018-00066
`Patent 7,915,631 B2
`
`
`
`
`
`
`
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 7
`Entered: April 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LOWE’S COMPANIES, INC. LOWE’S HOME CENTERS, LLC and
`L G SOURCING, INC.,
`Petitioners
`v.
`NICHIA CORPORATION,
`Patent Owner
`
`Case IPR2018-00066
`Patent 7,915,631 B2
`
`
`
`
`
`
`
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Lowe’s Companies, Inc., Lowe’s Home Centers, LLC and L G
`Sourcing, Inc. (“Petitioners”) filed a Petition (Paper 1, “Pet.”) to institute an
`inter partes review of claims 1, 2, and 6–11 (the “challenged claims”) of
`U.S. Patent No. 7,915,631 B2 (Exhibit 1001, the “’631 Patent”). Nichia
`Corporation (“Patent Owner”) timely filed a Preliminary Response. Paper 6
`(“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 institute inter
`partes review of claims 1, 2, and 6–11, which constitute all challenged
`claims.
`
`B. Related Proceedings
`The ʼ631 Patent is asserted in Nichia Corp. v. Lowe’s Companies, Inc.
`et al., No. 5:16-cv-142 (W.D.N.C.), Nichia Corp. v. TCL Multimedia Tech.
`Holdings, Ltd., No. 16-cv-00681 (D. Del.) and Nichia Corp. v. VIZIO, Inc.,
`No. 16-cv-00545 (C.D. Cal.). Pet 67.
`The ʼ631 Patent has been the subject of two previous petitions (“the
`previous ʼ631 Petitions”), IPR2017-00551 filed by Vizio, Inc., in which the
`Board denied institution and IPR2017-02000 filed by TCL Multimedia
`Technology Holding Limited, which was terminated pursuant to settlement
`before a decision on institution had issued. In addition, several IPRs have
`
`2
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`been filed on related patents, including IPR2017-00552, IPR2017-00556,
`IPR2017-00558, IPR2017-01998, IPR2017-01999, IPR2017-02001
`(collectively “the Related IPRs”).
`
`C. The ʼ631 Patent
`The ʼ631 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 ʼ631 Patent
`relates to light emitting diodes for emitting white light. See Ex. 1001,
`Abstract; 1:25–31. The LED contains 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. Id.
`According to the ʼ631 Patent, there were problems in creating white
`light in the conventional way of mixing red, green, and blue light due to the
`use of separate light emitting components required to emit the three primary
`colors. Id. at 1:48–62. Some light emitting diodes, therefore, use only one
`kind of light emitting component of one color (such as blue light), and add 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 ʼ631 Patent
`specification notes 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. Id. at 6:23–49.
`
`3
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`However, several drawbacks can occur with the use of fluorescent
`material in an LED. For example, 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
`introduced during the production process can accelerate the deterioration of
`the fluorescent material. Id. at 2:60–64.
`To address the concerns described above, embodiments of the ʼ631
`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 theʼ631 Patent
`is illustrated in Figure 1, reproduced below with annotations indicating the
`elements corresponding to some of the features discussed herein.
`
`4
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`
`Figure 1, with annotations showing a lead type light emitting diode
`according to one embodiment of the ʼ631 Patent.
`
`
`The embodiment depicted in Figure 1 employs an LED chip mounted
`in a cup of the light emitting diode. Id. at 5:39–41. The LED chip is
`capable of emitting blue light of short wavelength. Id. at 9:35–39. The cup
`is filled with a transparent coating material, which is then covered by a
`molding material. Id. at 5:41–46. The coating material and molding
`material may be different materials, or they may be made of the same
`material. Id. at 17:4–12. 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. Id. at 3:38–44;
`10:8–26. Further, to address concerns about exposure to moisture, the
`concentration of the phosphor can be varied so that the concentration
`
`5
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`increases from the surface of the coating or molding material toward the
`light emitting component. Id. at 10:47–53. 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, claim 1 is an independent claim. Claims 2,
`and 6–11 depend from claim 1.
