The Regents of the University of California

Patent Trials and Appeals Board

Oct 12, 2021

IPR2020-00780 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 42
571-272-7822 Entered: October 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SATCO PRODUCTS, INC.,
Petitioner,

v.

THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Patent Owner.

____________

IPR2020-00780
Patent 10,217,916 B2
____________

Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Satco Products, Inc., filed a Petition requesting an inter partes review
of claims 1, 5, 6, 7, 9, 13, 14, 18, 19, 20, 22, and 26 (“the challenged
claims”) of U.S. Patent No. 10,217,916 B2 (Ex. 1001, “the ’916 patent”).
Paper 3 (“Pet”). The owner of the ’916 patent, The Regents of the
University of California, filed a Preliminary Response. Paper 9 (“Prelim.
Resp.”).
We instituted review on October 13, 2020. Paper 10 (“Institution
Dec.”). Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 19 (“PO Resp.”)), Petitioner filed a Reply (Paper 27
(“Reply”)), and Patent Owner filed a Sur-Reply (Paper 29 (“Sur-Reply”)).
A transcript of the oral hearing held on September 8, 2021, has been entered
into the record as Paper 41 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, Petitioner has demonstrated by a preponderance
of the evidence that the challenged claims are unpatentable.
II. BACKGROUND
A. Related Matters
The parties identify several related district court cases, including
Satco Products, Inc. v. The Regents of the University of California, 2:19-cv-
06444, in the Eastern District of New York (“the Satco Litigation”). Pet. 1–
2; Paper 3, 2–3. In the Satco Litigation, Petitioner filed a complaint seeking
a declaratory judgment of non-infringement. Pet. 4. In addition, there are
several other pending petitions for IPRs challenging patents related to the
’916 patent, including IPR2020-00579, IPR2020-00695, IPR2020-00813,
IPR2021-00661, IPR2021-00662, and IPR2021-00794. Some of these
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related patents are also at issue in a proceeding before the International
Trade Commission (ITC), In the Matter of Certain Filament Light-Emitting
Diodes and Products Containing Same (II), Inv. No. 337-TA-1220.
B. The ’916 Patent
The ’916 patent, entitled “Transparent Light Emitting Diodes,”
describes a light emitting diode (LED) that is “comprised of a plurality of
III-nitride layers, including an active region that emits light, wherein all of
the layers except for the active region are transparent for an emission
wavelength of the light.” Ex. 1001, 8:11–15. In particular, the ’916 patent
discloses that “[i]n conventional LEDs, in order to increase the light output
power from the front side of the LED, the emitting light is reflected by the
mirror on the backside of the sapphire substrate or the mirror coating on the
lead frame.” Id. at 10:20–24. Because the energy of the photons in the
emitted light is close to the band-gap energy of the emitting layer of the
LED, reflected light may be re-absorbed by the emitting layer. Id. at 10:26–
29. This reduces the efficiency and output power of the LED. Id. at 10:29–
31. To increase efficiency of the LED, the ’916 patent minimizes internal
reflections within the LED by eliminating mirrors and/or mirrored surfaces,
“in order to minimize re-absorption of the light by the active region.” Id. at
8:38–48. To achieve this, all layers of the LED, except the emitting layer,
may be transparent for the emission wavelength of the LED. Id. at 11:6–15.
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Figures 4A and 4B of the ’916 patent are reproduced below:

Figures 4A and 4B of the ’916 patent are schematic illustrations of an
LED that emits light from multiple sides of the LED as described in the
patent. Id. at 9:3–5. The LED chip comprises emitting layer 400, n-type
GaN layer 402, p-type GaN layer 404, and glass plate 410. Id. at 11:18–21.
“The LED is wire bonded 416 to a lead frame 418 via bonding pads 420,
422.” Id. at 11:25–27. Because lead frame 418 “supports the LED at the
edges of the glass 410 leaving the emitting surface of the glass 410 and LED
unobstructed,” the ’916 patent states that the LED “is designed to effectively
extract light 424 from both sides of the LED, because the frame 418 does not
obstruct the surfaces 412 and 414, i.e., the back side 426 of the LED as well
as the front side 428 of the LED.” Id. at 11:36–43.
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C. The Challenged Claims
Claim 1 exemplifies the challenged claims and reads as follows:
1. A light emitting device, comprising:
a lead frame having a transparent plate therein; and
a light emitting diode (LED) chip, mounted on the lead frame
and placed on or above the transparent plate in the lead frame,
emitting light through at least front and back sides of the LED
chip;
wherein the transparent plate in the lead frame allows the light
emitted from the LED chip to be extracted out of the LED chip
from the front or back sides of the LED chip and through the
transparent plate in the lead frame.
Ex. 1001, 20:54–63.
Claim 14 is substantively similar to claim 1, but claims a method of
making the light emitting device of claim 1. To the extent our analysis
herein focuses on claim 1, it should be understood to apply equally to claim
14. The parties do not provide separate analyses for the device and method
claims.
Claims 5, 6, 7, 9, and 13 depend directly or indirectly from claim 1,
while claims 18, 19, 20, 22, and 26 depend directly or indirectly from claim
14. The additional limitations of the dependent claims are mirrored across
each set (i.e., the additional limitations of claims 5 and 18 are the same,
claims 6 and 19 are the same, etc.).
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D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Claims Challenged 35 U.S.C. §1 Reference(s)
1, 5, 14, 18 102(b) Okamoto2
1, 5, 9, 14, 18, 22 103(a) Okamoto, Shimizu3
6, 7, 19, 20 103(a) Okamoto, Shimizu, Lester,4
Tadatomo5
13, 26 103(a) Okamoto, Shimizu, Admitted Prior
Art6

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and 103 that became
effective on March 16, 2013. Because the ’916 patent claims priority to an
application filed before March 16, 2013, we apply the pre-AIA versions of
the statutory bases for unpatentability.
2 Japan Patent App. Pub. No. 2000/277808A, published Oct. 6, 2000
(Ex. 1008) (certified English translation). The original Japanese-language
document is in the record as Exhibit 1009. Citations herein are to the
English translation, the accuracy of which has not been challenged.
3 U.S. Patent No. 5,998,925 to Shimizu et al., issued Dec. 7, 1999
(Ex. 1017).
4 U.S. Patent No. 6,091,085 to Lester, issued July 18, 2000 (Ex. 1019).
5 Tadatomo, K. et al. “High Output Power Near-Ultraviolet and Violet
Light-Emitting Diodes Fabricated on Patterned Sapphire Substrates Using
Metalorganic Vapor Phase Epitaxy,” Proceedings of SPIE – the International
Society for Optical Engineering, vol. 5187, Third International Conference
on Solid State Lighting, (26 January 2004): 243–249. Bellingham,
WA:SPIE, c2004 (Ex. 1020).
6 Petitioner identifies three figures of the ’916 patent (Ex. 1001, Figs. 1–3)
and their accompanying written description (id. at 10:17–11:4) as “Admitted
Prior Art.” Pet. 10.
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Claims Challenged 35 U.S.C. §1 Reference(s)
1, 9, 13, 14, 22, 26 102(b)/103(a) Miyahara7
5, 18 103(a) Miyahara
6, 7, 19, 20 103(a) Miyahara, Lester, Tadatomo
Pet. 4–6, 30–83. Petitioner submits the Declaration of Russell D. Dupuis,
Ph.D. (Ex. 1003) in support of its arguments. Patent Owner submits
declarations of E. Fred Schubert, Ph.D., M.S. (Exs. 2001, 2008) in support
of its arguments.
Petitioner alleges that all of the asserted references are prior art to the
’916 patent under 35 U.S.C. § 102(b). Pet. 18–23. Petitioner also refers to
several references not asserted as part of any ground and alleges that they are
also prior art under § 102(b). Id. at 18 (referring to Ex. 1007 (“Schubert”)),
22 (referring to Ex. 1005 (“Krames-924”) and Ex. 1016 (“Ishizaka-361”));
see Ex. 1003 ¶¶ 55, 269 (also referring to Ex. 1028 (“Fujii”) and Ex. 1029
(“Narukawa”)). Patent Owner does not challenge the prior-art status of any
reference. See generally, PO Resp.; Reply. We find that the references are
prior art to the ’916 patent.

