Seoul Viosys Co., Ltd.

Patent Trials and Appeals Board

Sep 20, 2021

IPR2020-00750 (P.T.A.B. Sep. 20, 2021)

Trials@uspto.gov Paper
571-272-7822 Date: 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SATCO PRODUCTS, INC.,
Petitioner,
v.
SEOUL VIOSYS CO., LTD.
Patent Owner.

IPR2020-00750
Patent 8,716,946 B2

Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
A. Background and Summary
Satco Products, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
seeking inter partes review of claims 1, 3, 4, and 8 of U.S. Patent
No. 8,716,946 B2 (Ex. 1001, “the ’946 Patent”). Seoul Viosys Co., Ltd.
(“Seoul Viosys” or “Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). After receiving the Petition and before filing the
Preliminary Response, Patent Owner filed a statutory disclaimer,
disclaiming claim 8 of the ’946 Patent. Ex. 2001. We instituted an inter
partes review of the remaining challenged claims, i.e., claims 1, 3, and 4 of
the ’946 Patent. Paper 7 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 20, “PO
Resp.”), Petitioner filed a Reply (Paper 31, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 34, “PO Sur-reply”). An oral hearing was held on
July 7, 2021, and a transcript of the hearing is included in the record.
Paper 41.
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has not shown that claims 1, 3, and 4 of
the ’946 Patent are unpatentable.
B. Real Parties in Interest
Petitioner identifies Satco Products, Inc., as the real party in interest.
Pet. 1. Patent Owner identifies Seoul Semiconductor Co., Ltd. and Seoul
Viosys Co., Ltd. as the real parties in interest. Paper 4, 1 (Mandatory
Notice).
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C. Related Matters
The parties identify the following district court action in which Patent
Owner is asserting the ’946 Patent against Petitioner: Seoul Semiconductor
Co., Ltd. v. Satco Products, Inc., No. 2:19-cv-04951 (E.D.N.Y.). Pet. 1;
Paper 4, 1.
D. The ’946 Patent (Ex. 1001)
The ’946 Patent discloses a light-emitting device for AC power
operation, where the device “has an array of light emitting cells connected in
series.” Ex. 1001, code (54), 1:25–28. An objective is to increase light
emission time and to reduce a flicker effect. Id. at code (57), 2:63–67. The
’946 Patent discloses various embodiments and features, only some of which
are recited in the claims.
An embodiment is shown in Figure 5, which is reproduced below.

Figure 5 of the ’946 Patent is a partial sectional view of an AC light-emitting
diode (LED), including light emitting cells 30 on substrate 20. Ex. 1001,
7:31–33, 8:23–25. Wires 41 electrically connect adjacent light emitting cells
30 to each other to form an array with light emitting cells 30 connected in
series. Id. at 9:4–6.
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Another embodiment is shown in Figure 11, which is reproduced
below:

Figure 11 of the ’946 Patent is a circuit diagram of an AC light-emitting
device, including light emitting device 200, switching block 300, bridge
rectifier 400, and AC power source 1000. Ex. 1001, 7:48–50, 14:62–64,
15:3–8, 15:15–17. Light emitting device 200 includes arrays 101 to 103,
each of which has a plurality of light emitting cells 30 connected in series.
Id. at 15:3–8, Fig. 11. One terminal of each of arrays 101 to 103 is
connected to first power source connection terminal 110, and the other
terminals are connected to second power source connection terminals 121 to
123, respectively, which are each connected to switching block 300. Id. at
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15:10–17. Bridge rectifier 400 is connected between terminal 110 and
switching block 300. Id.
Another embodiment is shown in Figure 18, which is reproduced
below.

Figure 18 of the ’946 Patent is a sectional view of an LED. Ex. 1001,
7:66–67. In this embodiment, each of the light emitting cells is formed to
have inclined side surfaces. Id. at 21:37–42. The ’946 Patent discloses that
“the inclined side surfaces of the light emitting cells can reduce a light loss
due to total reflection, thereby improving luminous intensity of the light
emitting cells.” Id. at 21:57–59.
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Another embodiment is shown in Figure 19, which is reproduced
below.

Figure 19 of the ’946 Patent is a sectional view of AC light-emitting device
1, which includes LED chip 3, transparent member 5, phosphors 7, and
reflection cup 9. Ex. 1001, 8:1–3, 21:63–65, 22:19–20, 22:25–27, 23:3–4.
LED chip 3 has a plurality of light emitting cells connected in series and
may include a bridge rectifier, so that it can be driven by an AC power
source. Id. at 21:67–22:1, 22:7–9. Each of the light emitting cells may be
an AlxInyGazN-based compound semiconductor capable of emitting
ultraviolet or blue light. Id. at 22:1–3. LED chip 3 may be positioned
within reflection cup 9 and be covered by molded transparent member 5
made from epoxy or silicone resin having phosphors 7 dispersed within it.
Id. at 22:19–20, 23:3–11, 23:15–17.
According to the ’946 Patent, phosphors 7 are positioned over the
LED chip 3 and excited by light emitted from the light emitting cells to emit
light in a visible light range. Ex. 1001, 22:25–27. The ’946 Patent discloses
that phosphors 7 include a delay phosphor, which “may have a decay time of
1 msec or more, preferably, about 8 msec or more,” and may include other
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phosphors in addition to the delay phosphor. Id. at 22:27–30, 22:54–58; see
also id. at 6:33–46 (discussing and defining a “delay phosphor”). According
to the ’946 Patent, “[t]he delay phosphors and the other phosphors are
selected such that the light emitting device emits light having a desired
color,” such as white light, and “may be selected in consideration of flicker
effect prevention, light emitting efficiency, a color rendering index, and the
like.” Id. at 22:60–23:2.
Figure 20 of the ’946 Patent is reproduced below.

