Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 1 of 76 Page ID
` #:1361
`
`Exhibit O
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 2 of 76 Page ID
` #:1362
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.
`Petitioners
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00265
`U.S. Patent No. 6,949,771
`__________________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U. S. PATENT NO. 6,949,771 UNDER
`
`35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`Exhibit O, Page 360
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 3 of 76 Page ID
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`Table of Contents
`
`I.
`
`II.
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`INTRODUCTION ........................................................................................... 1
`
`REQUIREMENTS FOR AN INTER PARTES REVIEW PETITION ............ 1
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ....................................... 1
`
`NOTICE OF LEAD AND BACKUP COUNSEL AND SERVICE INFORMATION
`(37 C.F.R. § 42.8(B)(3)) ................................................................................ 1
`
`NOTICE OF REAL-PARTIES-IN-INTEREST (37 C.F.R. § 42.8(B)(1)) ................ 2
`
`NOTICE OF RELATED MATTERS (37 C.F.R. § 42.8(B)(2)) .............................. 2
`
`FEE FOR INTER PARTES REVIEW ..................................................................... 2
`
`PROOF OF SERVICE ........................................................................................ 2
`
`III.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§
`42.104(B)) ........................................................................................................ 3
`
`IV. BACKGROUND ............................................................................................. 3
`
`V.
`
`THE PURPORTED INVENTION .................................................................. 3
`
`A.
`
`B.
`
`THE BACKGROUND OF THE INVENTION ......................................................... 3
`
`THE PURPORTED SOLUTION........................................................................... 4
`
`VI.
`
`SUMMARY OF THE RELEVANT PROSECUTION HISTORY ................ 6
`
`VII. CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`“SAID PLATFORM BEING LOCATED OUTSIDE OF SAID APERTURE” ................... 9
`
`VIII. PERSON HAVING ORDINARY SKILL IN THE ART ............................. 11
`
`IX. BRIEF DESCRIPTION OF THE PRIOR ART ............................................ 12
`
`A.
`
`JAPANESE PATENT APPLICATION PUBLICATION NO. 07-235696 (SHARP) ... 12
`
`Exhibit O, Page 361
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 4 of 76 Page ID
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`B.
`
`JAPANESE PATENT APPLICATION PUBLICATION NO. 11-284233
`(STANLEY) .................................................................................................. 14
`
`C.
`
`UNITED STATES PATENT NO. 5,635,115 (KONISHI) .................................... 16
`
`X.
`
`PRECISE REASONS FOR THE RELIEF REQUESTED ........................... 16
`
`A. GROUND 1: CLAIMS 1-9 ARE RENDERED OBVIOUS BY SHARP .................... 16
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Independent Claim 1 ............................................................................... 17
`
`Independent Claim 2 ............................................................................... 26
`
`Independent Claim 3 ............................................................................... 28
`
`Independent Claim 4 ............................................................................... 31
`
`Independent Claim 5 ............................................................................... 33
`
`Independent Claim 6 ............................................................................... 36
`
`Independent Claim 7 ............................................................................... 39
`
`Independent Claim 8 ............................................................................... 42
`
`Dependent Claim 9 ................................................................................. 45
`
`B.
`
`GROUND 2: CLAIMS 1-8 ARE UNPATENTABLE BY STANLEY........................ 47
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`
`Independent Claim 1 Is Rendered Obvious by Stanley .......................... 47
`
`Independent Claim 2 Is Rendered Obvious by Stanley .......................... 51
`
`Independent Claim 3 Is Rendered Obvious by Stanley .......................... 52
`
`Independent Claim 4 Is Rendered Obvious by Stanley .......................... 53
`
`Independent Claim 5 Is Rendered Obvious by Stanley .......................... 55
`
`Independent Claim 6 Is Rendered Obvious by Stanley .......................... 56
`
`Independent Claim 7 Is Rendered Obvious by Stanley .......................... 58
`ii
`
`Exhibit O, Page 362
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 5 of 76 Page ID
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`8.
`
`Independent Claim 8 Is Rendered Obvious by Stanley .......................... 62
`
`C.
`
`GROUND 3: CLAIM 9 IS OBVIOUS BASED ON SHARP IN VIEW OF
`KONISHI ...................................................................................................... 64
`
`1.
`
`2.
`
`3.
`
`Scope and Content of the Prior Art ......................................................... 64
`
`Level of Ordinary Skill ........................................................................... 64
`
`Obviousness Rationale ............................................................................ 65
`
`D. GROUND 4: CLAIM 9 IS OBVIOUS BASED ON STANLEY IN VIEW OF
`KONISHI ...................................................................................................... 65
`
`1.
`
`2.
`
`3.