7 Japan Patent App. Pub. No. 2005/035864A to Miyahara, published Feb. 10,
2005 (Ex. 1011) (certified English translation). The original Japanese-
language document is in the record as Exhibit 1012. Citations herein are to
the English translation, the accuracy of which has not been challenged in this
proceeding.
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III. ANALYSIS
A. Level of Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. See Al-Site
Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in
the art also informs the claim-construction analysis. See Teva Pharm. USA,
Inc. v. Sandoz, Inc., 574 U.S. 318, 332 (2015) (explaining that claim
construction seeks the meaning “a skilled artisan would ascribe” to the claim
term “in the context of the specific patent claim” (emphasis omitted)).
Petitioner asserts that a person of ordinary skill in the art:
would have been knowledgeable regarding conventional designs
and fabrication techniques pertaining to LEDs, including LED
package designs, and would have had at least 2 years of
experience in LED design and fabrication as well as at least a
master’s degree in a relevant field (e.g., chemical engineering,
materials engineering, or electrical engineering), or alternatively
would have an equivalent combination of advanced education
and practical experience.
Pet. 15–16 (citing Ex. 1003 ¶¶ 27–29). Patent Owner contends that the
person of ordinary skill “would have had at least a B.S. degree in mechanical
or electrical engineering or a related field, and three years of experience in
designing semiconductor LED packages.” Prelim. Resp. 2 (citing Ex. 2001
¶¶ 66–67). Patent Owner adds that “a higher level of education or skill
might make up for less experience (for example, an M.S. in any of the above
fields and two years of practical experience would qualify one as a [person
of ordinary skill]).” Id.
Both parties appear to be in general agreement regarding the level of
skill, and neither party contends that any differences between their proposals
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would have any effect on our analysis of Petitioner’s challenges. Although
we encouraged the parties (Institution Dec. 12) to address any material
differences between the two proposals in post-institution briefing, neither
party addressed the issue. See generally, PO Resp.; Reply; Sur-Reply. We,
therefore, adopt a level of ordinary skill that encompasses a person with a
degree in mechanical or electrical engineering or a related field and the
equivalent of several years of experience in designing semiconductor LED
packages.
B. Claim Construction
For petitions filed on or after November 13, 2018, such as the one in
this case, we interpret claims in the same manner used in a civil action under
35 U.S.C. § 282(b), “including construing the 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) (2021). Only terms that are in controversy need to be
construed, and then only to the extent necessary to resolve the controversy.
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017).
Based on post-institution briefing, we determine that only the
construction of “lead frame” is necessary to resolve the issues in
controversy. See PO Resp. 2 (“[T]he only claim term necessary to resolve
the issues in controversy, is the term ‘lead frame.’”); Reply 2–11 (addressing
only the construction of “lead frame”).
In the Institution Decision, we noted two issues to be resolved
regarding the construction of “lead frame”: (1) whether the transparent plate
may be considered a part of the lead frame; and (2) whether specific
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components (e.g. leads) of the lead frame must provide support to the LED
chip. Institution Dec. 9–12. For purposes of institution, we determined that
“the transparent plate may be a part of the lead frame” (id. at 11) and “the
lead frame structure, as a whole, provides support to the LED” (id.). We
then adopted a construction proposed by ITC Staff in the related
Investigation—“a support structure for providing an interface to a
semiconductor die.” Id. at 12.
Subsequent to institution, both parties agree that the transparent plate
may be considered a part of the lead frame. PO Resp. 3; Reply 3; Sur-
Reply 1. The parties also agree that the lead frame provides support to the
LED chip. Id.
The parties, however, continue to disagree whether the leads
themselves must provide support to the LED chip.8 PO Resp. 4; Reply 4.
According to Patent Owner, “the leads in a lead frame provide mechanical or
structural support to the LED chip” by either “directly support[ing] the LED
chip (in the absence of a transparent plate) or indirectly support[ing] the
LED chip through the transparent plate (in the presence of a transparent
plate).” PO Resp. 7. Although Petitioner understood Patent Owner’s
argument to be “that a lead frame has at least two leads and all leads must
provide structural support” (Reply 6), in the Sur-Reply, Patent Owner
clarifies that its position is that “some or all of the leads” provide structural
support. Sur-Reply 3.

8 Although Patent Owner contends that “the parties agree that the conductive
leads must provide structural support to the LED” (PO Resp. 4), Petitioner
disagrees (Reply 3).
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As detailed below, we determine that Patent Owner has not shown
that the term “lead frame,” as recited by the challenged claims, requires that
any component lead provide support to the LED chip. Instead, we maintain
our construction from the Institution Decision that “lead frame” in this
context means a support structure for providing an interface to a
semiconductor die, where the lead frame structure, as a whole, provides the
support to the semiconductor die.
Patent Owner provides several arguments in support of its proposed
construction requiring at least one lead to provide structural support to the
LED chip. First, Patent Owner contends that the plain meaning of the term
“lead frame” requires that the leads must form “the structural frame
supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n
its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.”
Id. We do not find this conclusory statement helpful in determining whether
the leads in a lead frame are required to provide structural support to the
LED chip. Patent Owner does not identify any evidence, intrinsic or
extrinsic, that the plain meaning of the term “lead frame” requires that any
leads provide direct or indirect support to the LED chip. In fact, Patent
Owner refers to several dictionary definitions of the term “lead frame,” none
of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4
(“Lead Frame. The metallic portion of a component package that is used to
interconnect with semiconductor die by wire bonding and to provide output
terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a
solid-state device package that achieves electrical connection between the
die and other parts of the system of which the IC is a component. . . .);
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Ex. 1026, 3 (“lead frame the metallic portion of the device package that
makes electrical connections from the die to other circuitry.”).
Second, Patent Owner argues that a person of ordinary skill in the art
would have understood the term “lead” to have a different meaning than the
term “lead frame,” and “the role of the conductive material in providing
structural support is part of what distinguishes a ‘lead frame’ from ‘leads.’”
PO Resp. 4–5; Sur-Reply 2 (“The very fact that lead and lead frame are
separate terms indicates that the leads in a lead frame have some distinct or
separate function.”). Patent Owner, however, does not point to any
evidence, intrinsic or extrinsic, that it is the leads’ role in providing
structural support that distinguishes the two terms. See PO Resp. 4.
Moreover, because we construe the term “lead frame” to potentially include
other components, in addition to leads, the two terms already have different
meanings. Thus, we are not persuaded that the absence of a role in
supporting the LED chip renders the term “lead frame” indistinguishable
from the term “leads.”
Third, Patent Owner argues that because under some circumstances
not relevant to the claims at issue,9 it is possible that the lead frame includes
only the leads, the leads necessarily provide support even in the presence of
other, optional, components. Sur-Reply 2 (“[T]he fact that a transparent
plate is allowed, but not required, indicates that the leads provide support
whether or not a transparent plate is present.”). Again, Patent Owner does
not provide any evidence to support this conclusion. See id. We also do not

9 Each of the challenged claims requires a “lead frame having a transparent
plate therein.” Ex. 1001, 15:23–16:48.
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follow the logic of the argument. Patent Owner itself allows that the support
given by leads may change in the presence of a transparent plate. See PO
Resp. 7 (“The leads either directly support the LED chip (in the absence of a
transparent plate) or indirectly support the LED chip through the transparent
plate (in the presence of a transparent plate).”).
Fourth, Patent Owner argues that if the leads provide no structural
support, then the term “lead frame” is essentially meaningless. PO Resp. 5–
8; Sur-Reply 3–4. According to Patent Owner, all LED chips require both
structural support and leads, but not all LED packages include lead frames.
PO Resp. 8 (citing Ex. 2011 (“Basin”) showing what Patent Owner refers to
as a “chip on board package” that does not include a lead frame). Patent
Owner, thus, concludes that the term “lead frame” must require something
more than simply the combination of those two elements. PO Resp. 5–7.
Even accepting the premise that all LED chips require both structural
support and leads, but not all LED packages include lead frames, it is
unclear why the differentiating factor for lead frames must be that the leads
themselves provide support. Instead, it seems an equally viable difference
between an LED package with a lead frame and one without is the manner in
which the leads are connected to each other and to any other potential
components of the package. For example, Basin, which Patent Owner points
to as a “chip on board package” that purportedly does not have a lead frame,
shows a circuit board supporting both the LED chip and the leads
themselves. PO Resp. 8 (citing Ex. 2011 ¶ 36). It is possible that the
relevant difference between Basin and the ’916 patent—why one has a lead
frame and the other does not—is not that the leads in Basin are not providing
support to the LED chip, but one of the other many differences between the
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device in Basin and the device in the ’916 patent. In other words, we see no
evidence supporting a presumption that the reason Basin lacks a lead frame
is that the leads do not provide support to the LED chip. And, as Petitioner
points out, Basin itself does not use the term “lead frame” or provide any
other clarification of what the term means. See Reply 10–11.
Dr. Schubert’s testimony on the issue is consistent with this
understanding. First, Dr. Schubert states that “structural support from the
lead frame, itself—and not from a substrate (as discussed below)—is what
fundamentally distinguishes the lead frame packaging design from other
packaging designs as in surface mounted packaging/ chip-on-board
packaging designs.” Ex. 2008 ¶ 63. Nothing in this statement requires any
particular portion of the lead frame, including the leads, to provide the
structural support. Later, Dr. Schubert states that in a lead frame package
“the leads provide support to the LED chip.” Id. ¶ 68. However, the only
evidence that Dr. Schubert relies upon for this conclusion is by contrasting
Basin’s device with that of the ’916 patent.10 Because, as above, we see no
evidence that the only difference between those two devices is whether or
not the leads provide support to the LED chip, we do not find Dr. Schubert’s
conclusion persuasive. We, therefore, agree with Petitioner that Basin does
not support Patent Owner’s construction.