Figure 20 is a graph illustrating a light emitting characteristic of an AC light-
emitting device, where the device has two arrays of series-connected light
emitting cells, and the AC power source has a period T. Ex. 1001, 8:5–6,
23:22–24, 23:33–35. In Figure 20, dotted line (a) illustrates a light emitting
characteristic of a conventional AC light-emitting device that does not
employ a delay phosphor, and solid line (b) illustrates a light emitting
characteristic of an AC light emitting device that employs a delay phosphor.
Id. at 23:24–33. In the conventional device, each LED array is turned on
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once during the period T, when the AC voltage exceeds the threshold
voltage of the array, and is turned off during the remainder of the period T,
when the AC voltage does not exceed the threshold voltage of the array. Id.
at 23:33–43. According to the ’946 Patent, “a flicker effect may appear in
the conventional light emitting device due to gaps between times during
which the light emitting cells are operated.” Id. at 23:44–46. In the device
that employs a delay phosphor, light is emitted even while the light emitting
cells remain in the turned-off state. Id. at 23:47–50. According to the ’946
Patent, if the decay time of the delay phosphor is sufficiently long, a flicker
effect can be sufficiently reduced. Id. at 23:50–24:3.
E. Illustrative Claim
As explained above, this inter partes review involves claims 1, 3, and
4 of the ’946 Patent. Claim 1 is reproduced below with paragraphs adjusted
and bracketed notations added to correspond with Petitioner’s identification
of claim elements:
1. [1-PRE] A light emitting device, comprising:
[1a] a light emitting cell array configured to receive an
input voltage and comprising a plurality of light emitting cells
connected in series on a substrate,
[1b] the plurality of light emitting cells to emit light in
response to the input voltage, the input voltage to periodically
change during a period and to have a first voltage value, which
does not turn on the plurality of light emitting cells, after a first
peak value,
[1c] wherein the light emitting device emits light
comprising a periodically changing luminous intensity in
response to the input voltage,
[1d] the periodically changing luminous intensity of the
light emitting device has a second peak value and a minimum
value, the minimum value of the periodically changing luminous
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intensity is greater than zero when the input voltage has the first
voltage value, and
[1e] wherein each light emitting cell comprises an inclined
side surface.
Ex. 1001, 24:5–22; see Pet. 34–44 (identifying claim elements).
F. Asserted Grounds and References
We instituted an inter partes review based on the following grounds
of unpatentability asserted in the Petition:1
Claims Challenged 35 U.S.C. References
1, 3, 4 § 103(a)2 Hochstein,3 Krames,4 Rossner5
1, 3, 4 § 103(a) Masatoshi,6 Krames, Rossner

1 The chart does not include Petitioner’s asserted grounds against claim 8,
which Patent Owner statutorily disclaimed. Ex. 2001.
2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the ’946 Patent was issued on an application filed before this
date, the pre-AIA version of § 103 applies. Ex. 1001, code (22).
3 Ex. 1004, US 5,661,645, issued Aug. 26, 1997 (“Hochstein”).
4 Ex. 1005, M.R. Krames et al., High-power truncated-inverted-pyramid
(AlxGa1˗x)0.5In0.5P/GaP light-emitting diodes exhibiting >50% external
quantum efficiency, Appl. Phys. Lett. 75(16), 2365 (Oct. 18, 1999)
(“Krames”).
5 Ex. 1006, WO 2004/082032 A2, published Sept. 23, 2004 (“Rossner”).
Exhibit 1006 is a certified English translation of a German patent document
(Ex. 1007), and Exhibit 1008 is a translator’s affidavit.
6 Ex. 1010, JP H5-198843, published Aug. 6, 1993 (“Masatoshi”). Exhibit
1010 is a certified English translation of a Japanese patent document
(Ex. 1011), and Exhibit 1012 is a translator’s affidavit.
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G. Testimonial Evidence
Petitioner filed a Declaration of Peter W. Shackle, Ph.D. with the
Petition. Ex. 1003. Patent Owner cross-examined Dr. Shackle and filed a
transcript of the deposition as Exhibit 2007. Petitioner filed a Declaration of
Michael R. Krames, Ph.D. (Ex. 1057) with the Reply. Patent Owner cross-
examined Dr. Krames and filed a transcript of the deposition as
Exhibit 2019.
Patent Owner filed a Declaration of Alan Doolittle, Ph.D. with the
Response. Ex. 2008. Petitioner cross-examined Dr. Doolittle and filed a
transcript of the deposition as Exhibit 1056.
II. ANALYSIS
A. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
(requiring a petition for inter partes review to identify how the challenged
claim is to be construed and where each element of the claim is found in the
prior art patents or printed publications relied upon).
A patent claim is unpatentable under 35 U.S.C. § 103 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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(2007). The question of obviousness is resolved based on 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 ordinary skill in the art; and (4) when presented, objective evidence of
nonobviousness, i.e., secondary considerations.7 Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). Furthermore, Petitioner does not satisfy its burden of
proving obviousness by employing “mere conclusory statements,” but “must
instead articulate specific reasoning, based on evidence of record, to support
the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Relying on Dr. Shackle’s testimony, Petitioner provides the following
contention regarding a person of ordinary skill in the art (“POSITA”):
A POSITA in this field would have had at least a
bachelor’s degree in electrical engineering or physics, plus three
years of experience in circuit design and semiconductor
fabrication related to lighting. Alternatively, a POSITA would
have had a master’s degree in electrical engineering or physics,
plus two years of experience in circuit design and semiconductor
fabrication related to lighting. . . . A person with less education
but more relevant practical experience, depending on the nature

7 In this case, Patent Owner does not present objective evidence of
nonobviousness.
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of that experience and degree of exposure to circuit design and
semiconductor fabrication related to lighting, could also qualify
as a POSITA in the field of the ’946 patent.
Pet. 12–13 (citing Ex. 1001 at 1:24–28; Ex. 1003 ¶¶ 28–33). Dr. Krames
applies the foregoing description of a POSITA. Ex. 1057 ¶ 21. Patent
Owner and Dr. Doolittle accept Petitioner’s description of a POSITA’s level
of skill. PO Resp. 12; Ex. 2008 ¶ 47.8
In our analysis below, we apply Petitioner’s uncontested definition of
a POSITA, which is supported by Dr. Shackle’s testimony (Ex. 1003 ¶¶ 32,
33) and is consistent with the scope and content of the ’946 Patent and the
asserted prior art.
C. Claim Construction
In an inter partes review, we apply the same claim construction
standard as would be used by a federal district court to construe a claim in a
civil action involving the validity or infringement of a patent. 37 C.F.R.
§ 42.100(b) (2020). Under that standard, claim terms are given their
ordinary and customary meaning, as would have been understood by a

8 Patent Owner argues that Petitioner’s declarant, Dr. Shackle, does not
qualify as a POSITA under Petitioner’s definition. PO Resp. 12. In view of
our resolution of Petitioner’s challenges, we do not need to reach this issue.
We note, however, that the relevant question is not whether Dr. Shackle is
himself a POSITA, but rather whether he has sufficient technical expertise to
be qualified to testify from the perspective of a POSITA. See Sundance, Inc.
v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361–64 (Fed. Cir. 2008)
(error to admit testimony of witness with no relevant technical expertise on
issues such as obviousness, which requires analysis from the perspective of a
POSITA); see also SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360,
1373 (Fed. Cir. 2010), aff’d sub nom. Glob.-Tech Appliances, Inc. v. SEB
S.A., 563 U.S. 754 (2011) (expert testimony admissible where testimony
established an “adequate relationship” between witness’s experience and the
claimed invention).
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person of ordinary skill in the art at the time of the invention, in light of the
language of the claims, the specification, and the prosecution history of
record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir.
2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1365–66 (Fed. Cir. 2012).
Neither party proposes any express claim constructions. See
Pet. 13–14; see generally PO Resp. We determine that no claim term
requires express construction for purposes of resolving the controversy.
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“only those terms need be construed that are in controversy, and only
to the extent necessary to resolve the controversy”); see also Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
Cir. 2017) (applying Vivid Techs. in the context of inter partes review).
D. Petitioner’s References
1. Hochstein (Ex. 1004)
Hochstein discloses a power supply for an LED array. Ex. 1004,
code (54). According to Hochstein, the disclosure “relates generally to an
apparatus for generating power to a light emitting diode array and, in
particular, to a power supply for operating light emitting diode array traffic
signals.” Id. at 1:5–8.
Hochstein discloses an apparatus for supplying regulated voltage d.c.
electrical power to an LED array, where the apparatus includes a rectifier
responsive to a.c. power for generating rectified d.c. power, a power factor
correction converter responsive to the rectified d.c. power for generating
regulated voltage d.c. power to illuminate the LED array, and a detector for
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causing the apparatus to reduce regulated d.c. power to dim the LED array.
Ex. 1004, code (57), 3:18–31, 11:48–62.9
Figure 5 of Hochstein is reproduced below:

Hochstein Figure 5 is a schematic diagram of a regulated voltage, switch
mode power supply for LED signals. Ex. 1004, 4:31–33. As shown in
Figure 5, power supply 10 is connected to LED array 12. Id. at 5:3–4. LED
array 12 includes a plurality of strings of series-connected LEDs 14 with
ballasting resistor 16 (R1, R2, R3, etc.) connected in each string. Id. at 5:5–
8. The strings are connected in parallel between first input line 18 and
second input line 20 of the LED array 12. Id. at 5:8–10.
Hochstein discloses that power supply 10 has a pair of power input
lines 22 for connection to a source of a.c. power (not shown in Figure 5).
Ex. 1004, 5:11–13. As shown in Figure 5, the circuitry connected between

9 In Hochstein, we understand “d.c.” as an abbreviation for direct current and
“a.c.” as an abbreviation for alternating current.
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input power lines 22 and LED array 12 includes an optional adaptive clamp
circuit 24 (id. at 5:13–15), electromagnetic interference (“E.M.I.”) filter 28
(id. at 5:30–32), full wave rectifier 32 (id. at 5:35–41), power factor
correction (“P.F.C.”) buck/boost switch mode converter 38 (id. at 5:41–43),
and an optional pulse width modulated (P.W.M.) modulator 46 (id.
at 5:59–65). Hochstein discloses that “[t]he output voltage from the P.F.C.
switch mode converter 38 is either fed directly to the LED array 12, or
alternatively through the P.W.M. modulator 46.” Id. at 5:66–6:1.
Hochstein states that LEDs are being used to replace incandescent
lamps to save energy “in many applications,” including for traffic signals.
Ex. 1004, 1:9–13, 1:62–64, 2:28–33, 10:23–27. Hochstein discloses that,
when traffic signals are retrofitted with LEDs, users expect the traffic signal
to operate normally without modification of the housing or control circuitry.
Id. at 10:27–34. According to Hochstein, “[m]any existing incandescent
lamp traffic signals are dimmed at night to reduce glare and . . . power
consumption,” and LED retrofits pose a problem with dimming. Id.
at 10:35–42. Hochstein discusses reasons for this problem and ways to
make an LED array respond to a dimming command so that the average
LED current and intensity are reduced and the LED signal operates “in the
same manner as conventional incandescent signals.” Id. at 10:42–11:15.
Hochstein discloses that the Figure 5 power supply is capable of
responding to a dimming signal by decreasing the average current to LED
array 12. Ex. 1004, 11:16–44, 12:55–13:8. More specifically, Hochstein
discloses that power supply 10 includes detector 88 for detecting a dimming
signal on a.c. power lines 22 and generating a control signal directed either
to power supply regulator circuit 38 or to pulse width modulator 46. Id.
at 11:16–36. According to Hochstein, “[i]n cases where the LED array is
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powered by a pulse width modulator, such as the modulator 46 . . . the
output of the detector 88 is connected . . . to an input of the modulator 46
such that the average current delivered to the LED array may be reduced by
decreasing the pulse width of the modulator.” Id. at 11:29–36. In this
manner, the average current through LED array 12 is decreased, and LED
array 12 is dimmed. Id. at 11:37–41, 12:64–13:8.
2. Masatoshi (Ex. 1010)
Masatoshi discloses “a light-emitting diode lamp or light-emitting
diode display device comprising a plurality of light-emitting diodes and a
rectifying bridge circuit, wherein a light-emitting diode is used as a diode for
structuring the rectifying bridge circuit.” Ex. 1010 ¶ 6. Masatoshi further
discloses that “the light emission surface side of the light-emitting diode for
structuring the rectifying bridge circuit is intermingled with the light
emission surface sides of the light-emitting diodes.” Id. ¶ 7. According to
Masatoshi, “[u]sing the diodes for rectification, used in the rectifying bridge
circuit for converting the AC current into a DC current, as also the diodes for
light emission increase[s] the number of diodes that emit light, enabling an
improvement in the light intensity without increasing the number of circuit
components.” Id. ¶ 8.
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Figures 1 and 2 of Masatoshi are reproduced below.

Masatoshi Figure 1 is a circuit diagram for a light-emitting diode lamp, and
Figure 2 is a front view of the displaying portion side of a light-emitting
diode lamp. Ex. 1010 ¶ 14. As shown in Figure 1, the circuit includes AC
input terminal 1, rectifying bridge circuit 3, current-limiting resistors 4, a
plurality of light-emitting diodes 5, and four light-emitting diodes 5A, one in
each branch of bridge rectifying circuit 3, where diodes 5A serve for both
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rectification and light emission. Id. ¶¶ 2, 9, 10, Figs. 1, 3. Masatoshi
discloses that light-emitting diodes 5 are attached to a substrate and
connected in series on the output side of bridge rectifying circuit 3, which
converts an AC current into a DC current. Id. ¶ 2. As shown in Figure 2,
individual light-emitting diodes 5 and 5A, “are intermingled attached to the
substrate 6 [sic, 7], with the light-emitting surface sides thereof . . . aligned.”
Id. ¶ 10.
With reference to Figures 1 and 2, Masatoshi discloses:
In this light-emitting diode lamp, the light-emitting diodes 5,
5,… and the diodes 5A, 5A,…, for both rectification and light
emission, which are connected through a resistor, are lit by DC
that is converted by the diodes 5A, 5A,…, for both rectification
and light emission, of the rectifying bridge circuit 3, through the
application of a prescribed AC power to the AC input terminal 1.
Note that while some degree of flashing will be visible because
the diodes 5A, 5A,…, for both rectification and light emission
are lit through half-wave currents, these are four diodes that are
mixed in among many diodes, and thus this will not exist
noticeably when viewed from a distance.
Ex. 1010 ¶ 10 (ellipses in original).
3. Krames (Ex. 1005)
Krames is a journal article with the title, “High-power truncated-
inverted-pyramid (AlxGa1˗x)0.5In0.5P/GaP light-emitting diodes exhibiting
>50% external quantum efficiency.” Ex. 1005, 2365. The abstract states:
“A truncated-inverted-pyramid (TIP) chip geometry provides substantial
improvement in light extraction efficiency over conventional AlGaInP/GaP
chips of the same active junction area (~0.25 mm2). The TIP geometry
decreases the mean photon path-length within the crystal, and thus reduces
the effects of internal loss mechanisms.” Id.
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Figure 1 of Krames is reproduced below:

Krames Figure 1 shows the geometry of a truncated-inverted-pyramid LED.
Ex. 1005, 2366-1 (Figure 1 caption).10 Figure 1(a) is a photomicrograph of a
TIP LED under forward bias, and Figure 1(b) is a schematic cross section
showing how photons may be redirected and extracted from the TIP LED.
Id. According to Krames, “[t]he TIP LED exhibits ~1.4× improvement in
extraction efficiency compared to the conventional device” for a red-
emitting AlGaInP/GaP LED under a forward direct current of 100 mA
(~40 A/cm2). Id. at 2366-1, 2366-2 (Figure 2 title and caption). Krames
also shows increased efficiency in terms of light output versus current input
of the TIP device as compared with conventional devices and asserts that
“[t]he peak output power of the TIP LED is approximately an order of
magnitude greater than that of the standard 5 mm lamps.” Id. at 2366-1,
2366-2, Fig. 3. According to Krames, the TIP LED shows the greatest
efficiency improvement under pulsed (1% duty cycle) operation, especially
for shorter wavelength devices. Id. at 2366-2, 2367-1, 2367-2, Figs. 3, 4.

10 Where appropriate, we use a suffix “-1” or “-2” to indicate the first or
second column of the cited page of Exhibit 1005.
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4. Rossner (Ex. 1006)
Rossner discloses a light source comprising at least one LED for
emitting a primary radiation and at least one luminescent substance for
converting the primary radiation into secondary radiation. Ex. 1006, 1:7–10,
2:27–30. One object of Rossner’s disclosure is “to describe a luminescence
conversion of LED that will continue to emit light for a longer period of
time also in the event of a power outage.” Id. at 2:20–23. Another object is
to provide “an energy-efficient LED and a preferably long lasting LED.” Id.
at 2:23–25.
Rossner discloses that, due to the “phosphorescence effect” of the
luminescent substance, the secondary radiation has a “relatively long” decay
time of “of at least 0.1 s, preferably of at least one second, until the intensity
of the luminescence is no longer perceptible by the human eye.” Ex. 1006,
2:30–34, 3:7–10. Rossner explains this phenomenon as follows: “After
switching off the LED, and therefore with the end of the excitation of the
luminescent substance, the luminescent substance emits secondary radiation
for a longer period of time. The light source is visible even after the time
when the LED has been switched off.” Id. at 3:10–15. According to
Rossner, decay times of “several minutes to several hours” are useful for
light sources used as emergency illumination. Id. at 3:21–36.
Rossner discloses that “[t]he light source can have a single LED with
an associated luminescent substance” or “a plurality of LEDs with their
associated luminescent substances . . . arranged in the form of an array.”
Ex. 1006, 4:21–24.
Rossner describes a “particularly preferred embodiment” as follows:
[T]he LUKOLED is operated with a phosphorescent luminescent
substance by means of dimming with suitable duty cycles and a
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switch-off duration of at least 50 ms. It is possible therein to
implement a particularly energy-efficient LED by selecting a
duty cycle of at least 1:1000 ranging to as low as 1:10000 or even
less.
Because of the flicker effect on the human eye,
conventional LUKOLEDs are required to use a duty cycle of at
most 1:100. The use of suitable storage phosphors, on the other
hand, offers an elegant option for lowering this threshold further.
Ex. 1006, 6:5–16. Rossner uses the acronym “LUKOLED” to refer to a
luminescence conversion LED. Id. at 6:5; see also Pet. 52 n.7 (explaining
the acronym and citing Ex. 1003 ¶ 101).
Rossner describes this energy efficient embodiment in more detail as
follows:
According to an embodiment as an energy-efficient LED,
the KUKOLED [sic, LUKOLED], which is equipped with
storage phosphor, is operated by means of PWM, with a switch-
off duration of at least 50 ms, preferably 200 ms. Due to the
inertia of the human eye, a duty cycle of 1:1000 or, depending
on the storage phosphor and the decay time thereof, even of
1:10000 or still higher is completely sufficient for continuing to
facilitate giving the impression of a radiating light source. Using
Sr-aluminate or yttrium oxysulfide, a LUKOLED can be
employed, specifically, with a duty cycle of 1:5000. In total, the
duty cycle can be between 1:2 and 1:10000, depending on the
choice of the luminescent substance; for example, the duty cycle
as shown in Figures 2 and 3 can be used.
Ex. 1006, 9:9–21; see also id. at 2:12–16 (stating that it is known in the art
that pulse width modulation (PWM) allows the operation of LEDs by means
of dimming with specific duty cycles).
Rossner discloses examples of suitable storage phosphors. Ex. 1006,
11:12–21. Rossner describes the suitability of these phosphors for use with
pulse width modulation, as follows:
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Any of the specifically listed storage phosphors are
suitable, in principle, for an operation of the PWM, particularly
Sr aluminate or another aluminate or an oxide or sulfide, as
explained above. Many of these luminescent substances share
the inherent characteristic that their light intensity initially
decreases drastically, similarly to normal fluorescent
luminescent substances. However, due to trapping processes, it
is possible to observe long-lasting residual phosphorescence that
the human eye can perceive for minutes, even hours. Due to the
sensitivity of the eye, the residual phosphorescence continues to
be easily perceptible. Particularly well suited are luminescent
substances whose decay time is at least 0.1 s until the intensity
of the luminescence has decreased to one per mille of the original
intensity; particularly preferred are those luminescent substances
that have a decay time of over one second during which time the
intensity of the luminescence decreases by 50%.
Ex. 1006, 10:13–30.
E. Petitioner’s Obviousness Challenges
We instituted an inter partes review based on the obviousness theory
set forth in the Petition. Inst. Dec. 20–23, 30–33. During trial, Petitioner
abandoned its original theory and proposed a new theory. Petitioner’s new
theory fails for both procedural and substantive reasons. First, Petitioner’s
new theory exceeds the proper scope of a reply. Second, Petitioner and its
declarants fail to provide an adequate rationale to support Petitioner’s new
obviousness theory. Third, Petitioner’s obviousness case suffers from an
improper hindsight bias, as evidenced by the deposition testimony of its
declarant and Petitioner’s evolving positions. Fourth, Petitioner has not
shown persuasively that the prior art teaches or suggests claim element 1e.
Below we summarize Petitioner’s original and new obviousness theories and
then address each of these reasons for our determination. Our determination
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applies to each of claims 1, 3, and 4, and a claim-by-claim analysis is not