`Claim 1, reproduced below, is illustrative:
`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.
`
`E. Prior Art Relied Upon
`Petitioners rely upon the following references:
`
`Designation
`Baretz
`Shimizu
`Matoba
`Pinnow
`
`Reference
`U.S. Patent No. 6,600,175
`JP Patent Pub No. H08-7614
`JP Patent Pub. No. H7-99345
`U.S. Patent No. 3,699,478
`
`Ex. No.
`Date
`July 29, 2003 Ex. 1005
`Jan. 12, 1996 Ex. 1006
`Apr. 11, 1995 Ex. 1009
`Oct. 17, 1972 Ex. 1012
`
`6
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`Reference
`Designation
`Nakamura Nakamura et al., High-power
`InGaN single-quantum-well-
`structure blue and violet light-
`emitting diodes, Appl. Phys.
`Lett. 67, Sept. 25 1995
`
`Ex. No.
`Date
`Sept. 25, 1995 Ex. 1015
`
`F. Asserted Grounds of Unpatentability
`Petitioners challenge claims 1, 2, and 6–11 of the ʼ631 Patent on the
`following grounds:
`
`Ground Basis
`1
`§ 103
`
`Challenged Claim(s)
`1, 2, 6, 10, and 11
`
`2
`
`3
`
`4
`
`§ 103
`
`7 and 8
`
`§ 103
`
`9
`
`§ 103
`
`1, 6–8, 10 and 11
`
`References
`Baretz, Shimizu, and
`Matoba
`Baretz, Shimizu, Matoba,
`and Pinnow
`Baretz, Shimizu, Matoba
`and Nakamura
`Matoba, Shimizu, and
`Pinnow
`
`G. Level of Ordinary Skill
`Citing its declarant, Dr. Eric Bretschneider, Petitioners propose that
`“A person of ordinary skill in the art related to the ’631 patent would have
`had at least a bachelor’s degree in engineering, material science, chemistry
`or electrical engineering, and approximately four to five years of
`professional or research experience in the field of optics and/or LED
`technology, or an advanced degree (such as a Masters or Ph.D.) in one of
`those areas with little to no experience working in the field of LED
`technology.” Pet. 6–7 (citing Ex. 1003, Bretschneider Decl. ¶ 75).
`Patent Owner argues “Bretschneider’s definition of the pertinent area
`in which a POSITA must be knowledgeable is facially overbroad, has no
`
`7
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`factual basis, and is simply not credible.” Prelim. Resp. 28–30.
`Specifically, Patent Owner takes issue with Dr. Bretschneider’s proposed
`field of the ʼ631 Patent as overbroad for including “the entirety of ‘Optics’”
`which, according to Patent Owner, allows Petitioners to sweep in non-
`analogous art. Prelim. Resp. 28–29. Patent Owner argues “Bretschneider’s
`definition of a POSITA should be narrowed to require experience in the field
`of LEDs,” but does not offer an alternative description of a person of
`ordinary skill. Prelim. Resp. 29.
`The subject matter of white light LED devices in the ’631 Patent
`concerns aspects of electrical engineering (e.g., the control circuitry), optics
`(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 Petitioners’ description of a person of ordinary skill in the art
`recognizes the wide range of backgrounds of persons working in the relevant
`field and is adequate for purposes of this proceeding.
`
`H. Claim Interpretation
`The ʼ631 Patent has expired. For claims of an expired patent, we
`apply a district court-type claim construction set forth in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005). See In re Rambus, Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Only terms that are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy. See
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`
`8
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`1. Transparent Material
`The term “transparent material” appears in claim 1 three times, with
`the claim reciting “a transparent material covering said LED chip,” “a
`phosphor contained in said transparent material,” and “phosphor in the
`vicinity of the surface of said transparent material.” Petitioners propose that
`“transparent material” be construed as a “material that allows light to pass
`through.” Pet. 8. Patent Owner proposes “transparent material” be
`construed as “a unitary transparent material.” Prelim. Resp. 47–51. The
`dispute, as acknowledged by both parties, centers on whether the claimed
`“transparent material” can be made up of multiple layered transparent
`subcomponents or whether it consists of only a single unitary component.
