`Trials@uspto.gov
`Date: January 10, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`OSRAM OPTO SEMICONDUCTORS, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`IPR2019-01488
`Patent 7,095,053 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`Nichia Corporation and OSRAM Opto Semiconductors, Inc.
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1–9, 11–20, 22–24, and 26–30 of U.S. Patent
`No. 7,095,053 B2 (Ex. 1001, “the ’053 patent”). Petitioner filed
`
`
`
`IPR2019-01488
`Patent 7,095,053 B2
`Declarations of Phillip Wright, Ph.D. (Exs. 1003, 1025) with its Petition.
`Patent Owner, Contemporary Display LLC (“Patent Owner”), filed a
`Preliminary Response (Paper 15, “Prelim. Resp.”). Petitioner also filed a
`motion to join this case with IPR2019-01261.1 Paper 5.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “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.” For the reasons that follow, we do not
`institute an inter partes review.
`
`
`
`A.
`
`I. BACKGROUND
`Real-Parties-in-Interest
`Petitioner identifies Nichia Corporation, Nichia America Corporation,
`OSRAM GmbH, OSRAM Licht AG, OSRAM Opto Semiconductors
`GmbH, and OSRAM Opto Semiconductors, Inc. as real-parties-in-interest.
`Pet. 1. Patent Owner identifies Lighting Science Group Corporation as the
`real-party-in-interest. Paper 7, 1.
`
`Related Proceedings
`The parties identify the following proceedings related to the
`’053 patent (Pet. 1–2; Paper 7, 1–3):
`Lighting Sci. Grp. Corp. v. Acuity Brands, Inc., No. 1:19-cv-00805
`(D. Del. filed May 1, 2019);
`
`1 Based on our disposition below, Petitioner’s motion for joinder is denied.
`
`B.
`
`2
`
`
`
`IPR2019-01488
`Patent 7,095,053 B2
`Lighting Sci. Grp. Corp. v. Gen. Elec. Co., No. 1:19-cv-00806 (D.
`Del. filed May 1, 2019);
`Lighting Sci. Grp. Corp. v. Signify N.V., No. 1:19-cv-00807 (D. Del.
`filed May 1, 2019);
`Lighting Sci. Grp. Corp. v. Eaton Corp., No. 1:19-cv-00808 (D. Del.
`filed May 1, 2019);
`Lighting Sci. Grp. Corp. v. Lumileds Holdings BV, No. 1:19-cv-00809
`(D. Del. filed May 1, 2019);
`Lighting Sci. Grp. Corp. v. OSRAM GmbH, No. 1:19-cv-00797 (D.
`Del. filed Apr. 30, 2019);
`Lighting Sci. Grp. Corp. v. MLS Co., No. 1:19-cv-00798 (D. Del. filed
`Apr. 30, 2019);
`Lighting Sci. Grp. Corp. v. Nichia Corp., No. 1:19-cv-01948 (N.D.
`Ga. filed Apr. 30, 2019);
`Lighting Sci. Grp. Corp. v. Cree Inc., No. 1:19-cv-00632 (E.D. Wis.
`filed Apr. 30, 2019); and
`Certain Light Emitting Diode Products, Systems, and Components
`Thereof (I), U.S. Int’l Trade Comm’n Inv. No. 337-TA-1163 (instituted
`June 20, 2019).
`
`We identified the following additional proceedings related to the
`’053 patent:
`Gen. Elec. Co. v. Lighting Sci. Grp. Corp., No. 1:19-cv-05365
`(S.D.N.Y. filed June 7, 2019);
`
`3
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`IPR2019-01488
`Patent 7,095,053 B2
`Certain Light Emitting Diode Products, Systems, and Components
`Thereof (II), U.S. Int’l Trade Comm’n Inv. No. 337-TA-1164 (instituted
`June 20, 2019); and
`Certain Light Emitting Diode Products, Systems, and Components
`Thereof (III), U.S. Int’l Trade Comm’n Inv. No. 337-TA-1168 (instituted
`June 20, 2019).
