KINGBRIGHT ELECTRONICS CO. LTD., KINGBRIGHT CORP., SUNLED CORP., KINGBRIGHT CO. LLC, SUNLED CO. LLC, and SUNSCREEN CO. LTD.v.CREE, INC.

Patent Trial and Appeal Board

Aug 10, 2015

13040088 (P.T.A.B. Aug. 10, 2015)

Trials@uspto.gov Paper 8
571–272–7822 Entered: August 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

KINGBRIGHT ELECTRONICS CO. LTD., KINGBRIGHT CORP.,
SUNLED CORP., KINGBRIGHT CO. LLC, SUNLED CO. LLC, and
SUNSCREEN CO. LTD.,
Petitioner,

v.

CREE, INC.,
Patent Owner.
_______________

Case IPR2015-00748
Patent 8,766,298 B2
_______________

Before KEVIN F. TURNER, BENJAMIN D. M. WOOD, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2015-00748
Patent 8,766,298 B2

2
I. INTRODUCTION
Kingbright Electronics Co. Ltd., Kingbright Corp., SunLED Corp.,
Kingbright Co. LLC, SunLED Co. LLC, and Sunscreen Co. Ltd.
(collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an
inter partes review of claims 1–17 of U.S. Patent No. 8,766,298 B2 (Ex.
1001, “the ’298 patent”). Cree, Inc. (“Patent Owner”) filed a Preliminary
Response (Paper 7, “Prelim. Resp.”) to the Petition. We have jurisdiction
under 35 U.S.C. § 314, which provides that an inter partes review may not
be instituted “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a).
For the reasons set forth below, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing the unpatentability of claims
1–17 of the ’298 patent. Accordingly, the Petition is denied, and no trial is
instituted.
A. Related Proceedings
The parties indicate that the ’298 patent is at issue in the following
district court cases: Cree, Inc. v. Kingbright Electronics Co., Ltd., No. 14-
cv-621 (W.D. Wis.); Cree, Inc. v. Harvatek Corp., No. 14-cv-620 (W.D.
Wis.); Cree, Inc. v. Honeywell International Inc., No. 14-cv-737 (W.D.
Wis.); and Cree, Inc. v. Feit Electric Co., Inc., No. 15-cv-22 (W.D. Wis.).
Pet. 1; Paper 6, 2. Patent Owner indicates that the ’298 patent also is at issue
in the following International Trade Commission (“ITC”) investigation: In
re Light-Emitting Diode Products and Components Thereof, Inv. No. 337-
TA-3051. Paper 6, 2. Petitioner indicates that the ’298 patent claims
IPR2015-00748
Patent 8,766,298 B2

3
priority to U.S. Patent No. 7,910,938 B2, which is the subject of the petition
for inter partes review in IPR2015-00747. Pet. 1.
B. The ’298 Patent
The ’298 patent relates to an encapsulating material for a light
emitting diode (“LED”). Ex. 1001, col. 1, ll. 13–16. According to the ’298
patent, when a conventional concave meniscus is used to encapsulate a side
view surface mount LED, the concave shape becomes a disadvantage
because it may reduce flux and color uniformity. Id. at col. 2, ll. 35–39.
The ’298 patent describes a surface mount LED package that differs from
the conventional surface mount LED package discussed above because it
includes a very slight convex or concave meniscus that is maintained within
about 50 microns of the top surface of the LED package. Id. at col. 4, ll. 31–
34. The ’298 patent explains that a meniscus with this 50-micron dimension
provides better uniformity than a conventional meniscus. Id.
C. Illustrative Claim
Claim 1 is independent and is reproduced below.
1. A light emitting diode (LED) package, comprising:
an LED with a Lambertian or near Lambertian emission
pattern;
a package recess having reflective surfaces, said LED
mounted in said package recess;
an encapsulant in said package recess and covering said
LED, a top surface of said encapsulant including a curved
meniscus that is within about 50 microns of a top surface of
said package; and
a phosphor in said encapsulant, wherein said phosphor is
proximate said LED.
Id. at col. 5, ll. 49–59.
IPR2015-00748
Patent 8,766,298 B2