`On the record before us, we agree with Petitioners that, as claimed,
`“transparent material” is not limited to a unitary transparent material. First,
`the Specification describes two components, a “coating material” and a
`“molding material” as both being transparent, covering the LED chip, and,
`in some embodiments, containing phosphor. Ex. 1001, 16:32–17:25.
`Nothing in the ʼ631 Patent indicates that both the coating material and the
`molding material together cannot be considered the claimed “transparent
`material.” Second, even when only considering the molding material, the
`ʼ631 Patent explains that such “molding material 104 may be made in a
`structure of multiple layers of different [transparent] materials being
`laminated.” Ex. 1001, 16:58–60. Thus, the ʼ631 Patent itself uses the term
`“material” in its singular form (as in “molding material”), to refer to multiple
`materials together, indicating that the claim term “transparent material” also
`may be referring to multiple transparent materials together, or at the least,
`should not be limited to referring only to one unitary transparent material.
`
`9
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`Accordingly, for the purposes of this Decision, we adopt Petitioners’
`claim construction and construe “transparent material” as a “material that
`allows light to pass through.”
`
`2. Diffuses
`Claim 1 recites “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.” Petitioners propose “diffuses” be construed to
`mean “scatters.” Pet. 9. In the underlying litigation, Patent Owner argued
`“diffuses” should be construed as “scatters by reflections off of phosphor
`particles.” Prelim. Resp. 57. Patent Owner contends “a POSITA would
`understand the use of the term ‘diffuses,’ in the context of the claim and the
`specification, as requiring the existence of scattering by reflection off of
`phosphor particles.” Prelim. Resp. 58. Crucially, Patent Owner contends “a
`POSITA would understand that ‘diffuses,’ in the context of the claim, could
`not be satisfied by mere absorption of the blue light from the LED chip by
`the phosphor and reemission by the phosphor of light of a longer
`wavelength.” Prelim. Resp. 58.
`On the current record, we decline to limit the term “diffuses,” as it is
`used in claim 1, to require scattering by reflection. We see insufficient
`support for such a limitation in the claim language or in the specification.
`The claim simply states that the “phosphor diffuses the light from said LED
`chip” without stating that such diffusion occurs, even partially, by reflection.
`The ʼ631 Patent specification states “[t]he light emitting diode which
`contains the fluorescent material, however, can emit light uniformly over a
`wide range without forming undesirable emission pattern because the light is
`emitted after being diffused by the fluorescent material.” ʼ631 Patent, Ex.
`
`10
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`1001, 9:10–14. Again, the specification does not state that diffusion occur
`by reflection.
`Accordingly, for the purposes of this Decision, we adopt Petitioners’
`claim construction and construe “diffuses” as “scatters.”
`
`II. ANALYSIS
`A. Issues under 35 U.S.C. § 325(d)
`Patent Owner notes that this Petition is part of a “third wave” of
`petitions challenging claims of the ʼ631 Patent and several related patents.
`Prelim. Resp. 2–4. Being the third petition against the ʼ631 Patent, Patent
`Owner argues the Board should decline to institute inter partes review under
`§ 325(d) because “[a]ll but one of the asserted references were previously
`considered by the Office during initial examination or [proceedings relating
`to prior inter partes review petitions filed by Vizio, Inc.].” Prelim. Resp. 5.
`According to Patent Owner, Baretz, Matoba, and Pinnow, were “considered
`by the Examiner during prosecution” and by the Board in prior petitions.
`Prelim. Resp. 5–6. Pinnow, in particular, was not shown to be analogous art
`in prior petitions, and, according to Patent Owner, Petitioners “fail to present
`any substantially new arguments” on this issue in the current Petition.
`Prelim. Resp. 6. As for Nakamura, which according to Patent Owner was
`not before the Office, is used only in one ground here and is used only for
`teaching quantum well structure, which other Nakamura references cited by
`the ʼ631 Patent already disclose. Prelim. Resp. 6–7.