`
`In addition, Petitioner has filed another petition for inter partes review
`of the ’053 patent in IPR2019-01261. Paper 5, 1. Petitioner seeks joinder of
`this case to IPR2019-01261. Id. at 1–2. Petitioner also has filed petitions
`for inter partes review against other patents owned by Patent Owner in
`IPR2019-01259, IPR2019-01260, and IPR2019-01487. Paper 7, 1.
`
`The ’053 patent
`The ’053 patent relates to light emitting diodes (LEDs) packaged for
`high temperature operation. Ex. 1001, 1:15–17. The ’053 patent states that
`then-existing plastic LED packages had operational temperature limitations,
`and that there was “a need for an improved light emitting diode packaged for
`high temperature operation.” Id. at 1:32–37. The ’053 patent proposes an
`LED package made using the low temperature co-fired ceramic on metal
`technique (LTCC-M). Id. at 1:54–57. Among other considerations for using
`the LTCC-M technique, the ’053 patent notes that the ceramic layers of the
`LTCC-M structure must be matched to the thermal coefficient of expansion
`of a metal support board. Id. at 7:25–27.
`Figure 6 of the ’053 patent is reproduced below.
`
`C.
`
`4
`
`
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`IPR2019-01488
`Patent 7,095,053 B2
`
`
`Figure 6 depicts a cross-section of an LED packaged for high temperature
`operation. Id. at 1:66–67, 2:5–8, 4:1–2, 4:20. LED 10 is mounted on
`ceramic layer 17, which conforms to coined metal base 51 and acts as a light
`reflector. Id. at 4:21–54. Top electrode 53 of LED 10 can be connected by
`bonding wire 54 to top bonding pad 55 on ceramic 17 and through via
`section 56 to bonding pad 15A underlying metal base 51. Id. at 4:7–11. The
`bottom electrode of LED 10 can be connected to metal base 51 by way of
`bonding pad 60 and electrically and thermally conductive vias through
`ceramic 17 to metal base 51. Id. at 4:24–28. Underlying bonding pads 15A,
`l5B are coplanar with thermal base connector 16 to allow a surface-mount
`connection onto a PC board. Id. at 4:14–19.
`
`Illustrative Claim
`Of the challenged claims, claims 1, 7, 16, and 22 are independent.
`Claims 2–6 depend from claim 1; claims 8, 9, and 11–15 depend directly or
`indirectly from claim 7; claims 17–20 depend from claim 16; and claims 23,
`
`D.
`
`5
`
`
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`IPR2019-01488
`Patent 7,095,053 B2
`24, and 26–30 depend directly or indirectly from claim 22. Claim 16 is
`illustrative of the challenged claims and recites:
`16. A packaged LED for high temperature operation
`comprising:
`a metal base, the metal base including an underlying
`thermal connection pad and a pair of underlying electrical
`connection pads;
`a layer of electrically insulating material overlying the
`metal base; and
`an LED mounted on the layer of electrically insulating
`material, wherein the LED includes a pair of electrodes
`electrically connected to respective underlying electrical
`connection pads, and wherein the LED is thermally coupled to
`the metal base by one or more thermal vias, and thermally
`coupled through the metal base to the thermal connection pad.
`Id. at 10:10–23.
`
`Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 6,744,135 B2, filed May 17, 2002, issued
`June 1, 2004 (Ex. 1004, “Hasebe”);
`U.S. Patent No. 6,498,355, filed Oct. 9, 2001, issued
`Dec. 24, 2002 (Ex. 1005, “Harrah”);
`U.S. Patent No. 6,707,069 B2, filed June 18, 2002, issued
`Mar. 16, 2004 (Ex. 1006, “Song”);
`Patent Cooperation Treaty (“PCT”) Patent Application
`Publication No. WO 02/089221 A1, published Nov. 7, 2002
`(Ex. 1007, “Hashimoto”);2
`
`E.
`
`
`2 Hashimoto is a Japanese-language publication (Ex. 1007, 1–36) that was
`filed with an English-language translation (id. at 37–72) and a declaration
`attesting to the accuracy of the translation (id. at 73). Our citations to
`Hashimoto herein refer to the translation.
