In re: Cree, Inc.

Docket No. 2015-1365

March 21, 2016

Brief Summary: Board decision of obviousness affirmed because, e.g., “the Board provided a sufficient, non-hindsight reason to combine the references” and no nexus shown between nexus between claims and evidence of licensing or commercial success.

Summary: Cree appealed PTAB holding that claims of its US 6,600,175 related “to production of white light though the ‘down-conversion’ of blue light from light-emitting diodes (‘LEDs’)” obvious in an ex parte reexamination. The Examiner rejected six claims as obvious in view of three prior art patents (Pinnow, Stevenson and Nakamura) and the Board upheld the rejections. The opinion explains that “down-conversion” is used in “fluorescent lamps [which] are well known in the art and have been commercially available since the 1930s.” The examiner’s rejections were based on the “simple substitution of one known element (Nakamura’s GaN-based LED) for another known element (Stevenson’s GaN-based LED to obtain predictable results”, “the advantage of brigher emission by the phosphors [being] readily apparent to a person of ordinary skill in the art.” The Board agreed, finding “the invention [to be] nothing more than a new application of a high-power, high-brightness blue LED developed by Dr. Nakamura in late 1993.” The FC panel opinion first explained that the Board’s incorporation of the Examiner’s answer into its opinion was not improper (In re Brana, FC 1995). Cree argued the Board’s use of the word “known” in its opinion meant that it “erroneously concluded that a single reference disclosed down-conversion from blue LED light to white light” but the FC panel disagreed, concluding the Board meant “that persons of skill in the art were aware that down-conversion could be used to make white light out of blue light, regardless of the source of the light.” Cree also argued the Board misread its expert declarations but the FC panel found the Board’s analysis and conclusion reasonable (In re Jolly, FC 2002 (“[W]here two different, inconsistent conclusions may reasonably be drawn from the evidence in record, an agency’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence.”)) Cree also argued the Board reached the wrong conclusion on the motivation to combine but the FC panel concluded “the Board provided a sufficient, non-hindsight reason to combine the references” (e.g., “a person of ordinary skill in the art would realize that Nakamura (a brighter LED) would be an upgrade over the LED of Stevenson”, providing “the motivation to combine Stevenson’s use of LEDs to create primary colors with Pinnow’s use of a short-wavelength light source to create white light.”) Cree also argued the Board improperly rejected its evidence regarding secondary considerations but the FC panel disagreed (e.g., “self-serving statements from researchers about their own work do not have the same reliability” as “industry praise” from others (Power-One, FC 2010), no nexus between claims and evidence of licensing (Iron Grip, FC 2004; In re Antor Media, FC 2012) or commercial success (In re Huang, FC 1996)). The Board decision was therefore affirmed.

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