The Regents of the University of California v. Satco Products, Inc.

Case: 22-1106 Document: 40 Page: 1 Filed: 05/16/2023

NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit

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REGENTS OF THE UNIVERSITY OF CALIFORNIA,

Appellant v.

SATCO PRODUCTS, INC.,

Appellee ______________________

2022-1106, 2022-1107, 2022-1108, 2022-1109

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Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2020- 00579, IPR2020-00695, IPR2020-00780, IPR2020-00813.

______________________ Decided: May 16, 2023 ______________________

JENNIFER HAYES, Nixon Peabody LLP, Los Angeles, CA, argued for appellant. Also represented by SHAWN G. HANSEN, SETH D. LEVY; ANGELO CHRISTOPHER, Chicago, IL.

NICHOLAS A. BROWN, Greenberg Traurig, LLP, San Francisco, CA, argued for appellee. Also represented by SCOTT JOSEPH BORNSTEIN, BRIAN JOSEPH PREW, New York, NY; HEATH BRIGGS, STEPHEN ULLMER, Denver, CO; ROBERT P. LYNN, JR., Lynn Gartner Dunne & Frigenti, LLP, Mineola, NY.

Case: 22-1106 Document: 40 Page: 2 Filed: 05/16/2023 2 THE REGENTS OF THE UNIVERSITY OF CALIFORNIA v.

SATCO PRODUCTS, INC.

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Before MOORE, Chief Judge, TARANTO and CHEN, Circuit

Judges.

CHEN, Circuit Judge.

Regents of the University of California (Regents) timely appeals four decisions by the Patent and Trial Ap- peal Board (Board) determining that certain claims of U.S. Patent Nos. 7,781,789; 9,240,529; 9,859,464; and 10,217,916 are unpatentable under 35 U.S.C. §§ 102 and 103 over Japanese Patent Application No. 2005/035864 (Miyahara), alone and in combination with other refer- ences. 1 We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). Because we adopt the Board’s construction of “lead frame,” we affirm.

The only issue before us on the Miyahara-based rejec- tions is the construction of “lead frame.” We agree with the Board that “lead frame” means “a support structure for providing an interface to a semiconductor die, where the lead frame structure, as a whole, provides support to the semiconductor die.” The parties agree, as they did in front of the Board, “that the transparent plate may be considered a part of the lead frame,” but disagree “whether the leads themselves must provide support to the LED chip.” J.A. 54; Appellant’s Br. 37–39; Appellee’s Br. 14–19; Oral Arg. at 1:01–1:12. Specifically, Regents argues that a “lead frame” requires at least one of the leads to provide Case: 22-1106 Document: 40 Page: 3 Filed: 05/16/2023 THE REGENTS OF THE UNIVERSITY OF CALIFORNIA v. 3 SATCO PRODUCTS, INC. structural support to the LED chip and the support cannot come from the transparent plate alone. Appellant’s Br. 41– 42. We disagree and conclude that the term “lead frame” permits any part of the “lead frame,” including a transpar- ent plate, to provide support to the LED chip. Nothing in the claims or specification of any of the four patents, nor in the extrinsic evidence, requires the leads of the lead frame, as that term is used in the context of the patents, to support the LED chip. At best, the specification discloses that the LED chip is attached or wire bonded to the leads, not that the leads provide support. Regents also points to the spec- ification’s discussion of prior art lead frames to support its argument that the lead must support the LED chip. Ap- pellant’s Br. 42–43; Oral Arg. at 9:21–9:44. However, un- like the prior art discussed in the specification, these patents cover a different type of lead frame that includes a transparent plate. Accordingly, we adopt the Board’s con- struction of “lead frame.” 2

We have considered Regents’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm.

AFFIRMED

2 Regents does not dispute the Board’s factual find- ings on the Miyahara-based rejections under this construc- tion. Oral Arg. at 9:53–10:38; see also Appellant’s Br. 51, 55–56, 65.