`
`6
`
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`IPR2019-01488
`Patent 7,095,053 B2
`PCT Patent Application Publication No. WO 02/084750
`A1, published Oct. 24, 2002 (Ex. 1026, “Sugimoto”);3
`PCT Patent Application Publication No. WO 02/089219
`A1, published Nov. 7, 2002 (Ex. 1020, “Suenaga”);4 and
`Japanese Patent Application Publication No. 2001-
`168443, published June 22, 2001 (Ex. 1021, “Oike”).5
`
`
`F.
`
`The Asserted Grounds
`Petitioner challenges claims 1–9, 11–20, 22–24, and 26–30 of the
`’053 patent on the following grounds (Pet. 4–5):
`Claims Challenged
`35 U.S.C. §
`3, 6, 18
`103(a)6
`3, 6, 18
`103(a)
`3, 6, 8, 9, 18, 23, 24
`103(a)
`
`References
`Hasebe, Harrah
`Hasebe, Song
`Hasebe, Hashimoto
`
`
`3 Sugimoto is a Japanese-language publication (Ex. 1026, 1–78) that was
`filed with an English-language translation (id. at 79–156) and a declaration
`attesting to the accuracy of the translation (id. at 157). Our citations to
`Sugimoto herein refer to the translation. Petitioner notes that it asserted a
`U.S. patent (Ex. 1019) corresponding to Sugimoto in IPR2019-01261.
`Paper 4, 3–5.
`4 Suenaga is a Japanese-language publication (Ex. 1020, 1–54) that was filed
`with an English-language translation (id. at 55–106) and a declaration
`attesting to the accuracy of the translation (id. at 107). Our citations to
`Suenaga herein refer to the translation.
`5 Oike is a Japanese-language publication (Ex. 1021, 1–6) that was filed with
`an English-language translation (id. at 7–12) and a declaration attesting to
`the accuracy of the translation (id. at 13). Our citations to Oike herein refer
`to the translation.
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’053 patent was filed before March 16, 2013 (the effective date of the
`relevant amendment), the pre-AIA version of § 103 applies.
`
`7
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`IPR2019-01488
`Patent 7,095,053 B2
`Claims Challenged
`1–9, 11–20, 22–24,
`26–30
`1–9, 11–20, 22–24,
`26–30
`
`35 U.S.C. §
`103(a)
`
`References
`Sugimoto, Suenaga
`
`103(a)
`
`Sugimoto, Oike
`
`
`G. Claim Interpretation
`Because this inter partes review is based on a petition filed after
`November 13, 2018,7 we construe each claim “in accordance with the
`ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b) (2019). Accordingly, our claim construction standard
`is the same as that of a district court. See id. Under the standard applied by
`district courts, claim terms are generally given their plain and ordinary
`meaning as would be understood by a person of ordinary skill in the art at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`“There are only two exceptions to this general rule: 1) when a patentee sets
`out a definition and acts as his own lexicographer, or 2) when the patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`1365 (Fed. Cir. 2012).
`
`
`7 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district courts.
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (codified at 37 C.F.R. pt. 42). This rule change applies to
`petitions filed on or after November 13, 2018.
`
`8
`
`
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`IPR2019-01488
`Patent 7,095,053 B2
`Petitioner contends that the term “base” should be construed to mean
`“support or foundation.” Pet. 9–11. Patent Owner contends that no
`construction of this term is necessary. Prelim. Resp. 7. Based on the current
`record, we determine that no terms require explicit construction. See, e.g.,
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’
`. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999))).
`
`
`A.
`
`II. ANALYSIS
`We now consider Petitioner’s asserted grounds and Patent Owner’s
`arguments in the Preliminary Response to determine whether Petitioner has
`met the “reasonable likelihood” standard for institution under 35 U.S.C.
`§ 314(a).
`
`Legal Standards
`A 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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`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 skill in the art; and (4) where in evidence, so-called secondary
`
`9
`
`
`
`B.
