In a straightforward decision, the Federal Circuit has affirmed the PTAB’s decision that Cree’s claimed down-shifted LED invention would have been obvious in light of a combination of three prior art patents. The basic problem with LED lighting is that it is easy and cheap (these days) to get blue light, but harder to produce light across the spectrum – especially reds. Cree’s patented approach used a blue LED that is wrapped in a “down-converting luminophoric medium.” The basic idea is that the blue light energy is absorbed by the medium and then released as white light. These Fluorescent and phosphorescent materials were already known and commercially available.
The Federal Circuit decision affirming the Board is a demonstration of flexibility of the contemporary obviousness doctrine. With each of Cree’s attempts to poke holes in the Board’s decision, the Federal Circuit offers an annealing response that make Cree’s arguments seem weak.
- The PTAB did not err by adopting the patent examiner’s findings rather than writing its own. “There is no force to that argument. It is commonplace in administrative law for a reviewing body within an agency to adopt a fact-finding body’s findings.”
- The PTAB’s statements of items “known” in the art did not require a single prior art reference disclosing that knowing. “In context, it is clear that the Board was not using the word ‘known’ to mean ‘disclosed in a single reference.’ Instead, the Board’s statement that down-conversion was a known approach for creating white light from an LED is best understood to mean 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.”
- A rational, non-hindsight reason for combining the references comes from the references themselves since the later reference offered a brighter LED that could be combined with the earlier to produce higher quality light. “The availability of the high-powered Nakamura LED thus provided 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’s] accompanying ‘impermissible hindsight’ is essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references.”
- Cree’s secondary considerations were insufficient to outweigh strong evidence of obviousness. “[S]elfserving statements from researchers about their own work do not have [much] reliability.” Regarding licensing, “Cree … provided press releases evidencing that it … entered into licensing transactions, but [did] not shown that the licenses were based on the merits of the ’175 patent.” Further, commercial success of a product only operates as a secondary consideration of nonobviousness if coupled with a nexus between that success and the claimed features of the patent.
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 This case is on appeal from the Patent Trial & Appeal Board’s ruling in ex parte reexamination No. 90/010,940.
 The referenced prior art includes 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”).