Samsung Electronics America, Inc.v.LED Tech Development, LLC

Patent Trials and Appeals Board

Oct 20, 2014

09044559 - (R) (P.T.A.B. Oct. 20, 2014)

Trials@uspto.gov Paper 27
571-272-7822 Entered: October 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and
SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

LED TECH DEVELOPMENT, LLC,
Patent Owner.
____________

Case IPR2014-00590
Patent 6,095,661

Before KRISTEN L. DROESCH, JENNIFER S. BISK, and
JAMES B. ARPIN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Samsung Electronics America, Inc.; Samsung Telecommunications
America, LLC; and Samsung Electronics Co., Ltd. (collectively
“Petitioner”) filed a Request for Rehearing of our Decision of September 3,
2014 (Paper 23, “Dec. on Inst.” or “Decision”). Paper 25 (“Req. Reh’g”).
Our Decision instituted trial only as to claim 31. Dec. on Inst. 21. Petitioner
requests rehearing of our Decision not to review claims 33 and 37 of U.S.
Patent No. 6,095,661 (“the ’661 Patent”). Req. Reh’g 2. For the reasons
that follow, Petitioner’s request for rehearing is denied.
II. STANDARD OF REVIEW
In its request for rehearing, the dissatisfied party must specifically
identify all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was previously addressed. 37
C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition
will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
III. DISCUSSION
Petitioner contends that we misapprehended or overlooked the
following matters:
(a) Petitioner’s argument and evidence as establishing that all LEDs shift
color with changing current, thus, establishing the relationship
between applied current and characteristic color spectrum output
required by dependent claim 33 (Req. Reh’g 2, 4–8); and
(b) Garriss in combination with LT1300 teaches frequency and pulse
width knobs that would provide a fixed PWM (pulse width
modulation) strobe signal to the LT1300 shutdown pin that is settled
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in advance, thus, Garriss in combination with LT1300 renders
dependent claim 37 obvious (id. at 2–3, 8–11).
(a) All LEDs Have a Characteristic Color Spectrum Output That
Varies Based on Applied Current
Claim 33 depends from independent claim 31. We instituted review
of claim 31. Dec. on Inst. 21. Claim 33 further recites: “the one or more
LEDs comprise one or more LEDs each one having a characteristic color
spectrum output that varies based on applied current.” In our Decision, we
determined that Petitioner’s supporting evidence did not provide a sufficient
factual basis to demonstrate that LT1300’s LEDs have a characteristic color
spectrum output that varies based on applied current. Dec. on Inst. 18.
Petitioner argues that we “misapprehended Petitioner’s arguments and
incorrectly interpreted Petitioner’s evidence as establishing merely that
GaN-based [(Gallium Nitride-based)] LEDs have a characteristic color
spectrum that varies based on applied current.” Req. Reh’g 4 (citing Dec. on
Inst. 18). Petitioner asserts that we did not account properly for Petitioner’s
factual evidence establishing that all LEDs have a characteristic color
spectrum that varies based on applied current. Id. at 4–6 (citing Pet. 18, 19,
31; Ex. 1103). Specifically, Petitioner directs attention to the following
statements in Dr. Horenstein’s Declaration: (1) “if you adjust the current,
you will adjust the color spectrum of the LEDs, and conversely, if you
maintain a constant current, you will maintain the color spectrum of the
LEDs. Accordingly, a prior art reference teaching maintaining or adjusting
current inherently teaches maintaining or adjusting LED color spectrum;”
and (2) “there is a direct relationship between the current through an LED
and the color spectrum of an LED.” Req. Reh’g 5 (quoting Ex. 1103 ¶ 19)
(added emphasis omitted). Based on the foregoing, Petitioner asserts that
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“[t]hese general statements by Dr. Horenstein clearly refer to the properties
of all LEDS, and are not limited to a particular type of LED.” Id. (emphasis
added).
Petitioner further directs our attention to the following statements in
Dr. Horenstein’s Declaration: (1) “[p]ulsing the LEDs with pulses of the
same current level will simply result in pulses of light of a particular color,
