Case: 20-2261 Document: 46 Page: 1 Filed: 04/26/2022
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`NICHIA CORPORATION,
`Appellant
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Cross-Appellant
`______________________
`
`2020-2261, 2020-2287
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`01165.
`
`______________________
`
`Decided: April 26, 2022
`______________________
`
`THOMAS R. MAKIN, Shearman & Sterling LLP, New
`York, NY, argued for appellant. Also represented by DAVID
`JEFFREY COOPERBERG, ERIC SEBASTIAN LUCAS; MATT
`BERKOWITZ, PATRICK ROBERT COLSHER, Menlo Park, CA.
`
` PAUL ANTHONY KROEGER, Russ August & Kabat, Los
`Angeles, CA, argued for cross-appellant. Also represented
`by BRIAN DAVID LEDAHL, SHANI M. WILLIAMS.
` ______________________
`
`
`

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`Case: 20-2261 Document: 46 Page: 2 Filed: 04/26/2022
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`Before DYK, REYNA, and STOLL, Circuit Judges.
`REYNA, Circuit Judge.
`Document Security Systems owns U.S. Patent
`No. 7,524,087, directed to light emitting diode display pan-
`els. Nichia Corporation petitioned for inter partes review
`of claims 1–19. The Patent Trial and Appeal Board deter-
`mined Nichia proved claims 1 and 6–8 unpatentable but
`did not prove claims 2–5 and 9–19 unpatentable. Both par-
`ties appeal. We affirm the Board’s findings as to all claims
`except claims 15–19. We reverse on claim 15 and remand
`for further proceedings regarding dependent claims 16–19.
`BACKGROUND
`U.S. Patent No. 7,524,087 (“the ’087 patent”) is owned
`by Document Security Systems, Inc. (“Document Security”)
`and describes an optical device with a light emitting diode
`(“LED”) die. ’087 patent, abstract. The device can be used
`in a display panel as one of numerous LEDs and consists of
`an LED die mounted to a plastic housing. In one embodi-
`ment, LEDs are mounted in a housing and encapsulated
`for protection from the environment. ’087 patent, 1:50–52.
`Figure 1 below shows the top perspective and figure 2
`shows the bottom perspective of an exemplary optical de-
`vice.
`
`’087 patent, figs. 1 & 2.
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`

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`Case: 20-2261 Document: 46 Page: 3 Filed: 04/26/2022
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`In relation to figures 1 and 2, the device contains re-
`flector housing 20 with a sidewall 26 extending between a
`top 22 and bottom 24. ’087 patent at 2:12–17. A first
`pocket, or cavity, 30 is formed on the top of the housing 22
`and a second pocket 34 is formed on the bottom 24. Id. The
`first pocket 30 contains light sources 12, 14, and 16
`mounted on an electronically conductive lead frame 32.
`’087 patent at 2:17–21. Each lead 36, 40, 42, 44, 46, and 50
`is positioned at a lead receiving compartment (e.g., 52)
`formed in the exterior sidewall 26 of the reflector housing
`20. ’087 patent at 2:64–67. The first pocket 30 may be
`filled with encapsulant to cover and protect the LED dies,
`which may be a substantially transparent silicone mate-
`rial. ’087 patent at 3:26–30. Independent claim 1 is repre-
`sentative.
`1. An optical device comprising:
`a lead frame with a plurality of leads;
`a reflector housing formed around the lead frame,
`the reflector housing having a first end face and a
`second end face and a peripheral sidewall extend-
`ing between the first end face and the second end
`face, the reflector housing having a first pocket
`with a pocket opening in the first end face and a
`second pocket with a pocket opening in the second
`end face;
`at least one LED die mounted in the first pocket of
`the reflector housing;
`a light transmitting encapsulant disposed in the
`first pocket and encapsulating the at least one LED
`die; and
`wherein a plurality of lead receiving compartments
`are formed in the peripheral sidewall of the reflec-
`tor housing.
`’087 patent at 6:23–37.
