The AI workspace for legal professionals
- Legal research with access to more than 1 million sources
- Document automation
- Matter management
- Hosted in the EU and Switzerland
Try it free for 14 days (10 questions/day during trial)
The AI workspace for legal professionals
Try it free for 14 days (10 questions/day during trial)
22-1106•Regents of the University of California v. Satco Products, Inc.
22-1106Court of Appeals for the Federal CircuitMay 16, 2023
N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Appellant
v.
SATCO PRODUCTS, INC.,
Appellee
______________________
2022-1106, 2022-1107, 2022-1108, 2022-1109
______________________
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
______________________
J ENNIFER H AYES , Nixon Peabody LLP, Los Angeles,
CA, argued for appellant. Also represented by S HAWN G.
HANSEN, SETH D. L EVY ; ANGELO CHRISTOPHER, Chicago, IL.
N ICHOLAS A. BROWN, Greenberg Traurig, LLP, San
Francisco, CA, argued for appellee. Also represented by
S COTT J OSEPH BORNSTEIN, BRIAN J OSEPH P REW , New York,
NY; HEATH BRIGGS , STEPHEN U LLMER, Denver, CO;
ROBERT P. L YNN, J R., Lynn Gartner Dunne & Frigenti,
LLP, Mineola, NY.
Case: 22-1106 Document: 40 Page: 1 Filed: 05/16/2023
-- 1 of 3 --
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA v.
SATCO PRODUCTS, INC.
2
______________________
Before M OORE, Chief Judge, T ARANTO 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
1 Although Regents raises other prior art references
and multiple dependent claims on appeal, Appellant’s
Br. 26–27, the parties agree that resolution of the claim
construction issue with respect to the Miyahara-based re-
jections disposes of the entire appeal. Oral Arg. at
9:53–10:28; 14:26–14:39; 16:21–16:31. See also Appellant’s
Br. 51, 55–56, and 65.
Case: 22-1106 Document: 40 Page: 2 Filed: 05/16/2023
-- 2 of 3 --
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA v.
SATCO PRODUCTS, INC.
3
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.
Case: 22-1106 Document: 40 Page: 3 Filed: 05/16/2023
-- 3 of 3 --
Connect Omnilex to search the legal corpus from your AI assistant.