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`IPR2019-01488
`Patent 7,095,053 B2
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`559, 562 (CCPA 1978)).
`
`Level of Ordinary Skill in the Art
`Citing testimony from Dr. Wright, Petitioner contends a person
`having ordinary skill in the art would have had “at least a B.S. in mechanical
`or electrical engineering or a related field, and four years’ experience
`designing semiconductor—including LED—packages.” Pet. 8–9 (citing
`Ex. 1003 ¶ 31). Patent Owner does not dispute Petitioner’s contentions at
`this time. Prelim. Resp. 7.
`For purposes of this Decision, we adopt Petitioner’s definition of the
`level of ordinary skill in the art without the qualifier “at least,” which
`introduces ambiguity. On the present record, we are satisfied that this
`definition comports with the level of skill necessary to understand and
`implement the teachings of the ’053 patent and the asserted prior art.
`
`C. Obviousness Grounds Based on Hasebe and Any of Harrah, Song, or
`Hashimoto
`Petitioner contends the subject matter of claims 3, 6, and 18 would
`have been obvious over Hasebe and any of Harrah, Song, or Hashimoto.
`Pet. 24–48. Petitioner additionally contends the subject matter of claims 8,
`9, 23, and 24 would have been obvious over Hasebe and Hashimoto. Id. at
`48–58. Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 7–23.
`
`
`10
`
`
`
`IPR2019-01488
`Patent 7,095,053 B2
`Hasebe
`1.
`Hasebe is a U.S. patent directed to “a structure of an electronic
`apparatus provided with a metal core substrate mounting electronic parts
`thereon.” Ex. 1004, 1:7–10. Figure 25 of Hasebe is reproduced below.
`
`
`Figure 25 is a cross-sectional view of an electronic substrate. Id. at 5:46–48.
`Semiconductor part 2501 is mounted on metal core substrate 2502, which
`includes internal layer metal plate 2506 and electrode 2503. Id. at 20:38–47.
`Heat radiating electrode 2507 is connected to internal layer metal plate 2506,
`which in turn is connected and mounted via solder 2509 to heat radiating
`electrode 2508 in ceramic substrate 2504. Id.
`Metal core substrate 2502 may be formed by laminating and bonding
`“a copper foil with resin . . . or a resin pre-preg and a copper foil” to internal
`layer metal plate 2506. Id. at 11:1–4.
`
`
`Harrah
`2.
`Harrah is a U.S. patent directed to arrays of light emitting diodes.
`Ex. 1005, 1:6–7. Figure 2 of Harrah is reproduced below.
`
`11
`
`
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`IPR2019-01488
`Patent 7,095,053 B2
`
`
`
`Figure 2 illustrates a portion of an LED array. Id. at 2:26–28. In LED
`array 2, LED 28 is attached to submount 30. Id. at 4:36–38. Submount 30
`includes thermal contact 46 (e.g., a metal pad) disposed on the bottom side
`of submount 30 adjacent to electrical contacts 42 and 44. Id. at 4:55–57.
`Thermally conductive material 24 in via 12 is in direct contact with thermal
`contact 46 on submount 30 and in thermal contact with LED 28 through
`submount 30 and solder bumps 32. Id. at 4:66–5:2. Typically, submount 30
`is thin and formed from a thermally conductive material (e.g., silicon or
`ceramic materials) in order to reduce the thermal resistance provided by
`submount 30 to the flow of heat from LED 28 to metal substrate 6. Id. at
`4:38–40, 5:8–12.
`
`
`Song
`3.
`Song is a U.S. patent directed to “a light emission diode package
`provided with a reflective plate of metal for accomplishing an improved heat
`
`12
`
`
`
`IPR2019-01488
`Patent 7,095,053 B2
`dissipation effect.” Ex. 1006, 1:7–12. Figure 4a of Song is reproduced
`below.