where the color corresponds to that particular level of current. The use of
constant LED current with or without pulsing will provide the same benefit
of preserving the color spectrum of the LED;” and (2) “[o]ne of ordinary
skill in the art . . . would know that maintaining constant current would
maintain an LED color spectrum, and that varying the current would vary
the LED color spectrum.” Req. Reh’g 6 (quoting Ex. 1103 ¶¶ 92, 94) (added
emphasis omitted). Based on the foregoing, Petitioner asserts that Dr.
Horenstein’s statements are “directed to all LEDs and provide[] evidentiary
support for the conclusion that the LEDs disclosed in LT1300 have a
characteristic color spectrum output that varies based on applied current.”
Id. (emphasis added).
Petitioner further contends that Dr. Horenstein’s reference to GaN-
based LEDs was exemplary only and merely used as corroboration of Dr.
Horenstein’s conclusions relevant to LEDs in general. Req. Reh’g 5–6
(quoting Ex. 1103 ¶ 93). Petitioner asserts that nowhere did Dr. Horenstein
suggest that the relationship of color and current in LEDs was a
phenomenon unique to GaN-based LEDs. Req. Reh’g 6.
In addition, Petitioner asserts that we overlooked Patent Owner’s
acknowledgement that that the color spectrum of an LED is a function of the
current applied. Req. Reh’g 6–7. As demonstrating Patent Owner’s
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acknowledgment, Petitioner directs our attention to the following portion of
the Preliminary Response, in which:
Petitioner alleges that “the ’661 Patent admits that it was known
in the prior art that the color spectrum of an LED was a
function of the current applied (each level of current generates a
different spectrum).” What this neglects to mention is that each
different level of current also changes the light output level.
Id. at 7 (quoting Prelim. Resp. 21) (added emphasis omitted).
Initially, we are not persuaded that we misapprehended or overlooked
arguments and evidence presented in the Petition because the Request for
Rehearing does not point to where each matter now argued was addressed
previously in the Petition. See 37 C.F.R. § 42.71(d). In particular, the
Request for Rehearing does not identify where the Petitioner asserted
previously that Dr. Horenstein’s statements apply to all LEDs in general,
and that Dr. Horenstein’s statements are not limited to GaN-based LEDs.
Rather, the Petition directs our attention to GaN-based LEDs as
demonstrating the LED current to color spectrum: “[t]his direct relationship
of LED current to color spectrum is cited in a prior art paper entitled ‘GaN
based LEDs with different recombination zones.’” (Pet. 19 (citing Ex. 1101,
col. 11, ll. 52–63; Ex. 1112)). Moreover, Petitioner does not provide
persuasive evidence to demonstrate that Dr. Horenstein’s non-specific
statements regarding LEDs, and statements regarding exemplary GaN-based
LEDs must encompass all LEDs. See Ex. 1103 ¶ 19 (citing Ex. 1101, Fig. 6;
col. 11, ll. 52–63; Ex. 1112); ¶¶ 92–95. Similarly, Petitioner does not
provide persuasive evidence or argument to demonstrate that Patent Owner’s
statements allegedly acknowledging that that the color spectrum of an LED
is a function of the current applied (see Prelim. Resp. 21) must include all
LEDs.
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Therefore, we are not persuaded that Petitioner argued previously that
all LEDs have a characteristic color spectrum that varies based on applied
current. Further, even if Petitioner had made that argument, we are not
persuaded that Petitioner has provided sufficient factual evidence to support
that argument. Consequently, we are not persuaded that we abused our
discretion in denying review of dependent claim 33.
(b) The Combination of LT1300 and Garriss Teaches a Fixed PWM Strobe
Signal Having a Fixed Frequency and Width Settled in Advance by
Adjustment Knobs
Claim 37 depends from independent claim 34. Petitioner’s ground of
unpatentability for claim 34 was based on anticipation by LT1300. Pet. 4,
18–19, 27–30, 33–34. We did not institute review of independent claim 34.
Dec. on Inst. 21. We determined that Petitioner’s supporting evidence did
not provide a sufficient factual basis to demonstrate that LT1300 discloses