`
`Scope and Content of the Prior Art ......................................................... 65
`
`Level of Ordinary Skill ........................................................................... 66
`
`Obviousness Rationale ............................................................................ 66
`
`XI. CONCLUSION .............................................................................................. 67
`
`CERTIFICATE OF SERVICE
`
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
`
`iii
`
`Exhibit O, Page 363
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 6 of 76 Page ID
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
` U.S. Patent No. 6,949,771 (“’771 patent”)
`
`Prosecution History of U.S. Patent No. 6,949,771 (“Prosecution
`History”)
`
`Declaration of Michael Pecht, Ph.D. (“Pecht”)
`
`Japanese Patent Application Publication No. 07-235696, English
`translation of Japanese Patent Application Publication No. 07-235696
`and Translator Declaration (“Sharp”)
`
`Japanese Patent Application Publication 11-284233, English translation
`of Japanese Patent Application Publication 11-284233 and Translator
`Declaration (“Stanley”)
`
`U.S. Patent No. 5,635,115 (“Konishi”)
`
`Pecht, M., R. Agarwal, P. McCluskey, T. Dishongh, S. Javadpour, and
`R. Mahajan, Electronic Packaging Materials and their Properties,
`CRC Press, Boca Raton, FL, 1999 (“Electronic Packaging”)
`
`1008
`
`Fink et al., Standard Handbook for Electrical Engine, 10th Ed. 1968
`(“Standard Handbook”)
`Pecht et al. Plastic Encapsulated Microelectronics (1995)
`1010 Modern Dictionary of Electronics 7th ed. 1999 pg. 571
`
`1009
`
`1012
`
`1011 Meriam Webster’s Collegiate Dictionary 10th ed. 1997 pg. 891
`Hart, Anthony, Decorative Electroplating of Plastics, The Journal of
`the Institute of Materials, Materials World, Vol. 4 No. 5 1996 , pp. 265-
`67 (“Decorative Electroplating”)
`
`1013
`
`CV of Michael Pecht, Ph.D.
`
`iv
`
`Exhibit O, Page 364
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 7 of 76 Page ID
` #:1367
`
`I.
`
`INTRODUCTION
`
`On behalf of Seoul Semiconductor Co., Ltd. and Seoul Semiconductor, Inc.
`
`(collectively “Petitioners”) and in accordance with 35 U.S.C. § 311 and 37 C.F.R.
`
`§ 42.100, inter partes review of claims 1-9 of United States Patent No. 6,949,771 to
`
`Yohanandan et al., entitled “Light Source” (hereinafter “the ’771 patent”) is
`
`requested. This Petition establishes that Petitioners have a reasonable likelihood of
`
`prevailing with respect to at least one of claims 1-9. A copy of the ’771 patent is
`
`provided as Ex. 1001.
`
`II.
`
`REQUIREMENTS FOR AN INTER PARTES REVIEW PETITION
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioners certify that the ’771 patent is available for inter partes review and
`
`that Petitioners are not barred or estopped from requesting an inter partes review
`
`challenging claims 1-9 of the ’771 patent on the grounds identified herein.
`
`B. Notice of Lead and Backup Counsel and Service Information (37
`C.F.R. § 42.8(b)(3))
`
`Lead Counsel:
`Michael Eisenberg (Reg. No. 50,643)
`michael.eisenberg@hklaw.com
`31 West 52nd Street
`New York, NY 10019
`
`1
`
`Exhibit O, Page 365
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 8 of 76 Page ID
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`
`Backup Counsel:
`Charles H. Sanders (Reg. No. 47,053)
`charles.sanders@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston, MA 02116
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`C. Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Seoul Semiconductor Co., Ltd. and Seoul Semiconductor, Inc.
`
`D. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`
`Based on the information known to Petitioners, the following matters are
`
`related: Document Security Systems, Inc. v. Seoul Semiconductor Co. Ltd., No. 8:17-
`
`cv-00981 (C.D. Cal.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-
`
`04263 (C.D. Cal.); Document Security Systems, Inc. v. Everlight Electronics Co.,
`
`Ltd. et al., No. 2:17-cv-04273 (C.D. Cal.); Document Security Systems, Inc. v.
`
`OSRAM GmbH, No. 2:17-cv-05184 (C.D. Cal.); and Document Security Systems,
`
`Inc. v. Lite-On, Inc., No. 2:17-cv-06050 (C.D. Cal.).
`
`E.
`
`Fee for Inter Partes Review
`
`The Director is authorized to charge any extra fee specified by 37 CFR §
`
`42.15(a) to Deposit Account No. 50-2324.
`
`Proof of Service
`
`F.
`
`
`2
`
`Exhibit O, Page 366
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 9 of 76 Page ID
` #:1369
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`Proof of service of this petition is provided in Attachment A.