4
D. Evidence of Record
Petitioner relies on alleged Applicant Admitted Prior Art (“AAPA”)
and the following references (see Pet. 2–6):
Reference Exhibit No.
U.S. Patent No. 5,998,925 (“Shimizu”) Ex. 1003
U.S. Publication No. 2003/0008431 A1 (“Matsubara”) Ex. 1004
U.S. Patent No. 6,610,563 B1 (“Waitl”) Ex. 1005
U.S. Publication No. 2004/0046242 A1 (“Asakawa”) Ex. 1006
JP Publication No. 2001-301230 (“Uemura”) Ex. 1007
U.S. Publication No. 2006/0157828 A1 (“Sorg”) Ex. 1008
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (see Pet. 10):
Claim(s) Basis Reference(s)
1, 3–6, 8, 9, 11–14, and 17 35 U.S.C. § 103(a) AAPA
1–10 and 12–17 35 U.S.C. § 103(a) Asakawa
1–17 35 U.S.C. § 103(a) AAPA or Asakawa in
view of Sorg,
Matsubara, Uemura,
Shimizu, Waitl, or
Asakawa
II. ANALYSIS
A. Claim Construction
The claims of an unexpired patent are interpreted using the broadest
reasonable interpretation in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
No. 2014-1301, 2015 WL 4097949, at *7–8 (Fed. Cir. July 8, 2015). On
this record and for purposes of this decision, we determine that no claim
terms require express construction.
IPR2015-00748
Patent 8,766,298 B2

5
B. Asserted Grounds of Unpatentability
1. 50-Micron Limitation
Independent claim 1 recites “a top surface of said encapsulant
including a curved meniscus that is within about 50 microns of a top surface
of said package” (Ex. 1001, col. 5, ll. 55–57), independent claim 8 recites
“said encapsulant having an encapsulant curved top surface with a highest or
lowest portion that is within 50 microns of a package top surface” (id. at col.
6, ll. 13–15), independent claim 16 recites “a top surface of said encapsulant
including a domed meniscus that is within about 50 microns of a top surface
of said package” (id. at col. 6, ll. 42–44), and independent claim 17 recites
“said encapsulant having a curved top surface with a highest or lowest
portion that is within 50 microns of a package top surface” (id. at col. 6, ll.
57–59). We refer to the above limitations in the challenged independent
claims collectively as the “50-micron limitation.”
Petitioner argues that the 50-micron limitation “effectively removes
[an] innate physical property of fluid encapsulants from the public domain”
and, thus, cannot preserve the validity of the challenged claims. Pet. 12 n.3.
Petitioner’s argument is not persuasive. Petitioner does not provide a
specific explanation or identify specific evidence showing that a fluid
encapsulant innately forms a meniscus or dome with a top surface that is
within about 50 microns of a top surface of an LED package. Id. Further,
the ’298 patent indicates that conventional encapsulants do not form a
meniscus or dome with a top surface that is within about 50 microns of a top
surface of an LED package. Ex. 1001, col. 3, ll. 39–44, col. 4, ll. 25–34. As
such, we are not persuaded that the 50-micron limitation represents an innate
physical property of fluid encapsulants.
IPR2015-00748
Patent 8,766,298 B2

6
Petitioner also argues that the “specification uses the terms ‘very
slight,’ ‘moderate(ly),’ or ‘modest’ dome interchangeably when referring to
a domed meniscus of 50 microns or less.” Pet. 11, n.2 (citing Ex. 1001, col.
4, ll. 29–34, 60–63, col. 5, ll. 14–17). Petitioner contends that, as a result,
prior art that shows a very slight, moderate, or modest meniscus teaches the
50-micron limitation. Pet. 11. We are not persuaded, however, that the ’298
patent creates an equivalence between the descriptors “very slight,”
“moderate,” or “modest,” and the specific measurement of the 50-micron
limitation. Thus, we are not persuaded that the disclosure of a very slight,
moderate, or modest meniscus in the prior art teaches or suggests the 50-
micron limitation.
2. Obviousness of Claims 1, 3–6, 8, 9, 11–14, and 17 over
AAPA
Petitioner argues that claims 1, 3–6, 8, 9, 11–14, and 17 would have
been obvious over AAPA. Pet. 10. We have reviewed Petitioner’s
assertions and supporting evidence, and, for the reasons discussed below,
Petitioner does not demonstrate a reasonable likelihood of prevailing in
showing that claims 1, 3–6, 8, 9, 11–14, and 17 would have been obvious
over AAPA.
Petitioner argues that Figure 1 of the ’298 patent is AAPA, and Figure
3 of the ’298 patent is an LED package that meets the 50-micron limitation.
Pet. 15–16. According to Petitioner, the top surfaces of the encapsulants in
Figures 1 and 3 “are identical in curvature and maximum departure from the
top surface of the package.” Id. Petitioner argues that, as a result, Figure 1
of the ’298 patent teaches the 50-micron limitation of the challenged claims.
Id. Patent Owner responds that Figures 1 and 3 of the ’298 patent are not
drawn to scale and, thus, cannot be used for a dimensional comparison.
IPR2015-00748
Patent 8,766,298 B2

