In Re: Cree, Inc.
818 F.3d 694
| Fed. Cir. | 2016Background
- This is an appeal from the Patent Trial and Appeal Board affirming an examiner’s obviousness rejection in an ex parte reexamination of Cree’s U.S. Patent No. 6,600,175 (filed 1996) covering white-light LEDs made by down-converting blue light with phosphors.
- Representative rejected claim (Claim 118) claims a single‑die, two‑lead GaN blue LED with a luminophoric (phosphor) medium dispersed in a polymer on or about the die to produce polychromatic white light.
- Examiner and Board relied on a combination of prior art: Pinnow (discloses down‑conversion to white light using a blue/violet laser and phosphors), Stevenson (early GaN violet LED and teaching that phosphors can convert its output), and Nakamura (high‑brightness GaN blue LED).
- The examiner concluded substituting Nakamura’s brighter LED for Stevenson’s would predictably yield brighter down‑converted white light; the Board adopted the examiner’s extensive reasoning and affirmed the obviousness rejection.
- Cree argued (1) the Board improperly treated down‑conversion from LEDs as already known, (2) the Board misread its experts’ declarations, (3) the Board lacked a proper motivation‑to‑combine rationale, and (4) the Board improperly discounted secondary considerations (praise, licensing, commercial success).
- The Federal Circuit affirmed: it found substantial evidence that down‑conversion to make white light was known and applicable to LEDs, the motivation to combine was adequately supported, and Cree’s secondary‑evidence failed to show the required nexus to the claimed invention.
Issues
| Issue | Cree's Argument | Board/Examiner's Argument | Held |
|---|---|---|---|
| Whether down‑conversion to make white light from LEDs was known in the prior art | Cree: Board wrongly treated down‑conversion from LEDs as already disclosed | Pinnow teaches down‑conversion generically; source of primary radiation (laser vs LED) is immaterial to phosphor absorption | Down‑conversion was a known approach applicable to LEDs; Board’s finding supported by substantial evidence |
| Whether the Board misread expert declarations | Cree: Experts showed down‑conversion was unknown prior to high‑power blue LEDs | Experts actually conceded down‑conversion was known but disfavored for practical reasons pre‑Nakamura | Board’s reading was reasonable; experts’ testimony supports that down‑conversion was known though not preferred |
| Motivation to combine Pinnow, Stevenson, Nakamura | Cree: No rational motivation to apply Pinnow’s laser/phosphor teachings to LEDs | Examiner/Board: Nakamura’s brighter LED provided a clear, predictable reason to use phosphor down‑conversion taught by Pinnow | Motivation to combine was adequately articulated; combination was a predictable use of prior art elements |
| Secondary considerations (praise, licensing, commercial success) — nexus | Cree: Industry praise, licenses, and market success show non‑obviousness | Board: Praise was self‑directed or not tied to the ’175 patent; licenses and sales lacked affirmative nexus to claimed features | Board properly discounted secondary evidence for lack of nexus; did not outweigh prima facie obviousness |
Key Cases Cited
- In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) (agency may adopt examiner’s findings; adopted material treated as examiner’s arguments)
- In re Lee, 277 F.3d 1338 (Fed. Cir. 2002) (vacating Board decision where examiner and Board gave inadequate support for rejection)
- In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002) (substantial‑evidence review: agency may choose among reasonable inferences)
- Power‑One v. Artesyn Techs., Inc., 599 F.3d 1343 (Fed. Cir. 2010) (industry praise can indicate non‑obviousness but self‑serving or self‑directed praise is weak)
- Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004) (licenses require affirmative evidence of nexus to support inference of non‑obviousness)
- In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (difficulty of evaluating licenses absent specifics; need for nexus evidence)
- In re Huang, 100 F.3d 135 (Fed. Cir. 1996) (commercial success requires nexus between success and claimed invention)