Case: 22-1704 Document: 47 Page: 1 Filed: 11/02/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NICHIA CORPORATION,
Appellant
v.
DSS, INC., FKA DOCUMENT SECURITY SYSTEMS,
INC.,
Appellee
______________________
2022-1704
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00908.
______________________
Decided: November 2, 2023
______________________
ERIC SEBASTIAN LUCAS, Shearman & Sterling LLP,
New York, NY, argued for appellant. Also represented by
DAVID JEFFREY COOPERBERG, THOMAS R. MAKIN.
MATTHEW J. SMITH, Remenick PLLC, Washington, DC,
argued for appellee. Also represented by JAMES REMENICK;
PAUL ANTHONY KROEGER, BRIAN DAVID LEDAHL, Russ Au-
gust & Kabat, Los Angeles, CA.
______________________
Case: 22-1704 Document: 47 Page: 2 Filed: 11/02/2023
2 NICHIA CORPORATION v. DSS, INC.
Before MOORE, Chief Judge, STOLL and CUNNINGHAM, Cir-
cuit Judges.
MOORE, Chief Judge.
Nichia Corporation appeals a Patent Trial and Appeal
Board final written decision holding claims 1–4, 8, and 11
of the U.S. Patent No. 6,879,040 are not unpatentable. We
affirm.
BACKGROUND
The ’040 patent, which is owned by DSS, Inc., relates
to improvements in surface mount technology, wherein de-
vices are mounted directly on a surface without being
plugged into it. ’040 patent at 1:10–12. The patent ad-
dresses the need for surface mounted opto-electronics, such
as light emitting diodes (LEDs), to have a small footprint,
while maintaining low thermal resistance. Id. at 2:48–53.
The ’040 patent solves this problem by disclosing surface
mountable electronic devices with electrical connections in
recesses to allow solder to connect the device to the surface.
Id. at 1:4–7. The disclosed surface mountable device in-
cludes at least two electrically conductive members in the
underside that bend upwards at an angle to form a recess.
Id. at 3:40–59.
Claim 1 is the sole independent claim at issue and re-
cites:
1. A surface mountable electronic device, compris-
ing:
a packaged body having a mounting surface, the
mounting surface having a plurality of recesses at
side edges of the body and
a plurality of electrical contacts, each of which ex-
tends from an interior portion of the mounting sur-
face and terminates in one of said recesses, and
each of which conforms to one of said recesses,
wherein said recesses and electrical contacts are
Case: 22-1704 Document: 47 Page: 3 Filed: 11/02/2023
NICHIA CORPORATION v. DSS, INC. 3
sized to provide offsets between said mounting sur-
face and said electrical contacts.
Id. at claim 1 (emphases added).
Nichia filed a petition for inter partes review challeng-
ing claims 1–4, 8, and 11 of the ’040 patent. In its petition,
Nichia proposed constructions for several terms, including
“mounting surface” to mean “planar surface at which the
device is mounted, which surface is essentially co-planar
with the planar bottom surface of the body, and which sur-
face does not follow the contours of its recesses.” J.A. 115.
The Board instituted the petition and requested the parties
address “the proper construction of the claim terms ‘mount-
ing surface’ and ‘recesses.’” J.A. 674. DSS did not provide
a construction for “mounting surface.” J.A. 1182 n.1. The
Board issued a final written decision holding Nichia had
not met its burden to show the challenged claims were un-
patentable. Nichia Corp. v. Document Security Systems,
Inc., IPR2020-00908, 2021 WL 6335708 (P.T.A.B. Nov. 16,
2021) (Decision). In reaching its conclusion, the Board con-
strued “mounting surface” as including the recesses in the
mounting surface itself such that a single planar surface
cannot satisfy the limitation. Id. at *4. The Board also
concluded the embodiment shown in Figure 4A does not fall
within the scope of claim 1. Id. Nichia appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s claim construction de novo and
review any necessary subsidiary factual findings based on
extrinsic evidence for substantial evidence. HTC Corp. v.
Cellular Commc’ns Equip., LLC, 877 F.3d 1361, 1367 (Fed.
Cir. 2017). Claim terms are generally given their plain and
ordinary meaning, i.e., the meaning the terms would have
to a person of ordinary skill in the art when read in the
context of the claim, specification, and prosecution history.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc).
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4 NICHIA CORPORATION v. DSS, INC.
The Board construed “mounting surface” to mean a
mounting surface with recesses in the surface itself and
concluded the claim term does not encompass a single pla-
nar surface. Decision, at *4. Nichia appealed arguing that
the Board’s partial construction creates a logical impossi-
bility such that the claims cannot be compared to the prior
art. We do not agree. The claim language and written de-
scription support the Board’s construction requiring a
mounting surface having recesses. Claim 1 expressly re-
quires “the mounting surface having a plurality of recesses
at the side edges of the body.” ’040 patent at claim 1 (em-
phasis added). Additionally, the ’040 patent repeatedly de-
scribes the invention as having a mounting surface with
recessed portions in it. For example, the patent describes
a surface mountable electronic device with “a body with a
first, mounting surface,” wherein the “first surface is re-
cessed with recessed portions in it.” Id. at 3:60–67; see also
id. at 2:54–57, 5:1–15, 5:48–65, 8:24–33.