`
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`Case: 20-2261 Document: 46 Page: 4 Filed: 04/26/2022
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`Nichia Corporation (“Nichia”) petitioned for inter
`partes review of all 19 claims of the ’087 patent, and the
`Patent Trial and Appeal Board (“Board”) instituted review.
`Nichia Corp. v. Document Security Systems, Inc., IPR2018-
`01165, 2019 WL 6719173 at *1 (P.T.A.B. Dec. 10, 2019)
`(“Decision”). Three prior art references from Nichia’s peti-
`tion are relevant to this appeal.
`The first prior art reference is U.S. Patent Application
`Publication No. US 2004/0135156 A1 (“Takenaka”), which
`is titled “Semiconductor Light Emitting Device and Fabri-
`cation Method Thereof.” Takenaka illustrates a semicon-
`ductor LED including an LED chip, a frame upon which the
`chip is mounted, a second electronically connected lead
`frame, and a resin portion surrounding the chip and secur-
`ing the lead frame. Decision at *3, *6–7. A metal body sits
`between the lead frames secured by a resin portion. Id.
`Second, Japanese Patent Application Publication A
`No. 2001 118868 (“Kyowa”) is titled “Surface mounted
`parts and their manufacturing method” and illustrates a
`surface-mounting device that stores light-emitting parts
`such as light-emitting chips that are mounted to portions
`of the device by die bonding. Decision at *3, *7. The chips
`are connected to a common area, the outer lead frame has
`outer leads continuing to the common area, and the device
`is enclosed in a resin package. Id.
`And third, U.S. Patent No. 6,653,661 B2 (“Okazaki”)
`describes “a chip-type LED utilized as a light source for
`various display panels or a backlight source for liquid crys-
`tal display devices.” Decision at *3, *31. The device in-
`cludes a tubular vessel with an upper and lower opening
`with an LED positioned between the openings. Id.
`The Board found Nichia demonstrated by a preponder-
`ance of the evidence that claims 1 and 6–8 are unpatenta-
`ble as obvious over Takenaka in combination with Kyowa.
`Decision at *15, *20–21. The Board found a motivation to
`combine Takenaka and Kyowa. According to the Board, a
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`person of ordinary skill in the art would have been moti-
`vated to combine the lead receiving compartments of
`Kyowa with the sidewall of Takenaka’s LED housing to
`protect the leads from external forces. Id. at *13–14. The
`Board found Takenaka teaches most of claim 1 and Kyowa
`teaches the remaining limitation requiring multiple lead-
`receiving compartments in the reflector housing sidewall,
`thus rendering claim 1 and dependent claims 6–8 un-
`patentable as obvious. Id. at *13–15.
`The Board further determined Nichia did not demon-
`strate that claims 2–5 and 9–19 are unpatentable based on
`any asserted grounds. Decision at *20, *22–23, *30, *37.
`The Board determined claims 1 and 6–14 are not unpatent-
`able in view of Okazaki and Kyowa because Okazaki dis-
`closes a tubular vessel rather than the claimed two pockets.
`Id. at *33–36. The Board’s findings were based on its de-
`termination that Document Security’s relevant testimony
`was more credible than Nichia’s. Id. at *34. The Board
`determined the relevant art is LED displays and that
`Mr. Credelle, Document Security’s expert, is qualified in
`this field because he has an M.S. degree in Electrical Engi-
`neering, more than 40 years of experience, and received
`recognition in the field. Id. at *32–33. The Board relied on
`Mr. Credelle’s testimony that a person of ordinary skill
`would understand Okazaki to describe a tubular vessel ra-
`ther than two pockets. Id. at *33–36. The Board explained
`Okazaki does not refer to the interior of the tubular vessel
`as having separate spaces, and the pinching in of the tub-
`ular vessel serves purposes requiring a through-hole rather
`than pockets. Id.