necessary.
1. Petitioner’s Original Obviousness Theory
According to the Petition’s first ground, the light emitting device of
claims 1, 3, and 4 would have been obvious in view of Hochstein’s LED
array driving circuit, Rossner’s storage phosphors, and Krames’ LED chip
shape. Pet. 24–34; see especially Pet. 25, 34 (summarizing contentions);
Inst. Dec. 20. According to the Petition’s second ground, the light emitting
device of claims 1, 3, and 4 would have been obvious in view of Masatoshi’s
light-emitting device, Rossner’s storage phosphors, and Krames’ LED chip
shape. Pet. 50–52; Inst. Dec. 30.
As presented in the Petition, Petitioner’s obviousness theory relied on
“Hochstein[]’s LED chips” (Pet. 27) or “Masatoshi’s LEDs” (Pet. 50),
without identifying the types of LEDs disclosed in Hochstein or Masatoshi
and without asserting that a POSITA would have made any modification to
the LEDs of Hochstein or Masatoshi before combining them with Rossner’s
phosphors and Krames’ LED chip shape.
The Petition repeatedly relied on Hochstein’s LEDs, without
identifying what type of LEDs they are or what wavelengths or colors of
light they emit and without proposing any change to the composition or
wavelength characteristics of the LEDs when combining them with
Rossner’s phosphors and Krames’ LED chip shape. Pet. 25 (“[A] POSITA
would understand . . . how to conventionally shape the chips of
[Hochstein’s] LEDs based on Krames . . . .”); Pet. 27 (“A POSITA would
have been motivated and found it obvious to implement inclined sidewalls
per Krames with Hochstein[]’s LED chips.”); Pet. 28 (“[A] POSITA would
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be motivated to and would have found it obvious to used [sic] inclined
sidewalls (per Krames’s TIP geometry) with Hochstein[]’s LED chips.”);
Pet. 32 (“[A] POSITA would have been motivated and found it obvious to
use Rossner[]’s storage phosphors with Hochstein[]’s device . . . .”); Pet. 35
(“A POSITA would have utilized Hochstein[]’s power supply to drive its
LED arrays, with the cells of the arrays having inclined sidewalls per
Krames.”); Pet. 37 (“A POSITA would therefore understand and reasonably
expect Hochstein[]’s LED cells to be arranged on a substrate . . . .”); Pet.
44–45 (“[A] POSITA would have been motivated and found it obvious to
use Krames’s TIP geometry with the Hochstein[] LED cells to improve
light extraction.”) (emphasis added in each instance).
The same is true for Petitioner’s Masatoshi-led ground. The Petition
repeatedly relied on Masatoshi’s LEDs, without identifying what type of
LEDs they are or what wavelengths or colors of light they emit and without
proposing any change to the composition or wavelength characteristics of
the LEDs when combining them with Rossner’s phosphors and Krames’
LED chip shape. Pet. 50–51 (“[A] POSITA would have found it obvious to
. . . implement Masatoshi’s LEDs with inclined sidewalls as per Krames
. . . .”); Pet. 51 (“[I]t was obvious in view of Krames to implement
Masatoshi’s LEDs using cells having a ‘truncated inverted pyramid’ (‘TIP’)
shape.”); Pet. 52 (“Using Rossner[]’s storage phosphors would provide a
simple and predictable way to reduce the flashing/flicker of Masatoshi’s
LEDs.”); Pet. 53 (“A POSITA would have found it obvious to . . .
implement Masatoshi’s circuit design wherein the light-emitting cells of its
LED array have inclined sidewalls (Krames) . . . .”); Pet. 55 (“Masatoshi’s
circuit design uses LEDs 5 and 5A, all of which are arranged on a single
substrate.”); Pet. 62 (“it was obvious to implement Masatoshi’s LEDs such
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that its light-emitting cells included inclined side surfaces per Krames . . . .”)
(emphasis added in each instance).
Similar to the Petition, Dr. Shackle’s declaration testimony relied on
Hochstein’s or Masatoshi’s LEDs, without identifying what they are and
without proposing any modification of those LEDs before combining them
with Krames’ TIP geometry. See, e.g., Ex. 1003 ¶ 75 (“A POSITA would
have implemented inclined sidewalls per Krames with Hochstein[]’s LED
chips.”); ¶ 77 (“[A] POSITA would have implemented Krames’s inclined
sidewalls (per the TIP geometry) with Hochstein[]’s LED chips.”); ¶ 93
(page 56: “A POSITA would have used Krames’s TIP geometry with the
Hochstein[] LED cells to improve light extraction . . . .”); ¶ 98 (“[A]
POSITA would have implemented Masatoshi’s LEDs in view of Krames’s
TIP geometry . . . .”); ¶ 101 (“Using Rossner[]’s storage phosphors would
provide a simple and predictable way to reduce the flicker level of
Masatoshi’s LEDs . . . .”); ¶ 103 (page 66: “[A] POSITA would have
implemented Masatoshi’s LEDs with the LED cells including inclined side
surfaces per Krames . . . .”).
2. Petitioner’s New Obviousness Theory
In the Reply, Petitioner changed course. Petitioner abandoned its
original theory that a POSITA would have combined Hochstein’s LED
chips or Masatoshi’s LEDs with Rossner’s phosphors and Krames’ LED
chip shape. See, e.g., Pet. 27, 50–51. In the Reply, Petitioner concedes that
gallium nitride (GaN)-based LEDs would be needed in order to excite
Rossner’s phosphors and relies on Rossner, not Hochstein or Masatoshi, as
disclosing GaN-based LEDs. Pet. Reply 2–3 (citing, among other things,
Ex. 1006, 1:21–22, 7:27–30, 8:15–19, 11:6–10). It is undisputed that GaN-
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based LEDs are not disclosed in Hochstein or Masatoshi, and that blue-
emitting GaN-based LEDs had not even been invented at the time Masatoshi
was filed. Ex. 1010, 1; Ex. 2007, 31:13–21 (Hochstein “doesn’t give any
clue as to what kind of LEDs he’s using”); id. at 75:1–4, 76:6–17 (Masatoshi
discloses “a gallium aluminum arsenide red-light-emitting LED” and “[b]lue
LEDs . . . were invented back in 1994”); Ex. 2008 ¶¶ 17, 88, 89, 156; see
also Ex. 1010, 1 (Masatoshi’s filing date is January 23, 1992). The Petition
and Shackle Declaration made no mention of GaN-based LEDs, except
when quoting from Rossner’s disclosure in connection with dependent
claim 8, which has been disclaimed. Pet. 71; Ex. 1003 ¶ 106 (page 74).
In a further departure from the Petition, Petitioner’s new obviousness
theory relies on a subset of GaN-based LEDs, namely GaN-on-SiC (silicon
carbide) LEDs. Pet. Reply 7. GaN-on-SiC LEDs are not disclosed in any of
the references relied upon for Petitioner’s obviousness grounds, i.e.,
Hochstein, Masatoshi, Krames, and Rossner. The Petition and Shackle
Declaration made no mention of GaN-on-SiC LEDs. When asked about the
LED material and substrate, Dr. Shackle did not identify GaN-on-SiC LEDs
at his deposition. Ex. 2007, 32:16–33:21, 38:11–39:10, 45:3–46:12,
47:7–20, 54:5–12, 57:12–20. As support for its new obviousness theory
based on GaN-on-SiC LEDs, Petitioner relies on two new references that
were not cited in the Petition or the Shackle Declaration.11,12 Pet.
Reply 8, 11.