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). In
`particular, § 325(d) states that “[i]n determining whether to institute . . . the
`
`11
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`Director may take into account whether . . . the same or substantially the
`same prior art or arguments previously were presented to the Office.”
`Patent Owner is correct that this is the third set of petitions against a
`family of patents that include the ʼ631 Patent. The first set was filed by
`Vizio, Inc. and includes IPR2017-00551, IPR2017-00552, IPR2017-00556,
`and IPR2017-00558 (“the Vizio Proceedings”). The second set was filed by
`TCL Multimedia Technology Holdings Limited and includes IPR2017-
`01998, IPR2017-01999, IPR2017-02000, and IPR2017-02001 (“the TCL
`Proceedings”). Of these prior petitions, two were directed against the ʼ631
`Patent: (1) IPR2017-00551, which was part of the Vizio Proceedings, and
`(2) IPR2017-02000, which was part of the TCL proceedings. The TCL
`Proceedings, including IPR2017-02000, were terminated due to settlement
`prior to any decision on institution. The arguments presented in IPR2017-
`02000 were not considered by the Board. Thus, the only prior petition
`against the ʼ631 Patent that we considered was IPR2017-00551. In
`IPR2017-00551, we declined to institute because Vizio had failed to comply
`with Rule 42.22(a)(2) because it lacked a detailed explanation of the
`significance of the evidence presented. IPR2017-00551, slip op. at 9–12
`(PTAB July 7, 2017) (Paper 9). Instead, the petition consisted of an
`omnibus claim chart with quotes from the references without sufficient
`explanation of how the references teach or suggest the claim limitations. Id.
`Therefore, although there is an overlap in some of the prior art presented
`here and that presented in IPR2017-00551, we did not address the arguments
`Petitioners now present, at least from a substantive point of view. Further, at
`least one reference, Shimizu, relied upon for each of the grounds asserted in
`
`12
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`this Petition, was not relied upon in any of the grounds in IPR2017-00551 or
`the other petitions in the Vizio proceedings.
`The remaining petitions in the Vizio proceedings, IPR2017-00552,
`IPR2017-00556, and IPR2017-00558, were directed to different patents with
`different claims. For example, IPR2017-00556 was directed against U.S.
`Patent No. 7,7855,092 B2 (“the ʼ092 Patent”). The relevant independent
`claim in the ʼ092 Patent does not include either of the two limitations that
`Patent Owner explicitly disputes in this Petition (discussed below), nor were
`any of the claim construction issues presented here brought up in that inter
`partes review. The same is true of IPR2017-00558, which was directed
`against U.S. Patent No. 8,309,375 B2. There is, however, more of an
`overlap in issues, subject matter, and prior art between the remaining
`IPR2017-00552 and this Petition. We declined to institute IPR2017-00552
`because that petition, like IPR2017-00551, lacked a detailed explanation of
`the significance of the evidence presented under Rule 42.22(a)(2). IPR2017-
`00552, slip op. at 16–19 (PTAB July 7, 2017) (Paper 9). We, therefore, did
`not consider the arguments and references from a substantive point of view
`in IPR2017-00552.
`We considered whether Pinnow is analogous to the LED based related
`patents that were the subject of IPR2017-00552, IPR2017-00556, and
`IPR2017-00558. In all of them, we found that Pinnow had not been shown
`to be analogous. Our determination, however, was based largely on the fact
`that Vizio had failed to provide sufficient analysis or explanation about the
`issue. IPR2016-00552, slip op. at 21 (PTAB July 7, 2017) (Paper 9)
`(“Petitioner, however, does not provide an analysis of why the ʼ959 Patent
`and Pinnow would be analogous under either prong of the test”); IPR2017-
`
`13
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`00556, slip op. at 35 (PTAB July 6, 2017) (Paper 9) (“Petitioner discusses
`only the similarities of scientific principles and does not explain why a
`person of ordinary skill would have looked to combine the teachings of
`Baretz and Pinnow to arrive at the device recited in claims 1 or 12”);
`IPR2017-00558, slip op. at 14 (PTAB July 7, 2017) (Paper 9) (“As an initial
`matter we note that Petitioner has not provided any evidence or argument as
`to whether Pinnow is in the same field of endeavor as the ’375 patent”).