`Additionally, the Board determined Nichia did not
`demonstrate claims 9–19 are unpatentable over Takenaka
`in view of Kyowa. Decision at *21–23. The Board found
`that Nichia did not identify any disclosure in Takenaka re-
`garding the “plastic phrase” in claim 9. Id. Claim 9 begins:
`“A display comprising a plurality of plastic leaded chip car-
`rier LEDs, the plastic leaded chip carrier LEDs each
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`Case: 20-2261 Document: 46 Page: 6 Filed: 04/26/2022
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`comprising . . . .” ’087 patent at 6:55–57 (emphasis added).
`The underlined portion above is referred to as the “plastic
`phrase.” The Board determined that the preamble for
`claim 9 is “[a] display comprising” and accordingly, that the
`plastic phrase is limiting. Decision at *21–22. The Board
`found Nichia did not meet its burden on claim 9 and de-
`pendent claims 10–14 because it failed to point to any dis-
`closure regarding plastic in Takenaka. Id.
`In the Final Written Decision, the Board found that
`Nichia also did not identify any disclosure in Takenaka
`that teaches or suggests the “electrical connection limita-
`tion” in independent claim 15. Decision at *22–23. Claim
`15 is essentially the same as claim 1 with the additional
`limitation that “at least one LED die” is “electronically con-
`nected to said plurality of electrically conductive leads.”
`’087 patent at 7:20–22. The Board found Nichia did not
`identify any disclosure in Takenaka for this limitation and
`thus did not meet its burden for claim 15 and dependent
`claims 16–19. Decision at *22–23.
`Nichia appeals the Board’s determination that it had
`not proven claims 1 and 6–14 unpatentable based on Oka-
`zaki in view of Kyowa or proven claims 9–19 unpatentable
`based on Takenaka in view of Kyowa. Appellant’s Br. 22.
`Document Security cross-appeals the Board’s finding that
`claims 1 and 6–8 are obvious. Appellee’s Br. 24. We have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
`STANDARD OF REVIEW
`We review decisions by the Board in accordance with
`the Administrative Procedure Act, 5 U.S.C. § 706. See
`Dickinson v. Zurko, 527 U.S. 150 (1999). We review the
`Board’s legal conclusions de novo and its factual findings
`for substantial evidence. See ACCO Brands Corp. v. Fel-
`lowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substan-
`tial evidence is “such relevant evidence as a reasonable
`mind might accept as adequate to support a conclusion.” In
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000) (citations
`omitted).
`The Board’s ultimate obviousness determination is a
`legal conclusion reviewed de novo. See In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015). The
`Board’s factual findings underlying its obviousness deter-
`mination are reviewed for substantial evidence. Id. (citing
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). “The
`scope and content of the prior art, as well as whether the
`prior art teaches away from the claimed invention, are de-
`terminations of fact.” In re Mouttet, 686 F.3d 1322, 1330
`(Fed. Cir. 2012).
`
`DISCUSSION
`I. Nichia’s Appeal
`Nichia appeals two issues. First, that the Board erred
`in its finding that Nichia failed to show that claims 1 and
`6–14 of the ’087 patent were unpatentable over Okazaki in
`view of Kyowa. Second, that the Board erred in its finding
`that Nichia did not prove that claims 9–19 of the ’087 pa-
`tent were unpatentable as obvious over Takenaka in view
`of Kyowa. Appellant’s Br. 24–26, 48–49.
`A
`Nichia’s argument regarding claims 1 and 6–14 is di-
`rected to the Board’s finding that Okazaki does not disclose
`a device with two pockets. Appellant’s Br. 27–48. The
`claims require a reflector housing having two pockets. De-
`cision at *33–34. The parties disagreed whether the tubu-
`lar vessel bisected by lead frames described in Okazaki
`taught or suggested the required two pockets. Id.
`Document Security’s expert, Mr. Credelle, explained
`that a person of ordinary skill in the art would understand
`the tubular vessel as a “through-hole” or tube, rather than
`two pockets. Id. Nichia’s expert, Dr. Shealy, testified that
`a person of ordinary skill would have understood the lead
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`Case: 20-2261 Document: 46 Page: 8 Filed: 04/26/2022
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`frames to bisect the tubular vessel into separate spaces,
`i.e., pockets. Id. The Board weighed the expert testimonies
`and found Mr. Credelle’s testimony more credible.