7
Prelim. Resp. 10–12, 24–25. Patent Owner also argues that the ’298 patent
indicates that the meniscus in Figure 1 is different than the meniscus in
Figure 3. Id. at 25.
We agree with Patent Owner that Petitioner has not shown sufficiently
that AAPA teaches the 50-micron limitation. Petitioner does not identify
any teaching in the ’298 patent that the top surface of the meniscus in Figure
1 is within about 50 microns of the top surface of the LED package. Pet.
15–16. Further, Petitioner’s comparison of Figure 1 to Figure 3 is not
persuasive because Petitioner does not provide a specific explanation or
identify specific evidence showing that Figures 1 and 3 are drawn to scale.
1

Id.; see Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005)
(“[U]nstated assumptions in prior art patent drawings cannot be the basis for
challenging the validity of claims reciting specific dimensions not disclosed
directly in such prior art.”). Petitioner’s comparison of Figure 1 to Figure 3
also is not persuasive because the ’298 patent expressly distinguishes the
meniscus in Figure 1 from the meniscus in Figure 3. Specifically, the ’298
patent states that Figure 1 shows a conventional LED package with a
meniscus that reduces uniformity (Ex. 1001, col. 3, ll. 39–44), whereas
Figure 3 shows an LED package with a meniscus that is maintained within
about 50 microns of the top surface of the package so that it improves
uniformity (id. at col. 4, ll. 25–34). For the foregoing reasons, Petitioner
does not demonstrate a reasonable likelihood of prevailing in showing that
the 50-micron limitation of the challenged claims would have been obvious
over AAPA.

1
Patent Owner, on the other hand, provides a specific explanation indicating
that Figure 3 is not drawn to scale. Prelim. Resp. 10–12.
IPR2015-00748
Patent 8,766,298 B2

8
3. Obviousness of Claims 1–10 and 12–17 over Asakawa
Petitioner argues that claims 1–10 and 12–17 would have been
obvious over Asakawa. Pet. 10. We have reviewed Petitioner’s assertions
and supporting evidence, and, for the reasons discussed below, Petitioner
does not demonstrate a reasonable likelihood of prevailing in showing that
claims 1–10 and 12–17 would have been obvious over Asakawa.
Petitioner argues that Figure 2B of Asakawa shows a meniscus that is
substantially similar to the meniscus in AAPA. Pet. 20–21. We agree with
Patent Owner that Petitioner has not shown sufficiently that Asakawa
teaches the 50-micron limitation. Prelim. Resp. 28. Petitioner does not
identify any teaching in Asakawa that the top surface of the meniscus in
Figure 2B is within about 50 microns of the top surface of the LED package.
Pet. 20–21. Further, Petitioner’s comparison of Figure 2B of Asakawa to
AAPA is not persuasive because Petitioner does not provide a specific
explanation or identify specific evidence showing that Figure 2B of
Asakawa is drawn to scale. Id.; see Nystrom, 424 F.3d at 1149. Petitioner’s
comparison of Figure 2B of Asakawa to AAPA also is not persuasive
because, as discussed above, Petitioner has not shown sufficiently that the
meniscus in AAPA teaches the 50-micron limitation. See supra Section
II.B.2. For the foregoing reasons, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that the 50-micron limitation
of the challenged claims would have been obvious over Asakawa.
4. Obviousness of Claims 1–17 over AAPA or Asakawa in
view of Sorg, Matsubara, Uemura, Shimizu, Waitl or
Asakawa
Petitioner argues that claims 1–17 would have been obvious over
AAPA or Asakawa in view of Sorg, Matsubara, Uemura, Shimizu, Waitl, or
IPR2015-00748
Patent 8,766,298 B2