`Here, on the other hand, the Petition explicitly addresses the issue,
`comparing Pinnow to the ʼ631 Patent. Petitioners also present arguments
`referencing the Federal Circuit’s decision in In re Cree, Inc., 818 F.3d 694
`(Fed. Cir. 2016), which were not before us in the Related IPRs. Hence, as
`with the other arguments, we have not addressed fully the arguments raised
`in this Petition regarding whether Pinnow is analogous art.
`Finally, Petitioners ask us to decline institution because Baretz,
`Matoba, Shimizu, and Pinnow were listed on Information Disclosure
`Statements during prosecution of the ʼ631 Patent. We have typically
`exercised our discretion to decline institution under 35 U.S.C. § 325(d) when
`the cited art was previously presented to, and extensively considered by the
`Office during prosecution. See Kayak Software Corp. v. International
`Business Machines Corp., Case CBM2016-00075 (PTAB Dec. 15, 2016)
`(Paper 16). In contrast, the references here were not applied against the
`claims of the ʼ631 Patent and there is no evidence that the Examiner
`considered the particular disclosures cited in the Petition or addressed
`arguments similar to those Petitioners now present before the Board as the
`basis for rejecting any of the challenged claims.
`
`14
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`For the reasons set forth above, we decline to exercise our discretion
`to deny institution of this Petition under 35 U.S.C. § 325(d).
`
`B. Equitable Considerations under 35 U.S.C. § 314(a)
`Patent Owner also urges us to deny this Petition under § 314(a)
`arguing the equitable factors weigh against institution. Prelim. Resp. 7–10.
`In Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential), the Board identified
`seven nonexclusive factors that bear on the issue of whether the Board
`should invoke its discretion to deny institution of an inter partes review,
`based on a follow-on petition on the same patent, under 35 U.S.C. § 314(a)
`and 37 C.F.R. § 42.108(a):
`1. Whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`2. Whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should have
`known of it;
`3. Whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to
`institute review in the first petition;
`4. The length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing
`of the second petition;
`5. Whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent;
`6. The finite resources of the Board; and
`7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`15
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`General Plastic, slip. op. at 15–16 (citing NVIDIA Corp. v. Samsung Elec.
`Co., Case IPR2016-00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9)). In
`applying these factors, we consider not only the congressional intent that
`inter partes review proceedings provide an effective and efficient alternative
`to district court litigation, but also the potential for abuse of the review
`process through repeated attacks by the same petitioner with respect to the
`same patent. See Gen. Plastic, slip. op. at 18n.1 (citing H.R. Rep. No. 112-
`98, pt. 1, at 48 (2011) (“Allowing similar, serial challenges to the same
`patent, by the same petitioner, risks harassment of patent owners and
`frustration of Congress’s intent in enacting the Leahy-Smith America
`Invents Act”).
`Patent Owner acknowledges that none of Petitioners were a party to
`any of the previous petitions involving the ʼ631 Patent. Patent Owner
`argues, however, that this factor weighs only minimally against denying the
`Petition because substantially the same art and arguments were presented
`before. Prelim. Resp. 10 (citing Samsung Elecs. Co. v. Elm 3DS
`Innovations, LLC, IPR2017-01305, Paper 11 (Oct. 17, 2017). Essentially,
`Patent Owner asks that we deny institution under § 314(a) for largely the
`same reasons put forth under § 325(d), even though none of Petitioners are a
`previous petitioner in either the Vizio proceedings or the TCL Proceedings.