10 Dr. Schubert also refers to the devices of Shimizu and Ishizaka, which are
similar to the device in Basin in that they allegedly use chip-on-board
packaging instead of a lead frame. Id. ¶ 69 (citing Ex. 1017, 8:51–54;
Ex. 1016 ¶ 33). However, as with Basin, Dr. Schubert does not address the
many other differences between the devices of Shimizu and Ishizaka or
explain why support provided by leads is the relevant factor distinguishing a
lead frame package from a chip-on-board package. Id.
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Patent Owner also relies on testimony from Dr. Schubert (PO
Resp. 6–9 (citing Ex. 2008 ¶¶ 63–69, 75–86)) stating that “[t]he lead frame
provides mechanical or structural support to the LED chip” and “[t]he leads
either directly support the LED chip (in the absence of a transparent plate) or
indirectly support the LED chip through the transparent plate (in the
presence of a transparent plate).” Ex. 2008 ¶ 86. However, Dr. Schubert
does not cite to any evidence, intrinsic or extrinsic, supporting this
statement. Id. In fact, earlier in the same section of his testimony,
Dr. Schubert states that (1) “[a] lead frame in the context of LEDs is
understood by those of skill in the art as a support structure for an LED chip
that comprises at least two conductive leads, an anode lead and cathode lead
that are structurally stable and do not require support from another
component” (Id. ¶ 63); (2) “[t]he term ‘lead frame’ is a very commonly
used term in the field of LEDs” that “refers to a frame (support structure) for
LEDs that includes leads (electrodes) for making electrical connections
between an LED and other structures (e.g., an LED driver or power supply)”
(Id. ¶ 76); and (3) “[i]n the context of the claims at issue and in light of the
specification, the ’916 Patent (and related patents) teach that the transparent
plate, with the leads, support [] the LED chip” (id. ¶ 84). However, none of
these statements explicitly require that any leads support the LED chip. Dr.
Schubert does not explain the logical step between the requirement of the
lead frame providing support and the leads of the lead frame providing
support except to state that “[i]n the context of the claims at issue and in
light of the specification, the ’916 (and related patents) teach that the
transparent plate, with the leads, is involved in the support of the LED chip”
and “[t]herefore, in my opinion a POSITA reading the ’916 Patent would
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understand that the lead frame recited in the claims include[s] a transparent
plate, where both the transparent plate and conductive leads provide
[structural] support to the LED.” Id. ¶¶ 84–85. Because this conclusion is
not supported by intrinsic or extrinsic evidence, we are not persuaded that
Dr. Schubert’s testimony provides significant support to Patent Owner’s
proposed construction.
Both parties appear to agree that Figure 12A of the ’916 patent shows
an anode lead providing at least some structural support to the LED chip.
PO Resp. 8 (stating that in Figure 12A “lead frame 1212 both (i) supports
the LED chip and (ii) provides the electrical connection through bonding
wires 1210”); Reply 7 (showing an annotated version of Figure 12A with a
portion of element 1212 labelled as “anode lead: structural support”).
However, neither party directs us to, nor do we see any, disclosure in the
’916 patent that explicitly states that element 1212 is providing mechanical
support to the LED chip. See PO Resp. 8 (citing Ex. 1001, 15:10–14 (“The
LED is wire bonded 1210 to a lead frame 1212.”)). Both parties, therefore,
appear to base their understanding on the positioning of element 1212 in the
Figure—below the LED chip. Although this disclosure is evidence that the
leads of a lead frame can provide support to the LED chip, Patent Owner has
not persuaded us that any of the leads in the lead frame are required to
provide such support.
Accordingly, we maintain our construction from the Institution
Decision that the term “lead frame,” as recited by the challenged claims,
means a support structure for providing an interface to a semiconductor die,
where the lead frame structure, as a whole, provides the required support.
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C. Grounds Based on Okamoto
Petitioner contends that: (1) if we were to adopt Patent Owner’s
construction of “lead frame,” claims 1, 5, 14, and 18 are anticipated by
Okamoto; (2) if we adopt Petitioner’s proposed construction, claims 1, 5, 9,
14, 18, and 22 would have been obvious over the combined disclosures of
Okamoto and Shimizu; (3) depending on the construction adopted, claims 6,
7, 19, and 20 would have been obvious over either the combination of
Okamoto, Lester, and Tadatomo or Okamoto, Shimizu, Lester, and
Tadatomo; and (4) under either construction, claims 13 and 26 would have
been obvious over the combination of Okamoto and Shimizu. Pet. 4–5, 31–
66. For the reasons given below, Petitioner has shown anticipation and
obviousness by a preponderance of the evidence.
In order to find a claim anticipated, we must find not only that all
elements of a claim are disclosed within the four corners of a single prior-art
reference, but that the elements are “arranged as in the claim.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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.” We resolve the question of obviousness 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) objective evidence of
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nonobviousness, i.e., secondary considerations.11 See Graham, 383 U.S. at
17–18.
1. Overview of Okamoto
Okamoto is a Japanese Patent Application published October 6, 2000,
titled “Light Source Device and Manufacturing Method of the Same.”
Ex. 1008, codes (43), (54). Okamoto describes providing a light source
device with “LED elements 3 and 4 having light distribution characteristics
for emitting in all directions” on a “light-transmissive substrate 2.” Id. at
code (57). Figure 1 of Okamoto is reproduced below.

Figure 1 of Okamoto shows “a frontal view illustrating a configuration of a
light source device.”12 Id. ¶ 26. The device includes GaN blue LED

11 The record does not include allegations or evidence of objective indicia of
nonobviousness.
12 Petitioner refers to Okamoto’s Figure 1 as showing a “lead-type” package.
Pet. 42.
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element 3, GaN green LED element 4, and GaAs red LED element 5a, all
three of which are “disposed in a row on a front face of a light-transmissive
glass substrate 2.” Id. ¶ 27. The device also includes GaAs red LED
element 5b (not shown). Id. Wiring path 6 is on glass substrate 2 and is
fixed to back-side LED electrodes with a conductive epoxy resin adhesive
and electrically connected to upper-side LED electrodes with gold wire 7.
Id. ¶¶ 28–29. Lead frame 8 is attached to wiring pattern 6 with solder
material 9. Id. ¶ 29.
Figure 6 of Okamoto is reproduced below.

Figure 6 of Okamoto shows “a manufacturing method of the light source
device 1.” Id. ¶ 32. “LED elements 3, 4, 5a, and 5b are integrally molded
with the light-transmissive substrate 10 . . . on top of the light-transmissive
resin 11 together with the glass substrate 2 having the lead frame 8 attached
thereto.” Id. ¶ 34.
Figures 8 and 9 of Okamoto are reproduced below.
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Figures 8 and 9 of Okamoto show “perspective views of signal lights having
the light source 1 of FIG. 1 incorporated therein.” Id. ¶ 41.
2. Overview of Shimizu
Shimizu is a U.S. Patent issued December 7, 1999, titled “Light
Emitting Device Having a Nitride Compound Semiconductor and a
Phosphor Containing a Garnet Fluorescent Material.” Ex. 1017, codes (45),
(54). It describes a “white light emitting diode” that uses “a semiconductor
as a light emitting layer and a phosphor which absorbs a part of light emitted
by the light emitting component and emits light of wavelength different from
that of absorbed light.” Id. at code (57). “[T]he phosphor contains a garnet
fluorescent material activated with cerium which contains at least one
element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and
at least one element selected from the group consisting of Al, Ga and In.”
Id. Shimizu describes embodiments with a “lead type light emitting diode”
and a “tip type light emitting diode.” Id. at 6:48–53. Figure 1 of Shimizu is
reproduced below.
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Figure 1 of Shimizu “is a schematic sectional view of a lead type light
emitting diode.”13 Id. at 6:49–51. LED 100 has “a mount lead 105 and an
inner lead 106,” and “a light emitting component 102.” Id. at 8:31–39.
Figure 2 of Shimizu is reproduced below.

