Mixed decision in Nichia vs. Document Security Systems

From the Nichia case:

Here, it was Nichia’s burden to demonstrate Takenaka disclosed the required electrical connection. See, e.g., Harmonic, 815 F.3d at 1363; Ariosa Diagnostics, 805 F.3d at 1367. Unlike with the plastic phrase, Nichia’s petition specifically stated that Takenaka disclosed an electrical connection. In discussing claim 15, the petition cites to Section VI.D.1., which discusses grounds for unpatentability of claim 1 based on Takenaka. J.A. 177–79. The petition quotes Takenaka’s description of how the leads are connected. “LED chip 4 is mounted on first lead frame 1 with Ag paste 7 therebetween. Bonding wire 5 is attached to second lead frame 2. Accordingly, second lead frame 2 is mechanically and electrically connected to LED chip 4.” J.A. 163–64 (emphasis added). This shows Takenaka discloses an LED die electrically connected to a conductive lead. Thus, Nichia demonstrated with particularity that this claim limitation is disclosed in the prior art. The Board’s conclusion to the contrary demonstrates a clearly erroneous fact finding qualifying as an abuse of discretion.