The written description, specifically Figure 4A, also
supports the Board’s conclusion that the claimed mounting
surface does not encompass a single planar surface. Figure
4A illustrates an embodiment of the invention:
As shown in Figure 4A, the surface mountable opto-elec-
tronic device 400 includes an optically transparent body
402, two electrical contacts, 404, 406, and a LED 408. Id.
at 4:60–63. The two electrical contacts are mounted in the
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NICHIA CORPORATION v. DSS, INC. 5
underside 410, which is the mounting surface of the device.
Id. at 5:1–4. Each electrical contact includes a first portion
containing a diagonally upward extending portion 412, 414
and a horizontal portion 416, 418. Id. at 5:7–11. Recesses
420, 421 are formed between the first portions of the elec-
trical contacts and a flat surface on which the device is
mounted. Id. at 5:11–15.
As the Board explained, the embodiment in Figure 4A
describes both a mounting surface and a separate flat sur-
face on which the device is mounted. Decision, at *4 (citing
’040 patent at 5:3–14). The electrical contacts are mounted
in the underside of the device—i.e., the mounting surface—
and follow a zigzag configuration that creates recesses be-
tween the contacts and “a flat surface on which the device
is mounted.” ’040 patent at 5:3–14; see also Decision, at *4–
5. Because Figure 4A includes both a non-planar mounting
surface and a separate planar surface on which the device
is mounted, the claimed mounting surface cannot be a sin-
gle planar surface. Decision, at *4–6; see also J.A. 1287–89
(explaining why Figure 4A cannot support Nichia’s conten-
tion that mounting surface should be construed as a plane).
Therefore, the Board’s construction follows the ordinary
meaning of “mounting surface” in light of the intrinsic evi-
dence as would have been understood by a skilled artisan.
Nichia argues the Board’s construction is incomplete as
it fails to resolve an apparent logical impossibility in claim
1 requiring the electrical contacts to both conform to the
recesses in the mounting surface and be offset from the
mounting surface. Appellant’s Br. at 56–63. According to
Nichia, the Board erroneously relied on this requirement
to find the prior art lacks an element of the claim. Id. at
62–63. We do not agree.
First, the Board is required to construe “only those
terms . . . that are in controversy, and only to the extent nec-
essary to resolve the controversy.” Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
Case: 22-1704 Document: 47 Page: 6 Filed: 11/02/2023
6 NICHIA CORPORATION v. DSS, INC.
(emphasis added). This is exactly what the Board did.
Nichia’s petition asserted five different grounds of un-
patentability. Decision, at *2. For each ground, Nichia re-
lied on a prior art reference’s disclosure of a single planar
surface as teaching the claimed mounting surface. See J.A.
137–41 (Kim), J.A. 157–60 (Adachi), J.A. 170–73 (Naga-
yama), J.A. 181–84 (Okazaki). Nichia also relied on Figure
4A of the ’040 patent to demonstrate the prior art refer-
ences teach the claimed mounting surface. Decision, at *6–
9. To resolve this matter, the Board only needed to deter-
mine whether the claimed mounting surface encompassed
a single planar surface. See Decision, at *6–9; see also J.A.
1287 (Board explaining it need not “determine . . . the pre-
cise relationship between the recited ‘mounting surface’
and the contacts”). As discussed above, the Board properly
concluded it does not.
Second, we have held the Board can render prior art
patentability determinations even if claims are indefinite.
Samsung Elecs. Am. Inc. v. Priusa Eng’g Corp., 948 F.3d
1342, 1355 (Fed. Cir. 2020) (explaining indefiniteness does
not “necessarily preclude the Board from addressing pa-
tentability” on other grounds). In Intel Corp. v. Qualcomm
Inc., we explained “indefiniteness of a limitation . . . pre-
cludes a patentability determination only when the indefi-
niteness renders it logically impossible for the Board to
reach such a decision.” 21 F.4th 801, 813 (Fed. Cir. 2021)
(emphasis added). We further explained that “it is not al-
ways impossible to adjudicate a prior-art challenge” be-
cause of alleged indefiniteness of one limitation. Id. Here,
the Board properly rendered a patentability determination
because it did not conclude such determination was logi-
cally impossible based on any alleged indefiniteness.
The Board proceeded exactly as our case law pre-
scribes—deciding only the issues necessary to resolve the
dispute before it. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
2017) (affirming the Board’s decision not to construe the
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NICHIA CORPORATION v. DSS, INC. 7
preamble because it was not material to the dispute). The
Board was not required to reach Nichia’s arguments about
any alleged indefiniteness because its construction was
sufficient to apply the asserted prior art in this dispute.
The Board was also correct in rendering its patentability
determination because it was not impossible to do so. We
affirm the Board’s construction of “mounting surface” and
its final written decision on patentability.
CONCLUSION
For the reasons given, we affirm the Board’s conclusion
that Nichia did not meet its burden to show claims 1–4, 8,
and 11 are unpatentable.
AFFIRMED