11 Ex. 1035, Krames et al., US 6,486,499 B1, issued Nov. 26, 2002 (“the
’499 patent”).
12 Ex. 1058, Cree Doubles Brightness of Blue and Green LEDs,
6(8) Compound Semiconductor 11 (Nov. 2000) (“the Cree article”).
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In place of Petitioner’s original theory that a POSITA would have
found it obvious to implement Hochstein’s LED chips or Masatoshi’s
LEDs with inclined sidewalls per Krames’ TIP geometry (Pet. 27, 50–51),
Petitioner asserts for the first time in the Reply that “a POSITA would have
known that Krames’ TIP geometry could be implemented in GaN-on-SiC
LEDs,” which are not disclosed in Hochstein, Masatoshi, Krames, or
Rossner, and not mentioned in the Petition or the Shackle Declaration. Pet.
Reply 7 (heading; emphasis added).
3. Proper Scope of Reply
Patent Owner argues that Petitioner’s GaN-on-SiC argument is
untimely and should be excluded. PO Sur-reply 1–8. The legal authority
applicable to Patent Owner’s argument is summarized below.
Our reviewing court has explained:
It is of the utmost importance that petitioners in the IPR
proceedings adhere to the requirement that the initial petition
identify “with particularity” the “evidence that supports the
grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3).
. . .
Unlike district court litigation—where parties have greater
freedom to revise and develop their arguments over time and in
response to newly discovered material—the expedited nature of
IPRs bring with it an obligation for petitioners to make their case
in their petition to institute. While the Board’s requirements are
strict ones, they are requirements of which petitioners are aware
when they seek to institute an IPR.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1369 (Fed. Cir. 2016) (holding that petitioner’s reply brief and
accompanying declaration exceeded the scope of the reply under 37 C.F.R.
§ 42.23(b)). In a subsequent case, the Federal Circuit held that a petitioner’s
reply arguments “amount to an entirely new theory of prima facie
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obviousness absent from the petition” and that “[s]hifting arguments in this
fashion is foreclosed by statute, our precedent, and Board guidelines.”
Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir.
2017) (holding that the Board did not err in declining to consider petitioner’s
reply argument).
Our rules require that a petition include “[a] full statement of the
reasons for the relief requested” and that “[a] reply may only respond to
arguments raised in the corresponding . . . patent owner response.”
37 C.F.R. §§ 42.22(a)(2), 42.23(b).
The trial practice guide elaborates on these rules, explaining that
“Petitioner may not submit new evidence or argument in reply that it could
have presented earlier, e.g. to make out a prima facie case of
unpatentability.” Consolidated Trial Practice Guide November 2019
(“CTPG”)13 at 73. “While replies . . . can help crystalize issues for decision,
a reply . . . that raises a new issue or belatedly presents evidence may not be
considered. The Board is not required to attempt to sort proper from
improper portions of the reply . . . .” Id. at 74. As one example of
impermissible new argument or evidence, the trial practice guide identifies a
“newly raised rationale to combine the prior art references that was not
expressed in the petition.” Id.
Applying the foregoing legal authority, we agree with Patent Owner
that Petitioner’s Reply improperly introduces new argument and new
evidence. As discussed above, Petitioner changed its obviousness theory
from one that relied on combining Hochstein’s or Masatoshi’s LEDs with
Krames’ TIP geometry and Rossner’s phosphors, as asserted in the Petition

