Monday, March 21, 2016

Cree loses at CAFC on "white light emitter" LED patent 6,600,175

The decision of the Board in ex parte reexamination 90/010,940
of Cree’s U.S. Patent No. 6,600,175 was affirmed by the
CAFC. Cree loses.

The patent in suit, Cree’s U.S. Patent No. 6,600,175
(“the ’175 patent”), filed in 1996, is entitled “Solid State
White Light Emitter and Display Using Same.” The
claims at issue in this appeal are directed to the production
of white light through the “down-conversion” of blue
light from light-emitting diodes (“LEDs”). Downconversion
is the process in which high-energy (shorter
wavelength) light is absorbed by a material and then reemitted
as lower energy (longer wavelength) light. By
choosing the particular absorbing material, light at a
desired wavelength (and thus a desired color) can be

The examiner rejected six claims added during reexamination
of the ’175 patent as obvious under multiple
combinations of prior art references, including the combination
of U.S. Patent No. 3,691,482 (“Pinnow”), U.S.
Patent No. 3,819,974 (“Stevenson”), and U.S. Patent No.
5,578,839 (“Nakamura”).

Footnote 3:

Cree argues that the Board’s rejection was based
on “impermissible hindsight.” That argument, however,
is essentially a repackaging of the argument that there
was insufficient evidence of a motivation to combine the
references. It is fully answered by the Board’s observation
that “the weight of the evidence shows that the
proffered combination is merely a predictable use of prior
art elements according to their established functions.”

The topic of press releases arose:

Cree first points to two press releases from the
Fraunhoffer Institute and contends that those press
releases support the inference of non-obviousness. The
press releases describe the down-conversion of blue LED
light to produce white light as a “breakthrough” and an
“innovative idea.” The Board, however, found the press
releases unpersuasive as secondary evidence, because the
praise was directed to the Fraunhoffer Institute’s own
work, not the work of the inventors of the ’175 patent.
Cree faults the Board for discounting that evidence.
In Cree’s view, even though the press releases were
directed to the work of others, the praise for the concept
still had the requisite nexus to the claimed invention.
We agree with the Board’s treatment of this evidence.
While “praise in the industry for a patented invention,
and specifically praise from a competitor tends to ‘indicate
that the invention was not obvious,’” self-serving statements
from researchers about their own work do not have
the same reliability. Power-One v. Artesyn Techs., Inc.,
599 F.3d 1343, 1352 (Fed. Cir. 2010) (quoting Allen Archery,
Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092
(Fed. Cir. 1987)). The Board thus permissibly concluded
that the press releases were unpersuasive and, if anything,
showed that down-conversion was the logical next
step after the development of the Nakamura LED.


Additionally, the press releases indicate that some of
the licenses were broad cross-licenses (such as the licenses
to Nichia, Toyoda Gosei, Osram, and Phillips) or were
intended to resolve litigation (such as the license to
Nichia). Some of the press releases on which Cree relies
define the scope of the licensing transactions as “broad
and substantial,” “comprehensive [and] worldwide,” and
“cover[ing] patents from both parties in the fields of blue
LED chip technology, white LEDs and phosphors (including
remote phosphors), control systems, LED luminaries
and lamps as well as LED backlighting of liquid crystal
displays (LCDs) and patents in Phillips LED Luminaire
Licensing Program.” In light of the lack of specificity in
that evidence, it was reasonable for the Board to find that
the licenses were not shown to have a sufficient nexus to
the ’175 patent to require a finding of non-obviousness.


In a portion of the examiner’s answer that was adopted
by the Board, the examiner found that the commercial
success of white LEDs “cannot be due to simply making a
single-die semiconductor LED that emits white light,”
because if that were so, “then the commercialization could
have started back in 1973.” Instead, the examiner found,
“it appears that Wetzel, Redwing, and Stringfellow all
acknowledge the invention of a GaN LED with sufficiently
high light output, somewhere in the UV to blue region of
the spectrum was the thing that made the down
converting device of Stevenson . . . commercial[ly] successful.”
Cree has failed to rebut the Board’s finding of a lack
of nexus between the invention and the commercial
success of white light LEDs. As the Board found, “the
record is completely silent on whether the commercial
success was caused by the subject matter of the ’175
patent as distinct from the prior art.” For that reason, we
sustain the Board’s conclusion that the evidence of commercial
success did not outweigh the strong prima facie
showing of obviousness.
We therefore uphold the Board’s decision rejecting the
disputed claims of the ’175 patent.


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