13 Petitioner refers to Shimizu’s Figure 1 as showing a “lead-type” package.
Pet. 19.
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Figure 2 of Shimizu “is a schematic sectional view of a tip type light
emitting diode.”14 Id. at 6:52–54. LED 202 is installed in a recess of casing
204, which “is filled with a coating material which contains a specified
phosphor to form a coating 201.” Id. at 8:51–54. Electrodes of LED 202 are
“connected to metal terminals 205 installed on the casing 204 by means of
conductive wires 203.” Id. at 8:54–59. “[B]ecause the phosphor is used by
blending with a resin[,] which makes the . . . coating material 201 (detailed
later), color tone of the light emitting diode can be adjusted including white
and incandescent lamp color by controlling the mixing proportion with the
resin or the quantity used in filling . . . the recess of the casing 204 in
accordance to the wavelength of light emitted by the gallium nitride light
emitting component [202].” Id. at 10:36–44.
3. Independent Claims 1 and 14
Petitioner asserts that claims 1 and 14 are anticipated by Okamoto,15
or would have been obvious over Okamoto and Shimizu. Pet. 31–55.
a. Anticipation by Okamoto
Petitioner points to Okamoto’s glass substrate 2 as disclosing the
claimed “transparent plate” and Okamoto’s lead frame 8 and wiring
pattern 6 as disclosing the lead frame. Pet. 32–33 (citing Ex. 1008, Figs. 1,

14 Petitioner refers to Shimizu’s Figure 2 as showing a “chip-type” package.
Pet. 19.
15 The Petition conditioned the Okamoto anticipation ground on the Board
adopting the construction of “lead frame” Patent Owner advanced before the
ITC, which we have not done. Pet. 31. Following institution, however,
Petitioner contended that its arguments as to Okamoto also apply under the
preliminary construction adopted in our Institution Decision, and maintained
here. Reply 15.
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6, ¶¶ 27, 29, 34, 37; Ex. 1003 ¶¶ 104–108). In the Reply, Petitioner explains
that “[u]nder the Board’s construction,” Okamoto discloses the recited lead
frame because “the transparent plate is part of the lead frame and thus
Okamoto discloses ‘a lead frame including a transparent plate,’ as required.”
Reply 15.
The fundamental error in Petitioner’s argument on this point,
however, is that the claims at issue in this proceeding do not require “a lead
frame including a transparent plate,” but instead “a lead frame having a
transparent plate therein.” Petitioner must do more than show that Okamoto
discloses that “the transparent plate is part of the lead frame,” as argued in
the Petition. And, as we pointed out in our Institution Decision, Petitioner
concedes that “Okamoto’s lead frame sits on its transparent plate, rather than
the transparent plate being in the lead frame.” Institution Dec. 17 (citing
Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with
this issue or provide any reason for us to diverge from our prior conclusion
that, because “the plain language of the claims requires that the lead frame
have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . .
Okamoto does not anticipate.” Id. In other words, because Petitioner
concedes that Okamoto’s transparent plate is not in its lead frame, it cannot
meet the requirement of claims 1 and 14 that the lead frame have a
transparent plate therein. For this reason, we maintain our prior
determination that Okamoto does not disclose a lead frame having a
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transparent plate therein, and as a result, Petitioner has not shown by a
preponderance of the evidence that claims 1 and 14 are anticipated.
b. Obviousness over Okamoto and Shimizu
For this ground, Petitioner relies on Okamoto for most of the
limitations recited in claims 1 and 14. Pet. 39–55. But, as noted above,
Petitioner concedes that Okamoto’s device has a “lead frame sits on its
transparent plate, rather than the transparent plate being in the lead frame.”
Id. at 39 (citing Ex. 1008 ¶¶ 34, 36) (emphasis in original). Thus, Petitioner
turns to Shimizu as showing a transparent plate in a lead frame. Id. at 41–42
(citing Ex. 1017, Fig. 2). To demonstrate the results of combining Okamoto
and Shimizu, Petitioner creates a modified version of Okamoto’s Figure 6,
as reproduced below.

Pet. 43. Petitioner explains that the modified version of Okamoto’s figure
shows that “it would have been straight forward for a POSITA to replace
Okamoto’s ‘lead-type’ lead frame with a ‘chip-type’ lead frame, such as
Shimizu’s, such that the two halves of the lead frame (highlighted Red)
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surround either side of Okamoto’s glass plate (highlighted Green).” Id. at
42–43.
Petitioner further contends that Okamoto’s lead frame 8 and glass
substrate 2 “form a support structure” for LED 3. Pet. 34. According to
Petitioner, Figures 1, 6, and 8 of Okamoto show “the blue LED chip is
mounted on the transparent plate, and the portion of the leads that stick out
of the plate-containing package are used to mount the package within a
larger device.” Id. at 33–34 (citing Ex. 1008, Figs. 1, 6, 8, ¶¶ 32, 34, 37).
Petitioner also provides testimony from Dr. Dupuis supporting these
assertions. Ex. 1003 ¶¶ 104–112.
To explain that a person of ordinary skill in the art would be
motivated to combine Shimizu’s chip-type package with Okamoto,
Petitioner points to Okamoto’s vertically oriented embodiment. Id. at 40
(citing Ex. 1008, Figs. 8–9). Because this embodiment includes “four legs
of the lead frame extending from the base of the light,” Petitioner asserts that
“this type of lead frame is cumbersome to implement in some applications.”
Id. at 41 (citing Ex. 1003 ¶¶ 129–137). According to Petitioner, a person of
ordinary skill would find Shimizu’s “chip-type” package “useful in
combination with the LED arrangement shown by Okamoto to facilitate less
cumbersome interconnections and alternative packages and device
orientations, such as where a lower-profile package is needed.” Id. at 41–42
(citing Ex. 1003 ¶¶ 134–137; Ex. 1017, Fig. 2).
Patent Owner argues that the combination of Okamoto and Shimizu
does not properly show the recited “lead frame.” PO Resp. 15–19. This
argument, however, relies on Patent Owner’s construction of the term “lead
frame” that requires at least one of the leads included in the lead frame to
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provide support to the LED chip. See id. at 13 (“Shimizu describes the
‘metal terminals 205 installed on the casing 204’ indicating that the metal
terminals are not providing structural support to the casing 204.”), 14 (“[I]t
was also well-known that [thin metal traces] would be too thin to provide
structural support to either the LED chip or the substrate.”).
We agree that Okamoto shows the lead frame, as a whole, providing
support to the LED chip as required by claims 1 and 14. As shown in
Okamoto’s Figure 1, reproduced above, “lead frame 8 is attached to the
wiring pattern 6 drawn around an end of the glass substrate 2 with a solder
material 9.” Ex. 1008 ¶ 29. According to Patent Owner, Okamoto’s
transparent plate “supports the lead frame,” (PO Resp. 10) and as agreed
upon by the parties, the claimed lead frame includes the transparent plate.
Okamoto also discloses that the LED chip is on transparent glass substrate 2.
Id. ¶ 27 (stating that LED elements “are disposed in a row on a front face of
a light-transmissive glass substrate 2.”). Based on this disclosure, we find
Okamoto teaches or suggests a lead frame that includes a transparent plate
supporting an LED chip.
Okamoto’s Figure 8, reproduced above, shows Okamoto’s device
installed in an upright, vertical position. Petitioner points to this figure as
showing that Okamoto’s leads, in addition to the lead frame as a whole,
provide support to the LED chip. Pet. 33–34; Reply 15–18. Patent Owner
disagrees, stating that “[i]t is not clear whether light source device 1 or the
component identified by Petitioner as the lead frame are above, rest upon, or
are embedded into the lower portion 21” and “[i]t is far more reasonable to
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conclude that the larger, more substantial light-transmissive molded body 10
holds the device in place.” PO Resp. 11.
Under our adopted construction, because we find that Okamoto’s
Figure 1 discloses the transparent plate portion of the lead frame supporting
an LED chip, it is unnecessary that Okamoto’s Figure 8 also include
evidence of the leads themselves providing support. However, we agree
with Petitioner that Figure 8 includes additional evidence that Okamoto’s
leads provide at least some support to the LED chip. Neither party
quantifies the amount of support that must be given by the lead frame to the
LED chip. It is apparently enough that any amount of support is provided by
the lead frame.16 Whether or not lower portion 21 provides a portion of the
support for the LED chip, we find Figure 8 suggests that lead frame 8 of
Figure 1 provides at least some support as well. Indeed, Okamoto explicitly
refers to its leads as a “lead frame,” which both parties agree a person of