9
Asakawa. Pet. 10. We have reviewed Petitioner’s assertions and supporting
evidence, and, for the reasons discussed below, Petitioner does not
demonstrate a reasonable likelihood of prevailing in showing that claims 1–
17 would have been obvious over AAPA or Asakawa in view of Sorg,
Matsubara, Uemura, Shimizu, Waitl, or Asakawa.
Petitioner argues that Figure 4A of Sorg shows a slight or very slight
meniscus and, thus, teaches the 50-micron limitation. Pet. 17. We agree
with Patent Owner that Petitioner has not shown sufficiently that Sorg
teaches the 50-micron limitation. Prelim. Resp. 26. Petitioner does not
identify any teaching in Sorg that the top surface of the meniscus in Figure
4A is within about 50 microns of the top surface of the LED package. Pet.
17. Further, Petitioner’s characterization of the meniscus in Figure 4A of
Sorg as slight or very slight is not persuasive because Petitioner does not
provide a specific explanation or identify specific evidence showing that
Figure 4A of Sorg is drawn to scale. Id.; see Nystrom, 424 F.3d at 1149.
Petitioner argues that Figures 7A–7D of Matsubara show a moderate
or modest dome and, thus, teach the 50-micron limitation. Pet. 17–18. We
agree with Patent Owner that Petitioner has not shown sufficiently that
Matsubara teaches the 50-micron limitation. Prelim. Resp. 26–27.
Petitioner does not identify any teaching in Matsubara that the top surface of
the dome in Figures 7A–7D is within about 50 microns of the top surface of
the LED package. Pet. 17–18. Further, Petitioner’s characterization of the
dome in Figures 7A–7D of Matsubara as moderate or modest is not
persuasive because Petitioner does not provide a specific explanation or
identify specific evidence showing that Figures 7A–7D of Matsubara are
drawn to scale. Id.; see Nystrom, 424 F.3d at 1149.
IPR2015-00748
Patent 8,766,298 B2

10
Petitioner argues that Figure 2 of Uemura shows a moderate or
modest dome and, thus, teaches the 50-micron limitation. Pet. 19–20. We
agree with Patent Owner that Petitioner has not shown sufficiently that
Uemura teaches the 50-micron limitation. Prelim. Resp. 28. Petitioner does
not identify any teaching in Uemura that the top surface of the dome in
Figure 2 is within about 50 microns of the top surface of the LED package.
Pet. 19–20. Further, Petitioner’s characterization of the dome in Figure 2 of
Uemura as moderate or modest is not persuasive because Petitioner does not
provide a specific explanation or identify specific evidence showing that
Figure 2 of Uemura is drawn to scale. Id.; see Nystrom, 424 F.3d at 1149.
Petitioner argues that Figure 2B of Waitl shows a meniscus that is
substantially similar to the meniscus in AAPA. Pet. 21–22. We agree with
Patent Owner that Petitioner has not shown sufficiently that Waitl teaches
the 50-micron limitation. Prelim. Resp. 29–30. Petitioner does not identify
any teaching in Waitl that the top surface of the meniscus in Figure 2B is
within about 50 microns of the top surface of the LED package. Pet. 21–22.
Further, Petitioner’s comparison of Figure 2B of Waitl to AAPA is not
persuasive because Petitioner does not provide a specific explanation or
identify specific evidence showing that Figure 2B of Waitl is drawn to scale.
Id.; see Nystrom, 424 F.3d at 1149. Petitioner’s comparison of Figure 2B of
Waitl to AAPA also is not persuasive because, as discussed above, Petitioner
has not shown sufficiently that the meniscus in AAPA teaches the 50-micron
limitation. See supra Section II.B.2.
For the foregoing reasons, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that the 50-micron limitation
IPR2015-00748
Patent 8,766,298 B2

11
of the challenged claims would have been obvious over AAPA or Asakawa
in view of Sorg, Matsubara, Uemura, Shimizu, Waitl, or Asakawa.
III. CONCLUSION
Petitioner does not demonstrate a reasonable likelihood of prevailing
on its challenge to the patentability of claims 1–17 of the ’298 patent as
unpatentable under 35 U.S.C. § 103.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.
IPR2015-00748
Patent 8,766,298 B2

12
PETITIONER:

Thomas S. Reynolds II
Marlee A. Jansen
Jeremy Adelson
HANSEN REYNOLDS DICKINSON CRUEGER LLC
treynolds@hrdclaw.com
mjansen@hrdclaw.com

PATENT OWNER:

Rodger Carreyn
David Pekarek Krohn
Christopher G. Hanewicz
PERKINS COIE LLP
rcarreyn@perkinscoie.com
Kingbright-Cree-IPR@perkinscoie.com