`
`
`Figure 4a depicts a cross-section of an LED package having first ceramic
`substrate 151 and second ceramic substrate 152 mounted to the top surface
`of first ceramic substrate 151. Id. at 6:21–27. First ceramic substrate 151
`has a chip mounting area on its top surface for seating LED chip 155
`thereon. Id. at 6:27–29. Electrode 153 is formed on the top surface of first
`ceramic substrate 151 at a position around the mounting area for LED
`chip 155. Id. at 6:29–32. Electrode 153 is connected to LED chip 155
`through a plurality of wires 157. Id. at 6:32–34. Heat dissipating hole H1 is
`formed through first ceramic substrate 151 to dissipate heat from LED
`chip 155 to the outside of the LED package. Id. at 6:46–50.
`
`
`Hashimoto
`4.
`Hashimoto is a PCT patent application publication directed to “an
`LED chip mounted face down on a mounting substrate, wherein a p-type
`semiconductor layer and an n-type semiconductor layer are formed on a
`crystal of a translucent substrate.” Ex. 1007, 39. Figure 23 of Hashimoto is
`reproduced below.
`
`13
`
`
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`IPR2019-01488
`Patent 7,095,053 B2
`
`
`Figure 23 depicts a cross-sectional view of a light-emitting device. Id. at 43.
`Conductor layer 12 is connected to each electrode of LED chip 1 on
`mounting substrate 8. Id. at 50. Thermal conductive member 28, which has
`high thermal conductivity compared to insulating layer 13, is connected to
`LED chip 1 and the conductor plate 11. Id. at 51. Heat is transferred from
`LED chip 1 to conductor plate 11 through thermal conductive member 28,
`which improves heat dissipation of LED chip 1. See id. at 41.
`
`
`Claim 18
`5.
`Petitioner’s obviousness analysis for claim 18 builds upon an analysis
`of the limitations in claim 16. Pet. 24 n.7. The preamble of claim 16 recites
`“[a] packaged LED for high temperature operation.” Ex. 1001, 10:10–11.
`Petitioner concedes Hasebe does not disclose an LED package, so Petitioner
`relies on the teachings in Harrah, Song, and Hashimoto for teaching an LED
`package. Pet. 25 (citing Ex. 1005, 1:5–6, Figs. 1–7; Ex. 1006, 3:17–26,
`Figs. 3–8; Ex. 1007, 39–42, 51, Figs. 23, 30). Petitioner additionally notes
`that Hasebe pertains to improvements in heat radiating performance. Id. at
`24 (citing Ex. 1004, 2:26–30, Fig. 25).
`
`14
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`IPR2019-01488
`Patent 7,095,053 B2
`Claim 16 further recites “a metal base, the metal base including an
`underlying thermal connection pad and a pair of underlying electrical
`connection pads.” Ex. 1001, 10:12–14. To explain its mapping of this
`limitation, Petitioner provides an annotated version of Hasebe’s Figure 25,
`which is reproduced below.
`
`
`
`Pet. 26. Hasebe’s Figure 25 depicts a cross-section of an electronic
`substrate, and Petitioner has highlighted internal layer metal plate 2506
`(which is part of metal core substrate 2502) in green, heat radiating
`electrode 2507 in purple, and electrode 2503 in orange. Id. at 25 (citing
`Ex. 1003 ¶¶ 85–87; Ex. 1004, 20:40–44). Petitioner maps the recited “metal
`base” to internal layer metal plate 2506, the recited “thermal connection
`pad” to heat radiating electrode 2507, and the recited “electrical connection
`pads” to electrode 2503. Id.
`Claim 16 further recites “a layer of electrically insulating material
`overlying the metal base.” Ex. 1001, 10:15–16. Petitioner cites Hasebe’s
`teachings on “‘a copper foil with resin’ or ‘a resin pre-preg and a copper
`foil,’ which ‘is individually laminated and bonded’ to both surfaces of
`Hasebe’s metal plate [2506].” Pet. 27 (quoting Ex. 1004, 11:1–4).
`
`15
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`IPR2019-01488
`Patent 7,095,053 B2
`Petitioner contends that certain portions of the resin layers overlie metal
`plate 2506. Id. (citing Ex. 1003 ¶ 92; Ex. 1004, Fig. 25 (annotated)).