16 This issue was explicitly discussed in the hearing for related cases
IPR2020-00579 and -00695, which both parties agree involve patents
requiring the same construction of “lead frame” as the ’916 patent. See Tr.
35:5–6 (Patent Owner’s counsel stating that “my understanding is that lead
frame is being construed consistently across all four of the patents.”);
IPR2020-00579, Paper 36, 12:24–25 (Petitioner’s counsel stating “[i]t is
unclear, from the patent, what the actual amount of support is required.”);
46:7–10 (Patent Owner’s counsel stating “[a]nd I know Your Honor asked
earlier how much support leads provide, and I don’t think that that’s
necessarily an issue that needs to be resolved because, as we’ll see in the
prior art, the leads in those particular references are not providing any
physical support.”); see also Tr. 49:10–11 (Patent Owner’s counsel stating “I
don’t know that there’s evidence that goes directly to the question of what
support means in the abstract.”).
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ordinary skill in the art would understand provides support to the LED
chip.17 See, e.g., PO Resp. 3; Reply 3.
Patent Owner also contends that modifying Okamoto using Shimizu’s
Figure 2 embodiment would not result in the modified Figure 6 depicted by
Petitioner because extending wiring patterns 6 to wrap around the edge of
substrate 2 would result in wiring patterns only on the left side of
Petitioner’s modified figure. PO Resp. 15–16 (citing Ex. 2008 ¶¶ 98–119).
According to Patent Owner, the modified LED has electrical terminals on
two sides of the device and cannot be plugged into a receptacle as indicated
in Okamoto’s Figure 8. Id. at 16–17.
Petitioner contends that this argument does not address the actual
obviousness contention made in the Petition. Reply 12–14. Instead,
Petitioner states that it “did not argue that a POSITA would extend
Okamoto’s wiring ‘around one edge of substrate 2,’” but “argued that a
POSITA would use a different, but commonly-known lead frame
arrangement, disclosed in Shimizu, with Okamoto’s LEDs and transparent
glass plate.” Id. (citing Pet. 43). We agree that the Petition does not contend
that Okamoto’s modified device would be plugged into a receptacle as in
Figure 8. See Pet. 40–41 (noting that the arrangement of Okamoto’s device
in Figure 8 “is cumbersome to implement in some applications” and a
person of ordinary skill in the art “would know that alternative LED

17 Patent Owner’s expert, Dr. Schubert, testifies that “Okamoto actually
describes a chip-on-board package design and incorrectly uses the term ‘lead
frame’ as understood by a person of ordinary skill in the art in the context of
the ’916 Patent.” Ex. 2008 ¶ 91. However, Dr. Schubert does not further
explain or point to any evidence supporting this contention. Id.
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packages existed.”); Ex 1003 ¶¶ 135–137. Moreover, Petitioner’s
modification is not limited to physically extending wires such that they only
wrap around the left side of substrate 2. See Pet. 43; MCM Portfolio LLC v.
Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” (quoting In
re Keller, 642 F.2d 413, 425 (CCPA 1981)); In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“[W]e do not ignore the
modifications that one skilled in the art would make to a device borrowed
from the prior art.”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t
is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”).
Patent Owner also asserts that “Petitioner fails to explain how its
proposed modification of wrapping the wiring pattern 6 around the ends of
the substrate results in a lower-profile.” PO Resp. 17. According to Patent
Owner, “Okamoto already provides the alleged lower-profile benefits of
Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But
Dr. Dupuis supports Petitioner’s contention by stating that a person of
ordinary skill in the art would know to use a “chip-type” package instead of
a “lead-type” package in applications where a lower profile is needed.
Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35;
Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2
is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43.
And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead
frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show
lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner
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that Figure 2 of Okamoto shows a package with a lower profile. Instead, the
record supports Petitioner’s position that the modified device created using
the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads
wrapped around substrate 2 as opposed to protruding as shown by Okamoto
Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142.
Patent Owner argues that “Petitioner ignores Dr. Schubert’s
explanation that Shimizu was directed towards general illumination, while
Okamoto is directed towards a signaling light source” so a person of
ordinary skill would not combine the two references. Sur-Reply 16 (citing
Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent
Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to
support such an argument, we do not agree that Petitioner improperly failed
to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120.
Moreover, we find that both Shimizu and Okamoto disclose methods of
creating white light using an LED and, therefore, the evidence supports a
finding that both references are relevant to a consideration of obviousness.
In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a
reference as a basis for rejection of the applicant’s invention, the reference
must either be in the field of the applicant’s endeavor or, if not, then be
reasonably pertinent to the particular problem with which the inventor was
concerned.”).
In sum, on the complete record, we find that the combination of
Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we
find that a skilled artisan would have had reasons, with rational
underpinning, to combine Okamoto and Shimizu.
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4. Claims 5 and 18
Petitioner asserts that claims 5 and 18 are anticipated by Okamoto and
would have been obvious over Okamoto and Shimizu. Pet. 37–38, 53.
Claim 5 depends from claim 1, and claim 18 depends from claim 14. Both
recite “wherein the LED chip includes a transparent substrate and the
transparent substrate is adjacent the transparent plate.” Id. at 21:9–11,
22:17–19.
The Petition relies for this limitation on Okamoto’s disclosure of its
LED chip including a “transparent substrate, such as one made from
sapphire” that is mounted to the glass plate. Pet. 37, 53 (citing Ex. 1008
¶¶ 31–32; Ex. 1003 ¶¶ 119–124, 173–174). We credit Dr. Dupuis’s
uncontroverted testimony and find that Okamoto teaches the additional
limitation of claims 5 and 18. Thus, we determine that claims 5 and 18
would have been obvious over the combination of Okamoto and Shimizu.
5. Claims 9 and 22
Petitioner asserts that claims 9 and 22 would have been obvious over
Okamoto and Shimizu. Pet. 54–55. Claim 9 depends from claim 1, and
claim 22 depends from claim 14. Both recite that the LED chip is embedded
or contained in a molding or shaped optical element, and that “a phosphor
layer is formed within, near a surface of, or on top of, the molding or shaped
optical element, for wavelength conversion of the light emitted from the
LED chip.” Ex. 1001, 21:25–31, 22:33–39.
Patent Owner argues that a person of ordinary skill in the art would
not have been motivated to combine Okamoto and Shimizu because they
would have understood that “Okamoto was capable of generating white light
using the dispersant of Okamoto’s embodiment, without the need for a
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phosphor, if white light was the desired output.” PO Resp. 19–21 (citing
Ex. 2001 ¶¶ 98–119). According to Patent Owner, “[t]his is particularly true
given that Shimizu recognizes even its improved phosphors were subject to
degradation and deterioration.” Id. (citing Ex. 1017, 3:51–58); Sur-Reply
16–17. Patent Owner contends that a person of ordinary skill in the art
“starting with Okamoto who desired white light would be motivated to
adjust the parameters of Okamoto’s embodiment to obtain it, rather than first
modifying the multicolored LEDs of Okamoto, then adding a phosphor and
having to address the concern of phosphor degradation,” which modification
would cause Okamoto to lose “the capability of emitting a single-color light
(R, G, or B).” PO Resp. 20–21 (citing Ex. 2008 ¶¶ 98–119); Sur-Reply 17.
Even if, as Patent Owner contends, a person of ordinary skill in the art
would have understood that “white light can be created by combining the
three primary colors of light” (PO Resp. 19), we are not persuaded that a
person of ordinary skill in the art would have lacked a motivation to use one
of the three disclosed LEDs (the blue LED) with phosphor to create white
light as disclosed by Shimizu. Ex. 1017, 4:50–67. Petitioner provides
evidence that “it was common well before the priority date of the ’916 patent
to use appropriate phosphors in combination with blue LEDs to create white
light.” Pet. 44–45 (citing Ex. 1007, 246–50; Ex. 1003 ¶¶ 145–155;
Ex. 1006); Ex. 1044, 100:23–103:10 (Dr. Schubert acknowledging that using
Shimizu’s phosphor technique was well known and commonly used to
create white light at the relevant time).
In response, Patent Owner provides testimony from Dr. Schubert that
a person of ordinary skill in the art would not have been motivated to
combine Shimizu’s technique because “Shimizu discloses that its own
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improved phosphors deteriorate over time . . . causing color shifts and
decreased luminance.” Ex. 2001 ¶ 86 (citing Shimizu 3:22–62).
Nothing in Shimizu or Dr. Schubert’s testimony, however, overcomes
the guidance from KSR that “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 401 (2007). We find that the record evidence
shows a person of ordinary skill in the art would naturally look to Shimizu’s
well-known and commonly used technique of using phosphor to create white
light instead of combining the primary colors of light of Okamoto. See
ICON, 496 F.3d at 1380 (“One skilled in the art would naturally look to
prior art addressing the same problem as the invention at hand.”). Moreover,
even though Shimizu itself acknowledges there are some potential problems
with using its phosphor technique, these issues would not discourage one of
skill in the art from using that technique, which Shimizu itself prefers.
Ex. 1017, 1:31–3:21; see Optivus Tech., Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 989–90 (Fed. Cir. 2006) (finding that one of ordinary skill in
the art would still be motivated to combine two references even though a
direct combination would result in a “death ray” instead of a cancer
treatment device).
In sum, on the complete record, we find that the combination of
Okamoto and Shimizu teaches each limitation of claims 9 and 22, and we
find that a skilled artisan would have had reason, with rational underpinning,
to combine Okamoto and Shimizu.
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6. Claims 13 and 26
Petitioner asserts that claims 13 and 26 would have been obvious over
Okamoto and Shimizu when viewed in light of the APA.18 Pet. 61–66.
Claims 13 and 26 require that the LED chip is comprised of a plurality of
III-nitride layers, and that all the layers other than the emitting active layer
are transparent for an emission wavelength of the light. Ex. 1001, 21:46–52,
22:54–60. Petitioner contends that these claims merely “require
conventional III-N type LED chips, such as GaN LEDs,” and that the blue
LEDs of Okamoto are GaN LEDs. Pet. 61. While Okamoto does not show
the layers of its LEDs, Petitioner directs us to the disclosure of the ’916
patent, which allegedly shows that conventional GaN-based LEDs include
layers such as p-side layers and n-side layers which were well known to be
transparent to the LED’s emissions. Id. at 61, 63 (citing Ex. 1001, 10:58–
11:4; Ex. 1003 ¶ 208). According to Petitioner, “LEDs are conventionally
designed so that the layers of the LED (other than the active/emitting layer)