13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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(Pet. 27, 50–51) to one based on combining GaN-on-SiC LEDs with
Krames’ TIP geometry and Rossner’s phosphors, as asserted in the Reply
(Pet. Reply 7). GaN-on-SiC LEDs are not disclosed in Hochstein,
Masatoshi, or any of the other references asserted in the Petition. As support
for its contention that GaN-on-SiC LEDs were known, Petitioner relies on
two new references—the ’499 patent and the Cree article—that were not
cited in the Petition or the Shackle Declaration.
Petitioner argues that its reply argument and evidence are not new, but
were presented to “show[] that Patent Owner’s statements were false and
contrary to what was known in the prior art; namely, that you can cut the
substrates related to GaN-based LEDs, specifically, silicon carbide
substrates, using a beveled blade.” Tr. 34:4–8. We disagree. The Petition
relied on Hochstein in view of Krames or Masatoshi as teaching “a light
emitting cell array . . . comprising a plurality of light emitting cells
connected in series on a substrate,” as recited in claim element 1a.
Pet. 36–37, 54–55. In its Response, Patent Owner argued that the LEDs
disclosed in Hochstein, Masatoshi, or Krames would not work in Petitioner’s
proposed combination with Rossner. PO Resp. 17. In the Reply, Petitioner
agreed with Patent Owner, asserting for the first time that GaN-based LEDs,
more specifically GaN-on-SiC LEDs, would have been used. Pet. Reply 2,
7. To show that GaN-on-SiC LEDs were in the prior art, Petitioner relied on
two new references: the ’499 patent and the Cree article. Exs. 1035, 1058.
Rather than explaining how its original petition was correct, Petitioner’s
reply argument and evidence “amount to an entirely new theory of prima
facie obviousness absent from the petition. Shifting arguments in this
fashion is foreclosed by statute, our precedent, and Board guidelines.”
Wasica, 853 F.3d at 1286.
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The foregoing analysis provides a sufficient basis for our
determination that Petitioner failed to prove that claims 1, 3, and 4 of the
’946 Patent are unpatentable. Petitioner abandoned its original theory of
obviousness and presented a new theory of obviousness based on new
evidence in the Reply. Under our rules, this is procedurally improper and
leaves us with no properly presented ground of unpatentability on which we
could hold for Petitioner. 37 C.F.R. § 42.23(b); CTPG 73–74.
Nevertheless, we provide three additional reasons for our
determination in favor of Patent Owner.
4. Obviousness Rationale
As presented in the Reply, Petitioner’s new obviousness theory
requires a combination of Hochstein’s driving circuit, Rossner’s storage
phosphors, Krames’ TIP geometry, and GaN-on-SiC LEDs, as disclosed in
the ’499 patent or the Cree article. See Pet. Reply 7 (arguing that Krames’
TIP geometry could have been implemented in GaN-on-SiC LEDs).
Alternatively, Petitioner’s new obviousness theory requires a combination of
Masatoshi’s circuit, Rossner’s storage phosphors, Krames’ TIP geometry,
and GaN-on-SiC LEDs, as disclosed in the ’499 patent or the Cree article.
Id. Petitioner does not, however, present a sufficient evidence-supported
rationale for combining GaN-on-SiC LEDs with either Hochstein’s driving
circuit or Masatoshi’s circuit. No such rationale is presented in the Petition
or the Shackle Declaration, which do not mention GaN-on-SiC LEDs.
Although Petitioner’s Reply and the Krames Declaration discuss GaN-on-
SiC LEDs, neither document explains why a POSITA would have had
reason to combine them with Hochstein’s driving circuit or Masatoshi’s
circuit. In fact, the Krames Declaration makes no mention of either
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Hochstein or Masatoshi. See generally Ex. 1057. Accordingly, Petitioner
has not provided sufficient evidence or reasoning to support its new
obviousness theory based on GaN-on-SiC LEDs.
5. Hindsight
Viewing Petitioner’s arguments and evidence as a whole, we find that
Petitioner’s obviousness case suffers from an improper hindsight bias.
Both the Petition and the Reply rely on the Shackle Declaration as
support for a motivation or rationale for combining the prior art teachings.
Pet. 24–34, 50–52; Pet. Reply 17–25; Ex. 1003 ¶¶ 69–92, 95–102.
Dr. Shackle’s deposition testimony reveals that Dr. Shackle did not
adequately consider how or why a POSITA would have combined the
teachings of Hochstein or Masatoshi with Krames and Rossner. It appears to
us that Petitioner (or Dr. Shackle) selected the asserted references based on
the elements of the challenged claims without sufficiently considering
whether a POSITA would have had reason to combine their teachings.
Our findings are supported by Dr. Shackle’s deposition testimony,
which indicates that he did not adequately consider how or why a POSITA
would have combined the references to arrive at the claimed invention. For
example, Dr. Shackle testified that “a POSITA would have used chips
having inclined sidewalls,” but that he did not propose “using any particular
material for chips” and “did not address the subject of what chips would be
made out of.” Ex. 2007, 32:16–33:21. As it turns out, however, the material
the chip is made of is critical because, as discussed below and conceded by
Petitioner, the LED material disclosed in Krames does not emit the
wavelengths of light needed to excite Rossner’s phospors. Pet. Reply 2.
Dr. Shackle also testified that he did not consider, as part of his obviousness
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analysis, what substrate would have been used when combining Hochstein,
Krames, and Rossner. Ex. 2007, 45:3–46:12, 47:7–20. Again, as it turns
out, the substrate is important because Petitioner now proposes a particular
substrate (silicon carbide) and does not dispute that sapphire substrates
cannot be sawn with the beveled dicing blade disclosed in Krames and relied
upon in the Petition. Pet. 27; Pet. Reply 2, 5–6; Ex. 1005, 2366.
Furthermore, when asked how a POSITA would have actually gone
about combining Hochstein, Krames, and Rossner, Dr. Shackle merely
referred to the particular teachings of each reference that Petitioner relies
upon as disclosing the claim elements, conceding “that’s the extent to which
I thought it through.” Ex. 2007, 123:4–15. Dr. Shackle conceded that
combining the teachings was “much easier said than done” and he did not
think through the technical details. Id. at 123:16–21. Dr. Shackle’s
testimony shows that he relied too heavily on the claim elements and did not
sufficiently consider the teachings of the asserted references. Id. When
asked how a POSITA would have combined the references, Dr. Shackle
merely paraphrased the claim elements and asserted that a POSITA would
have combined them. Ex. 2007, 45:3–46:12, 123:4–21. Dr. Shackle’s
explanation is not persuasive because it fails to account for the particular
context in which the features that purportedly teach the claim elements were
disclosed in the prior art.
Petitioner argues that the claims of the ’946 Patent are not limited to
any particular LED material, substrate, or process for forming inclined side
surfaces. Pet. Reply 4, 6. That may be true, but it does not relieve Petitioner
from meeting its burden to show that a POSITA would have been motivated
to combine the teachings of the asserted references to achieve the claimed
invention. Petitioner has not shown that there would have been a reason to
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combine Krames’ TIP geometry with Rossner’s phosphors, as asserted in the
Petition. Pet. 25, 34, 50–52. Krames discloses TIP geometry for a red-
emitting AlGaInP/GaP LED, not for a blue or ultraviolet (UV)-emitting
LED, which Petitioner agrees is needed to excite Rossner’s phosphors. Pet.
Reply 2; Ex. 1005, 2365 (title), 2366 (Figs. 1, 2); Ex. 1006, 1:21–22, 7:27–
30, 8:16–19, 11:6–10; Ex. 2007, 44:9–17. Petitioner’s rationale for
combining the references does not account for this incompatibility between
Krames and Rossner. Pet. 24–34, 50–52; Ex. 1003 ¶¶ 69–92, 95–102.
Our finding regarding impermissible hindsight bias is further
supported by the evolving nature of Petitioner’s obviousness case. At his
deposition, Dr. Shackle proposed a theory of obviousness that was not
presented in his declaration. In the Reply, Petitioner presented another new
theory of obviousness that was not presented either in the Petition or during
the Shackle deposition.
In his declaration, Dr. Shackle testified that a POSITA would have
applied Krames’ teachings to Hochstein’s and Masatoshi’s LEDs by “using
a beveled dicing blade in lieu of a standard dicing blade” to implement TIP-
shaped LEDs. Ex. 1003 ¶¶ 76, 98. Recognizing the incompatibility between
Krames and Rossner, Dr. Shackle proposed a new theory of obviousness at
his deposition. See Ex. 2007, 52:9–13 (“Because I think where you’re
leading to is the idea that, hey, if you want blue lights to excide [sic, excite]
a phosphor, that the red LEDs, which Krames describes, would not be ideal.
So the point is that Krames’ ideas can be applied perfectly well to blue
LEDs.”). Advancing a theory that was not in his declaration and is not
supported by Krames, Dr. Shackle asserted that a POSITA would have made
inclined sidewalls “by etching, rather than by cutting and dicing” and that
the LEDs “would look more like a pyramid than an inverted pyramid.”
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Ex. 2007, 36:18–37:5, 64:3–15 (referring to a GaN-based chip on a sapphire
substrate). It is undisputed that etching is not disclosed by Krames. Pet.
Reply 8 n.2 (admitting that “etching . . . to form inclined sidewalls . . . may
differ from the TIP geometry and sawing process of the Krames article”).
Although Dr. Shackle repeatedly testified that a POSITA would have made
inclined sidewalls by etching and that the resulting LEDs would have had a
pyramid shape rather than an inverted pyramid shape (id. at 41:8–16,
50:9–52:13, 109:18–110:15), Petitioner did not pursue that theory in the
Reply.
Instead, Petitioner proposes another theory of obviousness that was
not presented in the Petition or during the Shackle deposition. Rather than
asserting that a POSITA would have made inclined sidewalls by etching to
form a pyramid shape, as asserted by Dr. Shackle (id.), Petitioner returns to
the cutting method and TIP shape asserted in the Petition (Pet. 27, 51) and
proposes a type of LED that was not mentioned in the Petition, the Shackle
Declaration, or the Shackle deposition, namely GaN-on-SiC LEDs. Pet.
Reply 2, 5–13. Petitioner’s twice evolving obviousness case and lack of
adequate supporting evidence undermines the credibility of its asserted
rationale for combining and modifying the prior art and suggests that it was
based on improper hindsight bias. See Metalcraft of Mayville, Inc. v. Toro
Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to
how or why the references would be combined to arrive at the claimed
invention, we are left with only hindsight bias that KSR warns against.”).
6. Claim Element 1e
Claim 1 recites “[a] light emitting device, comprising: a light emitting
cell array . . . comprising a plurality of light emitting cells . . . wherein each
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light emitting cell comprises an inclined side surface.” Ex. 1001, 24:5–22.
By its plain language, claim 1 requires an array of light emitting cells, where
each cell in the array has an inclined side surface.
As discussed above, Petitioner introduces a new argument in the
Reply that “a POSITA would have known that Krames’ TIP geometry could
be implemented in GaN-on-SiC LEDs.” Pet. Reply 7. As support for this
argument, Petitioner introduces two new references, the ’499 patent and the
Cree article. Id. at 8, 11 (citing Exs. 1035, 1058). Even if Petitioner’s new
reply argument and evidence were permissible, Petitioner has not shown that
the asserted prior art teaches or suggests an array of light emitting cells,
where each cell in the array has an inclined side surface, as claimed.
Petitioner’s only identification of inclined sidewalls in the Reply is the
following side-by-side annotations of Figure 15 of the ’499 patent and
Figure 1(b) of Krames:14