“an electrical control circuit that selectively applies pulsed power . . . to the
LEDs to . . . maintain a predetermined light output level of the LED units as
a charge on the DC voltage source varies” (i.e., the “maintain a
predetermined light output level” limitation), as required by claim 34. Id. at
19–20.
Dependent claim 37 further recites: “a machine-vision imaging
device; and [] an image processor coupled to receive image signals from the
imaging device.” Petitioner’s ground of unpatentability for claim 37 was
based on obviousness over LT1300 in view of Garriss. Pet. 4, 19, 35–36.
Specifically, Petitioner relied on Garriss for teaching the machine-vision
imaging device and image processor recited in claim 37. Id. at 36–37. We
determined that, as applied in the Petition, the teachings of Garriss did not
remedy LT1300’s deficiency in disclosing the limitations, including the
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“maintain a predetermined light output level” limitation, discussed above, of
claim 34. Dec. on Inst. 20–21.
Petitioner characterizes the deficiency of LT1300’s disclosure with
respect to claim 34 as: “LT1300 allegedly did not disclose a PWM signal
input to the ‘shutdown’ pin of the LT1300 that is ‘settled in advance’ (e.g.,
fixed for some period of time based on circuit conditions) that would
determine the light output of the LED.” Req. Reh’g 9. Petitioner argues that
we overlooked Petitioner’s reference to Garriss’s disclosure of a fixed PWM
strobe signal; and, thus, the combination of Garriss and LT1300 addresses
the alleged deficiency identified in LT1300 alone. Id. (citing Pet. 16–17, 19,
35–36). Petitioner further argues that we overlooked Dr. Horenstein’s
statements explaining that the shutdown pin of LT1300 would receive pulses
from the 555-timer of Garriss. Req. Reh’g 10 (quoting Ex. 1103 ¶ 104;
citing Pet. 16–17). Petitioner further contends that we overlooked that the
output of the 555-timer of Garriss is a series of pulses with width and
frequency settled in advance by manual knobs. Req. Reh’g 10 (quoting Ex.
1103 ¶ 68). On the foregoing bases, Petitioner asserts that the strobe signal
of Garriss which is fed to the shutdown pin of LT1300 has a fixed frequency
and width that is settled in advance by the adjustment knobs, and the fixed
frequency and width determines the light output level (which is adjustable
by adjusting the knobs). Id. at 11.
We are not persuaded that we misapprehended or overlooked these
arguments and evidence presented in the Petition because the Request for
Rehearing does not point to where each matter now argued was addressed
previously in the Petition. See 37 C.F.R. § 42.71(d). Specifically, the
Request for Rehearing does not identify where the Petition addresses
Garriss’s disclosures of a fixed PWM strobe signal, and the output of
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Garriss’s 555-timer as a series of pulses with fixed width and frequency
settled in advance via manual knobs. The Petition addresses briefly
Garriss’s 555-timer output providing the PWM signal to the LT1300
shutdown pin. See Pet. 16–17, 19. However, Petitioner does not direct us
to, and we do not identify, where the Petition addresses utilizing Garriss’s
manual knobs to fix the width and frequency of the output pulses of
Garriss’s 555-timer, and providing those output pulses from Garriss’s 555-
timer to LT1300’s shutdown pin.
Accordingly, we are not persuaded that Petitioner argued previously
that the combination of LT1300 and Garriss teaches a fixed PWM strobe
signal having a fixed frequency and width settled in advance by adjustment
knobs. Therefore, we are not persuaded that we abused our discretion in
denying review of dependent claim 37.
II. DECISION ON REHEARING
Petitioner’s Request for Rehearing is denied.
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Patent 6,095,661
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PETITIONER:
W. Karl Renner
Jeremy J. Monaldo
FISH & RICHARDSON P.C.
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
renner@fr.com
monaldo@fr.com

PATENT OWNER:
Eduardo E. Drake
Fantastic IP Consulting, LLC
1367 Willow Street
Suite 318
Minneapolis, MN 55403
Eduardo@fantasticipconsulting.com

Jonathan M. Rixen
P.O. Box 1818
Burnsville, MN 55337
jrixen@lemairepatent.com