18 On August 18, 2020, the Director of the Patent & Trademark Office issued
a Memorandum addressing the use of “applicant admitted prior art” as the
basis for an inter partes review challenge. See USPTO Memorandum,
Treatment of Statements of the Applicant in the Challenged Patent in Inter
Partes Reviews Under § 311 (August 18, 2020), available at
https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance_
memo.pdf. That Memorandum concludes that one permissible use of
admitted prior art in an inter partes review is to “supply missing claim
limitations that were generally known in the art prior to the invention.” Id.
at 10. Petitioner’s citation to the description of a “conventional LED” in the
’916 patent falls within this category. Notably, Patent Owner did not object
to Petitioner’s citation to “APA,” or our reliance on it in the Institution
Decision. The ’916 patent clearly denotes these disclosures as “Prior Art,”
and we see no obstacle under 35 U.S.C. § 311 to Petitioner relying on
admitted prior art in this manner.
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are transparent to the LED’s emissions.” Id. at 64 (citing Ex. 1003 ¶¶ 209–
218; Ex. 1007, 114–19). Accordingly, Petitioner contends that a person of
ordinary skill in the art would expect Okamoto’s conventional LED chips to
be made of a plurality of III-nitride layers that are transparent to the
wavelength of light emitted by the active layer. Pet. 66.
In our Institution Decision, we agreed with Petitioner that “the ’916
patent admits that LED chips having a plurality of III-nitride layers were
conventional and well known.” Institution Dec. 24. But, we also agreed
with Patent Owner’s argument (Prelim. Resp. 22) that the APA did not show
that it was conventional that all layers of the LEDs other than the active
layer are transparent to the emission wavelength. Id. This was due to the
fact that, according to the ’916 patent, conventional LEDs included a mirror
placed on the back of the LED that was, by design, not transparent to the
emission wavelength. Id.
Upon further review, and in light of the arguments in Petitioner’s
Reply (Reply 21–24), we conclude that our preliminary determination in the
Institution Decision was in error, to the extent that we agreed with Patent
Owner’s arguments that claims 13 and 26 require “all layers” of the LED to
be transparent. The claims recite “a plurality of III-nitride layers, including
an active region that emits light, wherein all of the layers except for the
active region are transparent.” Ex. 1001, 21:46–52. The second half of this
phrase, which contains the transparency requirement, recites “the layers,”
meaning that it relies on an earlier recitation in the claim for antecedent basis
of “layers.” This basis is found in the recitation of “a plurality of III-nitride
layers.” In other words, the proper interpretation of “all of the layers” in
claims 13 and 26 is that the term refers back to the III-nitride layers, not all
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of the layers of the LED as a whole (such as, for example, a mirror). And
the parties agree that the mirror of a conventional LED is not a III-nitride
layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination
that the non-transparent mirror of the APA LEDs prevented a finding of
obviousness was incorrect. We agree with Petitioner that the ’916 patent
admits that LEDs having transparent III-nitride layers were conventional in
the art, and that these are “all of the layers except for the active region” as
required in claims 13 and 26.
Notably, during the trial Patent Owner did not attempt to defend
against Petitioner’s ground for the same reason it raised in the Preliminary
Response; instead, Patent Owner now argues that because of the mirror on
conventional LEDs, these devices would not meet the claim limitation that
“light is extracted effectively through all the layers.” PO Resp. 21. But this
reflects a misunderstanding of Petitioner’s ground of unpatentability, which
does not rely on the APA for this limitation. Petitioner’s ground is based on
the argument that, while Okamoto discloses an LED without a mirror, it
does not “specifically describe the layers of its blue LEDs, other than to say
that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this
missing information regarding the layers that were conventionally used in
LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All
Petitioner concludes from the APA is that a person of skill in the art “would
reasonably expect the GaN-based LEDs of Okamoto to include multiple
layers, which layers would at least include an active layer sandwiched
between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203–
205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of
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the APA’s layers to Okamoto would have brought along the mirror of the
APA LED’s is therefore misguided and unpersuasive.
In sum, we agree that a person of ordinary skill in the art would have
looked to conventional LEDs, such as those admitted to be prior art in the
’916 patent, when determining the layers of Okamoto’s LED. And
according to the ’916 patent, these conventional III-nitride layers would
have been understood to be transparent to an emission wavelength. As a
result, we conclude that claims 13 and 26 would have been obvious over the
combined disclosures of Okamoto and Shimizu in light of the APA.
7. Overview of Lester
Lester is a U.S. Patent issued July 18, 2000, titled “GaN LEDs with
Improved Output Coupling Efficiency.” Ex. 1019, codes (45), (54). It
describes “[a]n LED having a higher light coupling efficiency than prior art
devices, particularly those based on GaN.” Id. at code (57). Lester discloses
improving “the coupling efficiency of a GaN-based LED by disrupting the
waveguide . . . by altering the surface of the interface between the
sapphire/GaN layer and/or the surface of the GaN layer.” Id. at 3:20–24.
One method of altering the surface “involves roughening the sapphire/GaN
interface,” which “can be accomplished by any of a number of techniques,”
including “polishing it with relatively coarse grinding grit.” Id. at 3:25–28,
3:65–4:1.
8. Overview of Tadatomo
Tadatomo is an article titled “High Output Power Near-Ultraviolet
and Violet Light-Emitting Diodes Fabricated on Patterned Sapphire
Substrates Using Metalorganic Vapor Phase Epitaxy.” Ex. 1020, 243. It
discusses improving the performance and reliability of LEDs by using a
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patterned sapphire substrate. Id. at 243–44. Tadatomo reports that a
patterned sapphire substrate “is very effective in reducing the dislocation
density and for increasing the extraction efficiency due to the multiple
scattering of the emission light at the GaN/ patterned sapphire interface.” Id.
at 243.
9. Claims 6, 7, 19, and 20
Petitioner asserts that claims 6, 7, 19, and 20 would have been
obvious over the combined teachings of Okamoto, Shimizu, and Lester, or
Okamoto, Shimizu, and Tadatomo. Pet. 56–60. Claims 6 and 7 depend
from claim 5, which depends from claim 1. Claims 19 and 20 depend from