`The Board explained that Mr. Credelle’s testimony
`“more closely reflect[ed] Okazaki’s disclosure.” Decision
`at *33. Mr. Credelle’s testimony aligns with Okazaki’s de-
`scriptions of the tubular vessel as being a single space. Id.
`at *33–35. Additionally, the Board credited Mr. Credelle’s
`testimony that the pinching in of the tubular vessel is for
`the purpose of reflecting light upwards rather than creat-
`ing two pockets. Id. at *35. Based on Mr. Credelle’s testi-
`mony, the Board determined that a person of ordinary skill
`in the art would not understand Okazaki to teach or sug-
`gest a reflector housing having two pockets. Id. at *36.
`The Board’s determination is a question of fact that we
`review for substantial evidence. See Cuozzo, 793 F.3d at
`1280. In its Final Written Decision, the Board pointed to
`Mr. Credelle’s testimony that Okazaki describes the tubu-
`lar vessel as a single space. The Board cited to the descrip-
`tions and figures from Okazaki that support Mr. Credelle’s
`testimony and the Board’s determination. In particular,
`the Board explained that figures 3 and 4 do not describe
`two separate spaces as Nichia contended, but rather de-
`scribed the tubular vessel as a singular tube. Decision
`at *33–36. We conclude that the expert testimony and dis-
`closures from Okazaki provide substantial evidence sup-
`porting the Board’s decision. We also reject Nichia’s
`alternative request to find that Okazaki’s single, tubular
`vessel satisfies claim 9’s single cavity limitation. The
`Board correctly determined that Nichia never proposed
`that Okazaki disclosed anything other than two pockets or
`cavities.
`Thus, we affirm the Board’s finding that Okazaki does
`not teach the required two pockets and that claims 1 and
`6–14 of the ’087 patent were not shown to be unpatentable.
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`B
`Nichia argues that the Board erred in finding that
`Nichia failed to show that claims 9–19 are unpatentable
`over Takenaka in view of Kyowa. Appellant’s Br. 49–65.
`Nichia makes three arguments.
`First, Nichia argues that the Board erred in its con-
`struction of claim 9. Appellant’s Br. 49–52. The Board de-
`termined that the preamble for claim 9 is “[a] display
`comprising” and accordingly, that the plastic phrase—“a
`plurality of plastic leaded chip carrier LEDs, the plastic
`leaded chip carrier LEDs each comprising”—is limiting.
`Decision at *21–22. According to Nichia, the plastic phrase
`should be construed as a preamble, not a limitation. Ap-
`pellant’s Br. 49–52.
`Claim construction is an issue of law that we review de
`novo. See Cuozzo, 793 F.3d at 1280. A preamble is “a gen-
`eral description of all the elements or steps of the claimed
`combination . . . .” 37 C.F.R. § 1.75(e)(1). “Claims are usu-
`ally structured with a preamble, a ‘transition phrase,’ and
`the elements or steps that are necessary to the right to ex-
`clude.” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d
`1356, 1360 (Fed. Cir. 2007) (citation omitted). The phrase
`“[a] display comprising” is a general description followed by
`the transition word “comprising” and then the required el-
`ements. Accordingly, we affirm the Board’s determination
`that “[a] display comprising” is the preamble to claim 9 and
`that “a plurality of plastic leaded chip carrier LEDs, the
`plastic leaded chip carrier LEDs each comprising” is a lim-
`itation.
`Second, Nichia argues that statements from Takenaka
`addressing plastic were included in its claim charts for
`claim 1, and the Board abused its discretion by not apply-
`ing this information to claim 9. Appellant’s Br. 52–65.