`Claim 16 further recites “an LED mounted on the layer of electrically
`insulating material.” Ex. 1001, 10:17–18. Although Petitioner
`acknowledges that Hasebe does not teach this limitation, Petitioner relies on
`LED dies in Harrah, Song, and Hashimoto for teaching this limitation.
`Pet. 28 (citing Ex. 1003 ¶ 93); see also id. at 28 (citing Ex. 1005, 4:36–54,
`Figs. 1, 2) (Harrah’s LED 28), 29 (citing Ex. 1006, 6:21–40, Fig. 4a)
`(Song’s LED chip 155), 29–30 (citing Ex. 1007, 39–42, 52–53, Figs. 23, 30)
`(Hashimoto’s LED chip 1).
`Claim 16 further recites “the LED includes a pair of electrodes
`electrically connected to respective underlying electrical connection pads.”
`Ex. 1001, 10:18–20. Petitioner cites Hasebe’s teachings of semiconductor
`part 316 being connected to electrodes 308 and 317. Pet. 33 (citing
`Ex. 1004, 11:35–39, Fig. 3). Petitioner also explains its contentions using
`another annotated version of Hasebe’s Figure 25, which is reproduced
`below.
`
`
`Id. at 34. In this annotated version of Hasebe’s Figure 25, Petitioner has
`indicated the electrodes of Hasebe’s semiconductor part (i.e., a “pair of
`
`16
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`IPR2019-01488
`Patent 7,095,053 B2
`electrodes”) in orange in the upper portion of the figure. Id. (citing Ex. 1003
`¶ 107; Ex. 1004, Fig. 25). Petitioner also highlights underlying electrical
`connection pads 2503 in orange in the lower portion of the figure. Id.
`Petitioner contends the electrodes and pads are electrically connected via an
`electrical connection shown in blue. Id.
`Claim 16 further recites “the LED is thermally coupled to the metal
`base by one or more thermal vias.” Ex. 1001, 10:20–21. Petitioner cites
`Hasebe’s “heat radiating electrode 2507 connected to an internal metal plate
`2506 of the metal core substrate.” Pet. 35 (quoting Ex. 1004, 20:43–44).
`Petitioner explains its contentions using yet another annotated version of
`Hasebe’s Figure 25, which is reproduced below.
`
`
`Id. at 36. In this annotated version of Hasebe’s Figure 25, Petitioner has
`indicated heat radiating electrode 2507 (i.e., a “thermal via”) in pink and the
`flow of heat with red arrows from semiconductor part 2501 to metal plate
`2506 (in green). Id. (citing Ex. 1003 ¶ 111; Ex. 1004, Fig. 25).
`Claim 16 further recites the LED is “thermally coupled through the
`metal base to the thermal connection pad.” Ex. 1001, 10:22–23. To explain
`its contentions for this limitation, Petitioner provides still another annotated
`version of Hasebe’s Figure 25, which is reproduced below.
`
`17
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`IPR2019-01488
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`
`
`Pet. 38. In this annotated version of Hasebe’s Figure 25, Petitioner has
`indicated with red arrows the flow of heat from Hasebe’s metal plate 2506
`(i.e., the “metal base,” in green) to heat radiating electrode 2507 (i.e., the
`“thermal connection pad,” in purple). Id. at 36–38 (citing Ex. 1003 ¶ 114;
`Ex. 1004, Fig. 25).
`Petitioner contends an ordinarily skilled artisan “would have found it
`obvious to mount any of [Harrah’s, Song’s, or Hashimoto’s] LEDs on the
`insulating layers of Hasebe’s package—the simple, predictable use of an
`LED as Hasebe’s semiconductor.” Pet. 30 (citing Ex. 1003 ¶¶ 50, 72–78,
`97). Petitioner notes common teachings in Hasebe, Harrah, Song, and
`Hashimoto on heat dissipation. Id. at 30–31 (citing, inter alia, Ex. 1003
`¶ 98). Petitioner further contends that each of Harrah’s, Song’s, and
`Hashimoto’s LED chips is compatible with Hasebe’s package. Id. at 31–32
`(citing Ex. 1003 ¶¶ 101–103). According to Petitioner, an “[ordinarily
`skilled artisan] designing a heat dissipating LED package would have been
`aware of all four references and would have had the technical know-how to
`combine the prior art LEDs with Hasebe’s package.” Id. at 32–33 (citing
`Ex. 1003 ¶ 104).