14 Although Petitioner’s Reply relies on the Cree article to show that “a
variant of Krames’s TIP geometry was used in Cree’s[] GaN-on-SiC LED
products,” Petitioner does not assert that the Cree article teaches or suggests
light emitting cells with inclined sidewalls. See Pet. Reply 11–12
(reproducing Figure (a) from the Cree article). At the hearing, Petitioner
admitted that the Cree article “shows that only the sidewalls of the substrate
had inclines, not the actual semiconductor materials.” Tr. 34:10–13.
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Reply 10. Figure 15 of the ’499 patent (above left) shows an inverted GaN-
on-SiC LED having an “inverted pyramid for the superstrate,” and
Figure 1(b) of Krames (above right) shows an AlGaInP/GaP LED having a
TIP shape. Ex. 1005, 2366; Ex. 1035, 3:54–57, 12:4–15. The original
figures include arrows representing light rays. Petitioner adds blue
annotations to identify some of these rays as “light reflected off inclined
sidewalls exiting through top surface” and green annotations to identify
other rays as “light reflected off top surface exiting through inclined
sidewalls.” Reply 10. For Figure 15 of the ’499 patent, Petitioner’s
annotations identify the SiC superstrate as having inclined sidewalls. Id.
Petitioner does not, however, show that the ’499 patent teaches or suggests
an array of light emitting cells, where each cell in the array has an inclined
side surface, as claimed. Petitioner’s Reply does not identify what, if
anything, Petitioner contends is a “light emitting cell” in Figure 15 of the
’499 patent.
Petitioner argued for the first time at the hearing that “what figure 15
here shows actually does have inclined side surfaces of the semiconductor
layers, not just the substrate.” Tr. 35:17–19. Responding to questions from
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the panel, Petitioner argued that there are at least four light-emitting regions
in Figure 15 of the ’499 patent (Tr. 36:23–24), that “all four light-emitting
regions together, could be considered one light-emitting cell or four light
emitting cells,” that “each of those cells comprises the semiconductor
material,” and that “the semiconductor material is part of each cell”
(Tr. 37:22–27). Petitioner additionally argued that “there’s parts of that
semiconductor material that are part of the light-emitting cell that are
inclined.” Tr. 38:11–12.
Petitioner’s new argument fails for two reasons. First, it violates our
hearing order. See Paper 38, 3 (discussing “the strict prohibition against the
presentation of new evidence or arguments at a hearing”); see also CTPG
85–86 (“During an oral hearing, a party . . . may only present arguments
relied upon in the papers previously submitted.”). Petitioner attempted to
justify its new argument by asserting that it was responding to a new
argument from Patent Owner in the Sur-reply. Tr. 33:20–23, 35:13–19,
36:1–11, 38:24–39:2. We disagree. In the Sur-reply, Patent Owner
responded to Petitioner’s new argument and new evidence relating to GaN-
on-SiC LEDs, including the ’499 patent and the Cree article, by arguing that
Petitioner failed to show that “each light emitting cell comprises an inclined
side surface,” as recited in claim 1. PO Sur-reply 13–19. Thus, the
introduction of new arguments started with Petitioner. Patent Owner’s
response in the Sur-reply to Petitioner’s new argument in the Reply does not
justify the introduction of another new argument by Petitioner at the oral
hearing.
We, therefore, do not consider Petitioner’s new argument concerning
whether Figure 15 of the ’499 Patent teaches or suggests an array of light
emitting cells, where each cell in the array has an inclined side surface, as
IPR2020-00750
Patent 8,716,946 B2
38
claimed. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir.
2018) (noting that the “Board was obligated to dismiss [the petitioner’s]
untimely argument . . . raised for the first time during oral argument”).
Even if we were to consider Petitioner’s new argument, it is
unsupported by any evidence and therefore not persuasive. Although
Petitioner directed us to Dr. Krames’ deposition testimony (Tr. 40:18–20
(citing Ex. 2019, 33:15–34:8)), neither the cited testimony nor the
surrounding testimony says anything about light emitting cells or inclined
side surfaces.
III. CONCLUSION
In summary:
Claims 35 U.S.C. References
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3, 4 § 103(a)
Hochstein,
Krames,
Rossner
1, 3, 4
1, 3, 4 § 103(a)
Masatoshi,
Krames,
Rossner
1, 3, 4
Overall
Outcome 1, 3, 4

IPR2020-00750
Patent 8,716,946 B2
39
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1, 3, and 4 of the ’946 Patent are unpatentable over
either Hochstein or Masatoshi in view of Krames and Rossner; and
FURTHER ORDERED that because this Decision is final, a party to
the proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.
IPR2020-00750
Patent 8,716,946 B2
40
For PETITIONER:
Heath Briggs
Barry Schindler
Andrew Sommer
Scott J. Bornstein
Stephen M. Ullmer
Joshua L. Raskin
Julie P. Bookbinder
Michael E. McCabe, Jr.
GREENBERG TRAURIG, LLP
briggsh@gtlaw.com
schindlerb@gtlaw.com
sommera@gtlaw.com
bornsteins@gtlaw.com
ullmers@gtlaw.com
raskinj@gtlaw.com
bookbinderj@gtlaw.com
mike@mccabeali.com

For PATENT OWNER:

Charles H. Sanders
Jonathan M. Strang
Emre B. Yuzak
LATHAM & WATKINS LLP
charles.sanders@lw.com
jonathan.strang@lw.com
emre.yuzak@lw.com

Michael B. Eisenberg
STEPTOE & JOHNSON LLP
meisenberg@steptoe.com