`In inter partes review proceedings, the patent chal-
`lenger bears the burden and must “show with particularity
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`why the patent it challenges is unpatentable.” Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
`2016). The patent challenger must provide an understand-
`able explanation of the element-by-element specifics of its
`unpatentability contentions, identifying supporting disclo-
`sures from the asserted prior art. See 35 U.S.C. § 312(a)(3).
`This burden combined with the structure of Board proceed-
`ings means “in some cases, a challenge can fail even if dif-
`ferent evidence and arguments might have led to success.”
`Ariosa Diagnostics v. Verinata Health. Inc., 805 F.3d 1359,
`1367 (Fed. Cir. 2015). “[A]buse of discretion is found if the
`decision: (1) is clearly unreasonable, arbitrary, or fanciful;
`(2) is based on an erroneous conclusion of law; (3) rests on
`clearly erroneous fact finding; or (4) involves a record that
`contains no evidence on which the Board could rationally
`base its decision.” Bilstad v. Wakalopulos, 386 F.3d 1116,
`1121 (Fed. Cir. 2004) (citations omitted).
`Nichia failed to establish anywhere in its petition or
`expert declaration that Takenaka disclosed “plastic.” De-
`cision at *21–22; J.A. 173. Nichia’s claim charts disclose
`solely the use of resin, and Nichia makes no argument com-
`paring resin and plastic. J.A. 160–61; 173. Nichia failed
`to demonstrate with particularity that Takenaka discloses
`“plastic leaded chip carrier LEDs.” We therefore affirm the
`Board’s conclusion that Nichia did not meet its burden on
`claim 9 and dependent claims 10–14.
`Third, Nichia argues that the Board abused its discre-
`tion in finding that Nichia did not prove claim 15 unpatent-
`able based on Takenaka in view of Kyowa. Appellant’s
`Br. 60–65. Claim 15 is essentially the same as claim 1 with
`an additional limitation—“at least one LED die . . . elec-
`tronically connected to said plurality of electrically conduc-
`tive leads.” Compare ’087 patent at 6:23–38, with id. at
`7:15–8:7. The Board found Takenaka and Kyowa render
`claim 1 obvious. Decision at *12. Further, the Board found
`that Nichia did not identify where Takenaka teaches an
`electrical connection as required by claim 15 and thus, did
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`not prove claim 15 unpatentable based on Takenaka in
`view of Kyowa. Id. at *22–23.
`Nichia argues that the Board abused its discretion by
`ignoring Nichia’s reference to its claim chart for claim 1
`and finding that Nichia did not prove claim 15 unpatenta-
`ble as obvious due to the combination of Takenaka and
`Kyowa. Appellant’s Br. 60–65. Nichia contends its discus-
`sion of claim 15 references the discussion of claim 1, which
`addresses the electrical connection. Id.
`Here, it was Nichia’s burden to demonstrate Takenaka
`disclosed the required electrical connection. See, e.g., Har-
`monic, 815 F.3d at 1363; Ariosa Diagnostics, 805 F.3d at
`1367. Unlike with the plastic phrase, Nichia’s petition spe-
`cifically stated that Takenaka disclosed an electrical con-
`nection. In discussing claim 15, the petition cites to Section
`VI.D.1., which discusses grounds for unpatentability of
`claim 1 based on Takenaka. J.A. 177–79. The petition
`quotes Takenaka’s description of how the leads are con-
`nected. “LED chip 4 is mounted on first lead frame 1 with
`Ag paste 7 therebetween. Bonding wire 5 is attached to
`second lead frame 2. Accordingly, second lead frame 2 is
`mechanically and electrically connected to LED chip 4.”
`J.A. 163–64 (emphasis added). This shows Takenaka dis-
`closes an LED die electrically connected to a conductive
`lead. Thus, Nichia demonstrated with particularity that
`this claim limitation is disclosed in the prior art. The
`Board’s conclusion to the contrary demonstrates a clearly
`erroneous fact finding qualifying as an abuse of discretion.