`
`III.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B))
`• Ground 1: Claims 1-9 Are Obvious based on Sharp
`• Ground 2: Claims 1-8 Are Obvious based on Stanley
`• Ground 3: Claim 9 is Obvious Based on Sharp in View of Konishi
`• Ground 4: Claim 9 is Obvious Based on Stanley in View of Konishi
`
`IV. BACKGROUND
`
`The ’771 patent is entitled “Light Source” and has an earliest U.S. filing date
`
`of April 23, 2002. In addition, the application for the ’771 patent claims foreign
`
`priority to Malaysian Patent Application PI 2001 1952, which was filed on April 25,
`
`2001.
`
`V. THE PURPORTED INVENTION
`
`A. The Background of the Invention
`
`The ’771 patent begins with a description of then available “surface mount
`
`LED packages.” Ex. 1001 (’771 patent)
`
`1:26-29. Figure 1 depicts a “typical surface
`
`mount LED package 100” comprising: LED
`
`110; substrate 120; conductive interconnects
`
`140 and 142; a wire 144; and a transparent
`
`encapsulant material 130. Id. at 1:27-38. The inventors purported to identify a
`
`3
`
`Exhibit O, Page 367
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 10 of 76 Page ID
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`drawback with the existing package design based on “its inefficiency in dissipating
`
`heat away from the LED die 110.” Id. at 1:39-40. In particular, the applicants noted
`
`that the substrate 120, conductive interconnects 140 and 142, and encapsulant 130
`
`provide insufficient heat dissipation for high brightness LEDs. Id. at 43-60.
`
`B.
`
`The Purported Solution
`
`To improve heat dissipation, the applicants disclosed that “the platform on
`
`which the light emitting diode is mounted may provide a very efficient heat
`
`dissipating thermal path directly to an external surface of the light source.” Ex. 1001
`
`(’771 patent) 2:10-14. An embodiment of the purported invention is described with
`
`respect to figure 2, which shows “front [and] plan views . . . of a surface mount LED
`
`package in accordance with the invention.” Id. at 3:2-4. Colored versions of the
`
`figures are reproduced below to assist with the description.
`
`
`
`
`
`4
`
`Exhibit O, Page 368
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 11 of 76 Page ID
` #:1371
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`
`
`The LED package is indicated by reference number 200 and includes “a
`
`rectangular planar substrate 210 [colored purple].” Id. at 3:29-32. The substrate 210
`
`has an upper and lower surfaces 212 and 214. Id. at 3:35-38, 3:48-51. A “recess
`
`220” (also called an “aperture”) extends from the upper surface 212 to the lower
`
`surface 214. The space within recess 220 is colored green in the top image above.
`
`An LED 230 (colored blue) is located within the recess 220. Id. at 3:39-41.
`
`Reference number 270 indicates a “pad/platform,” which is colored red in the
`
`views above. The pad/platform comprises two portions, one that is outside of the
`
`substrate, and one that is within the substrate’s recess 220. The portion below and
`
`outside of the substrate “effectively covers the lower opening of the aperture
`
`adjacent the lower surface 214 [of the substrate 210].” Id. at 3:60-62. The portion
`
`within the recess 220 “provides the circular floor 222 of the recess, and extends as a
`
`layer over the side surface of the aperture to form the side walls 224.” Id. at 3:62-65.
`
`According to the patent, the pad/platform within “[t]he recess 220 provided by the
`
`aperture in the substrate . . . performs the dual function of reflecting light from the
`
`5
`
`Exhibit O, Page 369
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 12 of 76 Page ID
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`LED die 230 much like a standard reflector cup, and enabling efficient heat
`
`dissipation from the LED die 230.” Id. at 4:25-29.
`
`A “transparent or translucent encapsulant 260 is bonded to the upper surface
`
`212 of the substrate 210.” Id. at 4:12-15. The portion of the encapsulant outside of
`
`the recess is colored yellow in the top image above.
`
`VI. SUMMARY OF THE RELEVANT PROSECUTION HISTORY
`
`A copy of the file history as accessed from PAIR is provided as Exhibit 1002.
`
`The application as filed included 16 claims. Claim 1 as originally filed recited:
`
`1. A light source comprising:
`
`a substrate having opposing first and second surfaces, the
`substrate defining an aperture extending between the first and second
`surfaces,
`
`a platform covering an opening of the aperture adjacent the first
`surface,
`
`a light emitting diode mounted on the platform within the
`aperture, and
`
`a transparent encapsulant material encapsulating the light
`emitting diode in the aperture.
`
`Ex. 1002 (Prosecution History) 273.