`We decline to do so. The first factor of General Plastic asks whether the
`same petitioner previously filed a petition directed to the same claims of the
`same patent. The answer here is no. Patent Owner’s reliance on Samsung
`Elecs. Co. v. Elm 3DS Innovations, LLC is unpersuasive. In Samsung, the
`petitioner was a party to fourteen different inter partes reviews on related
`patents and had the opportunity to assert many of the same references, raise
`
`16
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`many of the same arguments, and present the same or similar claim
`construction positions in those fourteen IPRs that it was seeking to raise
`again. See Samsung slip op. at 13, 18, and 22. Here, we have no such facts.
`Accordingly, we decline to exercise our discretion to deny institution
`of this Petition under 35 U.S.C. § 314(a).
`
`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. 1005, 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.
`
`17
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`
`Figure 1 of Baretz, with 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
`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 Shimizu
`Shimizu relates generally to sheet-shaped light source used in displays
`of notebook computers and the like. In particular, Shimizu discloses a sheet-
`shaped light source consisting of a blue LED that is used for white light
`
`18
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`emission. Figure 2 of Shimizu, reproduced below with annotations,
`illustrates an embodiment of the sheet-shaped light source.
`
`
`
`Figure 2 is an annotated schematic cross-section of Shimizu’s
`sheet-shaped light source.
`
`Shimizu describes the sheet-shaped light source as having a blue
`LED (1) connected to a transparent light guide panel (2). Id. ¶ 6. Light
`from the blue LED is repeatedly reflected within the light guide panel. This
`light is scattered by the diffusion layer of the light guide panel and part of
`the light is absorbed by the fluorescent light layer (5). When it is absorbed,
`the wavelength of the light is modified and the light is then re-radiated out,
`enabling a mixing of light colors. Id. ¶ 10.
`
`3. Overview of Pinnow
`Pinnow generally relates to projection laser display systems that
`produce black and white images from black and blue images. Ex. 1012,
`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
`
`19
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`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 Å (488 nm) or a cadmium-ion laser that emits light at 4,416 Å
`(442 nm). Id. at 1:44–47; 2:19–26. Pinnow further discloses that the
`cerium-activated phosphor emits light centering about 5,500 Å (550 nm).
`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.
`
`20
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`
`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. 1009 ¶ 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 ¶ 10.
`The Figure below illustrates an embodiment of Matoba’s LED with
`annotations indicating which elements correspond to certain features
`discussed above.
`
`21
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`
`
`Figure 1 of Matoba, with annotations, illustrating an embodiment of
`Matoba’s LED.
`
`5. Overview of Nakamura
`Nakamura discloses high-power blue and violet light emitting diodes
`by using an InGaN single-quantum-well structure. Nakamura Abstract.
`Nakamura’s single-quantum-well structure blue LED device is depicted in
`Figure 1 of Nakamura, reproduced below.
`
`
`
`22
`
`
`
`IPR2018-00066
`Patent 7,915,631 B2
`Figure 1 of Nakamura depicts a single-quantum-well blue
`LED device structure
`
`D. Analysis of Ground 1
`Petitioners contend independent claim 1, and dependent claims 2, 6,
`10, and 11 would have been obvious over Baretz, Shimizu, and Matoba.
`Pet. 10.
`
`1. Claim 1
`Claim 1 recites “A light emitting diode comprising: an LED chip
`having an electrode; a transparent material covering said LED chip.”
`Petitioners argue Baretz’s Figure 1 and its associated description teaches a
`light emitting diode as a “white light emitting diode assembly” (Pet. 22–23
`citing (Baretz, Ex. 1005, 8:58–62)) that comprises an LED chip having an
`electrode, in the form of “a solid state device coupleable with a power
`supply” (Pet. 23–24 citing (Ex. 1005, Abstract 1:6–8, 8:58–62)), with a
`transparent material covering the LED chip described as “a light
`transmissive enclosure . . . may be formed of any suitable material having a
`light-transmissive character, such as a clear or translucent polymer, or a
`glass material” (Pet. 24–25 (citing Ex. 1005, 8:58–67, Fig. 1)).
`Claim 1 further 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.” Petitioners
`argue Baretz’s “light transmissive enclosure . . . filled with a suitable down
`converting material, e.g., . . .
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