`
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`Petitioner puts forth further analysis for the limitations in claim 18
`that are added to claim 16 (see Pet. 38–39), but we need not discuss it,
`because our disposition turns on Petitioner’s underlying analysis of claim 16.
`Patent Owner argues “the Petition does not allege that a[n ordinarily
`skilled artisan] would have been motivated to make the proposed
`combinations, nor does the Petition provide any reason why the [artisan]
`would have been so motivated, as the law of obviousness requires.” Prelim.
`Resp. 19 (citing Pet. 28–33). In particular, Patent Owner argues that
`Petitioner provides no explanation why or how its proposed modification of
`Hasebe would have been simple or predictable. Id. at 19–20. Patent Owner
`also argues that Petitioner’s allusion to common teachings in the references
`on heat dissipation undermines the proposed combination because, as
`acknowledged by Petitioner, the secondary references “already had thermal
`solutions to the reality of heat created by LED die[s].” Id. at 20 (citing
`Pet. 30–31). Patent Owner also cites Petitioner’s contentions that “Harrah,
`Song, and Hashimoto could be physically connected to Hasebe’s
`semiconductor package” and contends these “amount to allegations of what
`the [ordinarily skilled artisan] could have done, not a reason why the
`[artisan] would have done so.” Id. at 23 (citing Pet. 30–33).
`We are persuaded by Patent Owner’s arguments. “[O]bviousness
`concerns whether a skilled artisan not only could have made but would have
`been motivated to make the combinations or modifications of prior art to
`arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d
`1064, 1073 (Fed. Cir. 2015). In this case, Petitioner puts forth evidence that
`Hasebe’s semiconductor package might be combinable with the LEDs taught
`by the Harrah, Song, and Hashimoto (see Pet. 30–32), but this does not mean
`
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`an ordinarily skilled artisan would have had a reason to do so. Moreover,
`Petitioner relies on Dr. Wright’s testimony that the combinations would have
`been simple and predictable (see Pet. 30 (citing Ex. 1003 ¶¶ 50, 72–78, 97)),
`but Dr. Wright does not provide a reason why this would have been so.
`Dr. Wright’s general statements about the state of the art (see Ex. 1003
`¶¶ 50, 72–75) and his background information about the secondary
`references (see id. ¶¶ 76–78) do nothing to support the simplicity or
`predictability of the combination.
`In addition, Dr. Wright’s opinion on the alleged obviousness and
`simplicity of the combination (see id. ¶ 97) appears to be based on nothing
`more than his ipse dixit; he provides no explanation why an ordinarily
`skilled artisan would have made the combination. We also agree with Patent
`Owner (Prelim. Resp. 20) that the references’ common teachings on heat
`dissipation do not amount to a reason to combine the references. See
`Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed.
`Cir. 2017) (agreeing with the Board that a broad characterization of two
`references falling within the same alleged field, without more, is not a
`sufficient rationale to support an obviousness conclusion); Microsoft Corp.
`v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (affirming the
`Board’s finding that two references addressing the same technical issues,
`without more, is insufficient to show persuasively that a relevant artisan
`would have recognized some deficiency in one reference or had some other
`reason to motivate looking to the other and combining them). For these
`reasons, we find insufficient Petitioner’s purported rationale to combine
`Harrah, Song, or Hashimoto with Hasebe.
`
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`Thus, Petitioner’s analysis for claim 16 is deficient. Because
`Petitioner’s analysis of dependent claim 18 builds about its analysis for
`claim 16 (see Pet. 38–39), Petitioner’s further analysis is similarly deficient.
`Based on the present record, we determine that Petitioner has not established
`a reasonable likelihood that it would prevail in showing that the subject
`matter of claim 18 would have been obvious over the combination of Hasebe
`and any of Harrah, Song, or Hashimoto.