`Because we find that Nichia proved the electrical limi-
`tation is disclosed in Takenaka, we reverse the Board’s de-
`cision regarding claim 15 and remand to the Board to
`address dependent claims 16–19.
`II. Document Security’s Cross-Appeal
`On cross-appeal, Document Security challenges the
`Board’s finding that claims 1 and 6–8 of the ’087 patent are
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`obvious over Takenaka in view of Kyowa. Appellee’s
`Br. 57. Document Security presents two issues for appeal.
`First, Document Security argues that Takenaka meets all
`the limitations of the asserted patent’s disclosed method to
`protect the leads from external forces. And as a result,
`there was no need to combine Takenaka with Kyowa. Ap-
`pellee’s Br. 61–66.
`The Board determined that a person of ordinary skill
`would have been motivated to combine Takenaka with
`Kyowa with a reasonable expectation of success. Decision
`at *13–15. Motivation to combine is a finding of fact. See
`Mouttet, 686 F.3d at 1330. We review the Board’s factual
`findings for substantial evidence. See ACCO Brands, 813
`F.3d at 1365.
`In its Final Written Decision, the Board relied on the
`testimony of Dr. Shealy, Nichia’s expert. Decision
`at *13–14. Dr. Shealy opined that a person of ordinary
`skill in the art would have been motivated to add the com-
`partments described in Kyowa to the LED housing sidewall
`of Takenaka to protect the leads from external forces. Id.
`In his testimony, Dr. Shealy pointed to Kyowa’s discussion
`that sidewall compartments protect the leads from exter-
`nal forces. Id. The Board thus found that Kyowa teaches
`or suggests improving the LED assembly of Takenaka by
`protecting the leads from external forces. Id. at *15.
`Dr. Shealy’s expert testimony and Kyowa’s disclosure pro-
`vide “relevant evidence as a reasonable mind” would find
`supports the Board’s conclusion. Gartside, 203 F.3d at
`1312. Thus, we conclude that the Board’s finding that a
`person of ordinary skill in the art would be motivated to
`combine Takenaka and Kyowa is supported by substantial
`evidence.
`Second, Document Security argues that even if a per-
`son of ordinary skill in the art were motivated to combine
`Kyowa and Takenaka, the Board erred because Kyowa
`does not teach a required element of the claims at issue.
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`NICHIA CORPORATION v. DOCUMENT SECURITY SYSTEMS
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`The Board found claim 1 unpatentable as obvious because
`Takenaka teaches most of claim 1, including the reflector
`housing, and Kyowa teaches the remaining limitation re-
`quiring multiple lead-receiving compartments in a side-
`wall. Decision at *13–15. According to Document Security,
`Kyowa does not disclose or suggest reflector housing and
`therefore cannot teach the lead-receiving compartments
`limitation. Appellee’s Br. 58–61.
`What the prior art teaches is a finding of fact we review
`for substantial evidence. ACCO Brands, 813 F.3d at 1365.
`The Board explained that Kyowa teaches the device is en-
`closed in a resin package, which is an LED housing, and
`the sidewall contains multiple compartments in the hous-
`ing. Decision at *11–12. Further, the Board reasoned that
`Takenaka teaches a housing formed of “white resin having
`high reflectance,” which corresponds to the required reflec-
`tor housing. Id. at *8. The Board pointed to the disclosures
`in Takenaka that teach the reflector housing and the dis-
`closures in Kyowa that teach the multiple compartments
`within the housing. Id. at *7–15. We conclude that the
`Board’s finding that Takenaka and Kyowa teach all the
`limitations of claim 1 is supported by substantial evidence.
`Accordingly, we affirm.
`CONCLUSION
`We affirm the Board’s decision with respect to all
`claims except claims 15–19. We reverse with respect to
`claim 15 and remand for findings on dependent claims
`16–19. We have considered both parties’ remaining argu-
`ments and find them unpersuasive.
`AFFIRMED-IN-PART, REVERSED-IN-PART AND
`REMANDED
`COSTS
`
`No Costs.
`
`