claim 18, which depends from claim 14. Claims 6 and 19 require that the
transparent substrate is roughened, textured, or patterned to increase
extraction of light through the transparent plate, while claims 7 and 20
require that the transparent substrate is a patterned sapphire substrate.
Ex. 1001, 21:12–20; 22:20–28.
According to Petitioner, a person of ordinary skill in the art “would
have been motivated to and would have found it obvious to use conventional
sapphire substrate roughening and/or texturing with Okamoto’s GaN LEDs
as shown by Lester-085 and Tadatomo” “so as to enhance light extraction.”
Pet. 56, 58–59 (citing Ex. 1003 ¶¶ 191–192; Ex. 1007, 122–23). Petitioner
also asserts that a person of ordinary skill in the art “would reasonably
expect to succeed in implementing these enhancements because these
features were well-known and within [their] skillset.” Id. at 59 (citing Ex.
1001, 11:2–3; Ex. 1003 ¶ 193; Ex. 1007, 122–23; Ex. 1019 ¶ 85; Ex. 1020;
Ex. 1005; Ex. 1028, 857).
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Patent Owner argues that a person of ordinary skill in the art would
not have combined Lester or Tadatomo with Okamoto because of “an
important difference between these [two] references” and Okamoto. PO
Resp. 22. Specifically, according to Patent Owner, both Lester and
Tadatomo disclose devices in which “light is only extracted from one side of
the LED,” but Okamoto has an LED package “where light is intended to be
emitted from both sides.” Id. at 22–23. According to Patent Owner,
“[w]hether the total amount of light emitted would be increased, stay the
same, or decreased, is a complex question based upon the specific device
design” and “[i]t is overly simplistic to say what worked for one LED would
work for another.” Id. at 23 (citing Ex. 1003 ¶¶ 120–128).
Petitioner disputes that this difference is relevant, stating that “the fact
that Okamoto teaches emitting light omnidirectionally means that at least
some light will be emitted through the substrate interface,” and because
“Lester/Tadatomo teach how to reduce internal reflection at a substrate
interface,” they “teach techniques that would reduce internal reflections at
[Okamoto’s] interface.” Reply 24–25 (citing Pet. 56–60). Dr. Dupuis
testifies that a person of ordinary skill in the art would have known about
surface roughening and patterning, and would have wanted to increase
performance by implementing these techniques with Okamoto’s GaN LED.
Ex. 1003 ¶¶ 193, 198 (citing Ex. 1030, Fig. 3, 7:12–13; Ex. 1020, 247;
Ex. 1007, 122; Ex. 1005, Fig. 8, 7:46–59, 2:65–3:20; Ex. 1019, 3:10–4:26;
Ex. 1028, 857; Ex. 1029, L1084).
We find that substantial evidence supports Petitioner’s contention that
a person of ordinary skill in the art would have reasonably expected the
roughening techniques disclosed by Lester and Tadatomo to work with
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Okamoto’s device and would have been motivated to combine these
teachings to increase performance of the LED device.
On the one hand, Dr. Schubert testifies that “[c]ombining Okamoto
with Lester and Tadatomo still reflects light . . . into the active/absorbing
layer of the LED chip, falling short of the invention claimed by the
’916 Patent.” Ex. 2008 ¶ 126 (quoting Ex. 1001, 8:20–41). In addition,
Dr. Schubert states that “the ’916 Patent teaches that it extracts light through
the roughened surfaces (i.e., directly out of the chip), not away from the
roughened surfaces, as taught by Lester.” Id. ¶ 127 (quoting Ex. 1019,
12:59–13:20) (emphasis added). However, the claims at issue do not
prohibit any light from being reflected into the LED chip. Instead they
require that the amount of light extracted from the LED chip is increased.
Moreover, Dr. Schubert does not refer to objective evidence to support his
conclusion that “without more” a person of ordinary skill “would not
understand that features of contrasting disclosures (Okamoto on one hand,
and Lester and Tadatomo on the other hand) could be combined.” Id. ¶ 125.
On the other hand, Dr. Dupuis points to objective evidence that
supports his conclusions. For example, Dr. Dupuis points (Ex. 1003 ¶ 191)
to Krames, a patent issued July 14, 1998, that describes an LED device
“wherein the top and back surfaces . . . are textured” to “improve the
extraction of first-pass light.” Ex. 1005, Fig. 8, 2:65–3:4, 7:46–48.
Similarly, Fujii, titled “Increase in the Extraction Efficiency of GaN-Based
Light-Emitting Diodes via Surface Roughening,” published in 2003, states:
In conclusion, an anisotropic etching method has been
applied to a GaN-based LED for the purpose of increasing
extraction efficiency. LED output test results have indicated that,
presumably due to the decrease in light propagation in the GaN
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film, there is a relationship between a roughened appearance and
extraction efficiency. Although total integrated optical power has
not been measured, the extraction efficiency from a top surface
was increased twofold to threefold compared to that of an LED
before roughening. It is notable that the technique mentioned in
this paper is simple and does not require complicated processes,
implying that it will be suitable for manufacturing of GaN-based
LEDs with surface roughening.
Ex. 1028, 857; see also Ex. 1029 (Narukawa), L1084. This is objective
evidence that a person of ordinary skill in the art at the relevant time would
have understood that applying Lester’s or Tadatomo’s techniques to an LED
device, no matter the configuration of light emission, would improve the
efficiency of light extraction. In addition, Dr. Dupuis refers (Ex. 1003
¶ 193) to a 2003 textbook by Dr. Schubert stating generally that “[o]ther
efficient ways to increase the light extraction efficiency include the use of
roughened or textured semiconductor surfaces.” Ex. 1007, 122. And
Dr. Schubert confirms this understanding in his deposition. Ex. 1044,
87:21–91:6.
On balance, the record evidence supports Petitioner’s position, and we
find that (1) both the combination of Okamoto, Shimizu, and Lester and the
combination of Okamoto, Shimizu, and Tadatomo teach each limitation of
claims 6, 7, 19, and 20, (2) a skilled artisan would have had reasons, with
rational underpinning, to combine the references, and (3) the skilled artisan
would have had a reasonable expectation of success.
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D. Grounds Based on Miyahara
Petitioner contends that: (1) claims 1, 9, 13, 14, 22, and 26 are
anticipated by, or rendered obvious over, Miyahara alone;19 (2) claims 5 and
18 would have been obvious over Miyahara; (3) claims 6, 7, 19, and 20
would have been obvious over Miyahara and Lester; and (4) claims 6, 7, 19,
and 20 would have been obvious over Tadatomo. Pet. 67–84. For the
reasons that follow, we determine that Petitioner establishes these grounds of
unpatentability by a preponderance of the evidence.
1. Overview of Miyahara
Miyahara is a Japanese Patent Application published on
February 10, 2005, titled “Substrate for Mounting Light-Emitting Element.”
Ex. 1011, codes (43), (54). Figure 11 of Miyahara is reproduced below.