`
`Claims 3, 6, 8, 9, 23, and 24
`6.
`Petitioner’s obviousness contentions for claims 3, 6, 8, 9, 23, and 24
`incorporate the same deficient analysis discussed above with respect to
`claim 18. See Pet. 39–58. Petitioner’s analysis of these claims does not cure
`the deficiencies. Thus, we determine that Petitioner has not established a
`reasonable likelihood that it would prevail in showing that the subject matter
`of 3, 6, 8, 9, 23, and 24 would have been obvious over the combination of
`Hasebe and any of Harrah, Song, or Hashimoto.
`
`D. Obviousness Grounds Based on Sugimoto and Suenaga or Oike
`Petitioner contends the subject matter of claims 1–9, 11–20, 22–24,
`and 26–30 would have been obvious over Sugimoto and Suenaga or Oike.
`Pet. 58–89. Patent Owner disputes Petitioner’s contentions. Prelim.
`Resp. 24–34.
`
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`Sugimoto
`1.
`Sugimoto is a PCT patent application publication directed to a light
`source device using a light emitting diode. Ex. 1026, 81. Figure 16 of
`Sugimoto is reproduced below.
`
`
`Figure 16 is a cross-sectional view of light source device 1. Id. at 93, 110.
`Two LED chips 2 are installed on radiator plate 3 and are electrically
`connected in series via wiring 8. Id. at 110. Wiring 8 is provided on the
`upper side of insulating member 4, which is separated into three sections by
`LED chips 2. Id. at 111. Opening 3c is provided in each end of radiator
`plate 3 and hole 4e is provided in each end of insulating member 4. Id.
`Substantially rod-shaped electrode pin 23, which is made of an
`electroconductive material, is inserted into hole 4e in insulating member 4
`and opening 3c in the radiator plate 3 until its distal end protrudes from the
`lower surface of radiator plate 3. Id.
`
`
`Suenaga
`2.
`Suenaga is a Japanese patent application publication directed to “a
`light-emitting device used for various light sources such as a backlight light
`
`22
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`source, display, or illumination, and optical sensors.” Ex. 1020, 57.
`Figure 1B of Suenaga is reproduced below.
`
`
`Figure 1B is a schematic cross-sectional view illustrating a light-emitting
`device. Id. at 60. Metal package 5 has concave portion a to contain light-
`emitting element 1. Id. at 61. Each base portion b of metal package 5 has
`through holes bounded by insulation member 3. Id. Lead electrode pins 2
`are inserted in the through holes. Id. The electrodes of light-emitting
`element 1 are electrically connected to lead electrode pins 2 via wires 4. Id.
`The bottom/mounting surface of lead electrode pins 2 may have an inverted
`T-shape, an open-fan-type shape, or an inverse tapered-type shape. Id. at
`68–69.
`
`Oike
`3.
`Oike is a Japanese patent application publication directed to an optical
`package housing an optical semiconductor element that effectively dissipates
`heat. Ex. 1021, Abstr. Figure 2 of Oike is reproduced below.
`
`23
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`
`
`Figure 2 is a cross-sectional view of an optical package having base 1,
`frame 2, and cover 3. Id. ¶ 17, p. 11. Base 1, frame 2, and cover 3 form a
`container that houses optical semiconductor element 4 and drive circuit
`element 5. Id. ¶ 17. Optical semiconductor element 4 is mounted on the
`upper surface of base 1, which also includes substantially circular electrode
`pads 10 on its lower surface for connection to the outside. Id. ¶ 19. Base 1
`may include opening 21 in which heat sink 20 is disposed. Id. ¶ 26. Drive
`circuit element 5 is mounted on heat sink 20, and heat sink 20 includes
`electrode pads 10 on its lower surface. Id. Electrode pads 10 dissipate heat
`and transmit signals to external electric circuit substrate 11, which may
`include metallized layers made of tungsten or molybdenum-manganese. See
`id. ¶ 19.
`
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`Claim 16
`