Document Security Systems, Inc. (“The Respondent”) owns a U.S patent with the number 7,524,087 (“The Patent”). The patent is on an optical device with a light-emitting diode die.

The device is used in a display panel and consists LED die mounted to a plastic housing. The LEDs are encapsulated in the housing for protection from the environment.

The patent has 19 claims, which Nichia Corporation (“The Appellant”) petitioned for inter partes review. The Patent Trial and Appeal Board (“The Board”) heard the petition.


The Appellant contended that the 19 claims of the Respondent were unpatentable over its three art references (“Takenaka, Kyowa, and Okazaki”). However, the Board only found the Respondent’s claims 1 and 6 to 8 unpatentable over the Appellant’s Takenaka combined with Kyowa.

The Board determined that claims 1 and 6 to 14 were unpatentable because of Okazaki and Kyowa by reliance on an expert’s testimony. The Board further found that the Appellant did not demonstrate claims 2 to 5 and 9 to 19 unpatentable under any grounds.

Additionally, the Board found that the Appellant did not identify any disclosure in Takenaka under claim 15. Dissatisfied, the Appellant appealed the Board’s decision before the United States Court of Appeal for the Federal Circuit (“The Federal Circuit”).

The Appellant’s premised its appeal on two issues. The first issue was that the Board erred when it held that the Appellant failed to show that claims 1 and 6 to 14 were unpatentable over Okazaki given Kyowa.

The second issue was that the Board erred in finding that claims 9 to 19 were unpatentable over Takenaka in view of Kyowa. The Appellant argued against the Board’s finding that Okazaki does not disclose a device with two pockets on the first issue.

The Appellant then argued that the claims require a reflector housing having two pockets. The Appellant and the Respondent disagreed whether the tubular vessel bisected by lead frames in Okazaki requires two pockets.

The Federal Circuit adopted the Respondent’s expert (“Mr. Credelle”) evidence that a person of ordinary skill in the arts would understand what a tubular vessel is. Mr. Credelle said a tubular vessel is a through-hole or tube rather than two pockets.

The Federal Circuit rejected the Appellant’s expert (“Dr. Shealy”) testimony that a person of ordinary skill in arts would have understood the lead frames to bisect the tubular vessels into pockets. Therefore, the Federal Circuit affirmed the Board’s finding that claims 1 and 6 to 14 were not shown to be unpatentable.

On the second issue, the Appellant argued that the Board erred in its construction of claim 9. The Appellant further argued that the Board and the Federal Circuit should construe claim 9 should serve as a preamble rather than a limitation.

The Federal Circuit stated that a preamble is an issue of law that should be reviewed de novo. The Federal Circuit said a preamble is a general description of all elements or steps of the claimed combination.

The preamble has a transitional phase which is the display comprising claim 9.


The Federal Circuit thus affirmed the Board’s decision on the issue in favor of the Respondent. Accordingly, the Federal Circuit only reversed claim 15 and remanded claims 16 to 19 for further proceedings.


Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C. 

PATENT, Trademark and IP Law Blog

  • CIONCA IP TEAM (SE)5/6/2022 5:19:00 PM


Marin Cionca | Founder of CIONCA IP

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

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About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.

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