Figure 11 of Miyahara is “a cross-sectional diagram[] showing the substrate
for mounting a light-emitting element.” Id. ¶ 19. Light-emitting element 21
is mounted on submount 50, which in turn is mounted on the substrate for
mounting a light-emitting element 20. Id. ¶ 31. Substrate 20 and light-

19 Though anticipation and obviousness are presented in the alternative for
this ground, upon review it appears Petitioner contends that all elements of
claims 1 and 14 are disclosed by the reference, and there is no reference to
obviousness as to these claims. Pet. 67–74, 79. Obviousness is provided as
an alternative basis as to claims 9, 13, 22, and 26. Id. at 77, 78.
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emitting element 21 are electrically connected by the use of electrical circuit
52 to connect electrical circuit 51 with surface electrical circuit 26. Id.
Submount 50 includes “an optically transparent sintered body.” Id. ¶ 34.
2. Independent Claims 1 and 14
Petitioner contends that independent claims 1 and 14 are anticipated
by Miyahara. Pet. 67–74, 79. Petitioner asserts that Miyahara’s submount
50 is a transparent plate “surrounded by ‘thick-film metallization’ on its top,
side, and bottom surfaces . . . in order to electrically connect the LED (21) to
power,” which combine to teach the “lead frame” limitation. Pet. 68–70
(citing Ex. 1011, Fig. 11, ¶¶ 31, 121).
Patent Owner argues that Miyahara fails to disclose “that the leads
provide support to the LED chip.” PO Resp. 24. In particular, Patent Owner
argues that Miyahara’s elements 26, 51, and 52 (1) do not constitute “a
single structural element, but instead an electrical circuit formed by several
elements,” and (2) may be formed by thick film metallization as discussed
by Petitioner, but also may be formed by sintering or thin film metallization,
or a combination of these techniques. PO Resp. 24–27. According to Patent
Owner, a person of ordinary skill in the art “would not consider a thick film
metallization to be providing structural support in Miyahara, [and] they
would know that a thin film metallization could not possibly provide
structural support.” Id. at 26. Patent Owner adds that “a POSITA would
understand even a thick film metallization would not provide structural
support in Figure 11.” Id.
In our Institution Decision, we explained that because “we do not
agree with Patent Owner that every element of the lead frame must support
the LED, we see no significance in the fact that elements 26, 51, and 52 may
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be separate or how they are formed.” Institution Dec. 29. We also noted
that “Patent Owner appears to agree that submount 50 supports the LED.”
Id. at 30 (citing Prelim. Resp. 28). In the Response, Patent Owner explains
that the Institution Decision’s “[conclusion] was based on the erroneous
belief that the leads did not have to provide structural support,” and “[w]ith
that requirement in mind, the fact that they may be separate elements formed
at separate times illustrates that they are not providing structural support.”
PO Resp. 26–27 (citing Ex. 2008 ¶¶ 136–142).
Because, as discussed above, we do not agree with Patent Owner’s
assertion that the leads of the lead frame are required to provide support to
the LED chip, we continue to agree with Petitioner that the combined
elements of 26, 50, 51, and 52 of Miyahara disclose a lead frame as recited
by claims 1 and 14. In fact, Dr. Schubert agrees that “[i]n Figure 11,
substrate 20 and submount 50 provide the structural support to the LED
chip.” Ex. 2008 ¶ 140.
We have reviewed Petitioner’s contentions, the testimonial evidence,
and the disclosure of Miyahara, and determine that the record provides
substantial evidence supporting Petitioner’s assertions of anticipation of
claims 1 and 14 by Miyahara.
3. Claims 9 and 22
Petitioner asserts that claims 9 and 22 are anticipated by and would
have been obvious over Miyahara. Pet. 75–77, 79. Claim 9 depends from
claim 1, and claim 22 depends from claim 14. Both recite that the LED chip
is embedded or contained in a molding or shaped optical element, and that
“a phosphor layer is formed within, near a surface of, or on top of, the
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molding or shaped optical element, for wavelength conversion of the light
emitted from the LED chip.” Ex. 1001, 21:25–31, 22:33–39.
Petitioner relies on Miyahara as disclosing “that phosphors may be
used with any of its embodiments to convert light into any desired color,
including white light.” Pet. 75 (citing Ex. 1011 ¶¶ 2, 9, 23). According to
Petitioner, a person of ordinary skill “would have understood—particularly
because of Miyahara’s teaching that phosphors may be used on any of its
embodiments to convert light into white light—that the LED chip of Fig. 11
may be sealed with a resin that included phosphor for the purpose of
converting emitted light from blue to white.” Id. at 76.
Patent Owner relies on the same argument, that Miyahara does not
disclose a lead frame, as for claims 1 and 14. PO Resp. 24–28. For the
stated reasons outlined above, we do not agree with Patent Owner’s
construction of “lead frame.” Accordingly, after review of the testimonial
evidence, and the disclosure of Miyahara, we determine that the record
provides substantial evidence supporting Petitioner’s assertions of
anticipation by Miyahara and obviousness over Miyahara of claims 9
and 22.
4. Claims 13 and 26
For claims 13 and 26, Petitioner indicates that Miyahara’s devices
have a plurality of nitride layers which are transparent for an emission
wavelength. Pet. 77–78 (citing Ex. 1011 ¶¶ 3, 6, 12, 18; Ex. 1003 ¶¶ 254–
258). We find that Petitioner’s assertions are supported by the record, and
that Miyahara discloses that its layers are transparent to an emission
wavelength. Ex. 1011 ¶¶ 3, 6, 18. Patent Owner does not dispute this.
Instead, as in the preceding section, Patent Owner relies on the same
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argument, that Miyahara does not disclose a lead frame, as for claims 1 and
14. PO Resp. 24–28. For the stated reasons outlined above, we do not agree
with Patent Owner’s construction of “lead frame.” Accordingly, after
review of the testimonial evidence, and the disclosure of Miyahara, we
determine that the record provides substantial evidence supporting
Petitioner’s assertions of anticipation by Miyahara and obviousness over
Miyahara of claims 13 and 26.
5. Claims 5 and 18
Petitioner asserts that claims 5 and 18 would have been obvious over
Miyahara. Pet. 79–82. Claim 5 depends from claim 1, and claim 18
depends from claim 14. Both recite “wherein the LED chip includes a
transparent substrate and the transparent substrate is adjacent the transparent
plate.” Ex. 1001, 21:9–11, 22:17–19.
In the Petition, based on its construction of “lead frame”—where the
transparent plate was not a part of the lead frame—Petitioner asserted that
Figure 11 of Miyahara discloses a transparent substrate above the LED and
“adjacent (but not immediately adjacent)” transparent submount 50. Pet. 80.
Petitioner thus asserted that a person of ordinary skill in the art would have
known that the arrangement of the LED chip in Figure 11 could be used in a
different orientation such as shown in Figure 7 of Miyahara where the LED
substrate is located below instead of on top of the device (a “flip-chip”
orientation) resulting in the transparent substrate being immediately adjacent
to transparent submount 50. Id. at 80–81.
Subsequently, based on the claim construction we adopted in the
Institution Decision, and continue to maintain here, Petitioner explains that
this modification of orientation is no longer necessary. Reply 28–30.
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Instead, Miyahara expressly discloses lead frames that include a transparent
substrate (Figure 7) or transparent submount (Figure 11), and the transparent
substrate/submount is immediately adjacent transparent plate 20. Id. (citing
Ex. 1011, Figs. 7, 11). We agree that both the transparent substrate of
Figure 7 and the transparent submount of Figure 11 of Miyahara show a
transparent substrate adjacent transparent plate 20 as recited in claims 5
and 18.
Patent Owner argues that Petitioner has not properly shown that
Miyahara discloses a lead frame. Sur-Reply 23–23. Because we do not
adopt Patent Owner’s proposed construction of “lead frame,” as discussed
above, we find that Miyahara discloses a lead frame with a transparent plate
therein.
Accordingly, having reviewed Petitioner’s contentions, the testimonial
evidence, and the disclosure of Miyahara, we determine that the record
provides substantial evidence supporting Petitioner’s assertions of
obviousness of claims 5 and 18 over Miyahara.
6. Claims 6, 7, 19, and 20
Petitioner asserts that claims 6, 7, 19, and 20 would have been
obvious over the combined disclosures of Miyahara and Lester or Miyahara
and Tadatomo. Pet. 82–84. These dependent claims, which require the
substrate to be roughened, textured, or patterned, or specify that the substrate
is a patterned sapphire substrate, were discussed above in the context of the
ground based on Okamoto, Shimizu, and Lester or Tadatomo.
Petitioner relies on the same portions of Lester and Tadatomo as in the
ground based on Okamoto and Shimizu. Id. According to Petitioner, a
person of ordinary skill in the art “would have been motivated to and would
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have found it obvious to use roughened/patterned substrates in Miyahara’s
LEDs to increase light extraction, as expressly taught by Lester-085 and/or
Tadatomo.” Id. at 83–84 (citing Ex. 1003 ¶¶ 283–289).
Patent Owner also relies on the same argument made for the ground
based on Okamoto and Shimizu that a person of ordinary skill in the art
would not have combined Lester or Tadatomo with Miyahara because of the
differences in the devices in those references. PO Resp. 28–29. For the
same reasons as discussed above, we find that substantial evidence supports
Petitioner’s contention that a person of ordinary skill in the art would have
reasonably expected the roughening techniques disclosed by Lester and
Tadatomo to work with Miyahara’s device and would have been motivated
to combine these teachings to increase performance of the LED device.
Ex. 1003 ¶¶ 286–288.
IV. CONCLUSION20
Based on the full record, we determine that Petitioner shows by a
preponderance of the evidence that claims 1, 5, 6, 7, 9, 13, 14, 18, 19, 20, 22,
and 26 of the ’916 patent are unpatentable. In summary:

20 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claim(s) 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 5, 14, 18 102(b) Okamoto 1, 5, 14, 18
1, 5, 9, 14, 18,
22
103(a) Okamoto, Shimizu 1, 5, 9, 14, 18,
22

6, 7, 19, 20 103(a) Okamoto, Shimizu,
Lester, Tadatomo
6, 7, 19, 20
13, 26 103(a) Okamoto, Shimizu,
Admitted Prior Art
13, 26
1, 9, 13, 14,
22, 26
102(b)/
103(a)
Miyahara 1, 9, 13, 14,
22, 26

5, 18 103(a) Miyahara 5, 18
6, 7, 19, 20 103(a) Miyahara, Lester,
Tadatomo
6, 7, 19, 20
Overall
Outcome
1, 5, 6, 7, 9,
13, 14, 18, 19,
20, 22, 26

V. ORDER
Accordingly, it is:
ORDERED that, pursuant to 35 U.S.C. § 314(a), Petitioner has shown
by a preponderance of the evidence that claims 1, 5, 6, 7, 9, 13, 14, 18, 19,
20, 22, and 26 of the ’916 patent are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Heath J. Briggs
Barry J. Schindler
Andrew Sommer
GREENBERG TRAURIG, LLP
briggsh@gtlaw.com
schindlerb@gtlaw.com
sommera@gtlaw.com

For PATENT OWNER:

Jennifer Hayes
NIXON PEABODY LLP
jenhayes@nixonpeabody.com
vyip@nixonpeabody.com