`
`
`
`6
`
`Exhibit O, Page 370
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 13 of 76 Page ID
` #:1373
`
`By Office Action dated December 20, 2002, the Examiner rejected the
`
`pending claims as anticipated by or rendered
`
`obvious by Japanese Patent Application 52-
`
`47692 (Fujii) alone or in combination with
`
`secondary references. Id. at 212-15. In
`
`particular, the Examiner relied upon figure 5 of
`
`Fujii (reproduced to the right).
`
`Following a series of rejections and amendments, which included rewriting a
`
`number of claims in independent form, the applicants
`
`submitted an appeal brief on February 28, 2005. The
`
`pending rejection was based on Figure 1 of U.S. Patent
`
`No. 6,645,783 (reproduced to the right). Then-pending
`
`claim 4, which became patent claim 1, had been
`
`amended relative to original application claim 1 as follows:
`
`A light source comprising:
`
`a substrate having opposing first and second surfaces, the
`substrate defining an aperture extending from between the first surface
`to the second surface, said aperture having a first opening in the first
`surface and second opening in said second surface;,
`
`a platform covering said first an opening, said platform being
`located outside of said aperture of the aperture adjacent the first surface,
`
`
`
`7
`
`Exhibit O, Page 371
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 14 of 76 Page ID
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`a light emitting diode mounted on the platform within the
`aperture, and
`
`a transparent encapsulant material encapsulating the light
`emitting diode in the aperture,
`
`wherein the aperture comprises a side wall tapering outwards
`towards the second surface, and
`
`wherein the platform extends over the side wall.
`
`Id. at 31. The final amendment to application claim 4 (with identical amendments
`
`made to most of the other independent claims) added the language “said platform
`
`being located outside of said aperture.” Id. at 77-82.
`
`Rather than respond to the appeal brief, the Examiner issued a Notice of
`
`Allowability without providing reasons for the allowance. Id. at 15.
`
`VII. CLAIM CONSTRUCTION
`
`Because the ’771 patent has not expired, the Board applies the “broadest
`
`reasonable construction in light of the specification.” 37 C.F.R. § 42.100(b); see also
`
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). This claim
`
`construction standard is different from—and broader than—that applied in district
`
`
`
`8
`
`Exhibit O, Page 372
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 15 of 76 Page ID
` #:1375
`
`court. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1327-28 (Fed. Cir.
`
`2015).1
`
`A.
`
`“said platform being located outside of said aperture”
`
`Under the broadest reasonable interpretation, the phrase “said platform being
`
`located outside of said aperture” as recited in independent claims 1-5, 7, and 8
`
`encompasses a platform that is at least partially outside of the aperture. That is,
`
`while at least a portion of the platform must be outside of the aperture, a portion of
`
`the platform may also be within the aperture as expressly recited in claim 1:
`
`[a] a substrate having opposing first and second surfaces, the substrate
`defining an aperture extending from the first surface to the
`second surface, said aperture having a first opening in the first
`surface and second opening in said second surface;
`[b] a platform covering said first opening, said platform being located
`outside of said aperture,
`*
`
`*
`*
`
`[e] wherein the aperture comprises a side wall tapering outwards
`towards the second surface, and
`[f] wherein the platform extends over the side wall.
`
`
`
`1 Petitioner does not concede that the meaning of any claim terms are as broad
`
`under the Philips standard as they are under the broadest reasonable interpretation
`
`standard. Petitioner reserves the right to argue for alternative and narrower
`
`definitions in district court.
`
`
`
`9
`
`Exhibit O, Page 373
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 16 of 76 Page ID
` #:1376
`
`(Emphasis added).
`
`A person having ordinary skill in the art upon review of the specification of
`
`the ’771 patent would have understood claim 1 to require (1) an aperture through the
`
`substrate, (2) a platform located outside of the aperture, and (3) the platform extends
`
`over the inner surface of the aperture. The broadest reasonable construction,
`
`therefore, requires at least a portion of the platform located inside of and outside of
`
`said aperture. In other words, the recited characteristic (“outside of said aperture”)
`
`does not apply to the entire platform.
`
`The specification, and in particular, the figures of the ’771 patent, support this
`
`interpretation. As shown in the colored version of figure 2 (reproduced in relevant
`
`part to the right), the platform 270
`
`(sometimes called a “pad,”
`
`“platform/pad” or “thermal dissipation
`
`pad”) comprises a portion (colored red)
`
`outside of the aperture 220 and a portion 224 (colored pink) that covers the inner
`
`surface of the aperture 220. See also Ex. 1001 (’771 patent) 3:60-65. The patent
`
`explains, as recited in claim 1, that a portion of the platform extends up the sidewalls
`
`224 of the recess:
`
`The circular floor 222 and the side walls 224 of the recess 220 are
`provided by the pad/platform 270 which presents a silvered nickel
`surface to the LED die 230. Light emitted by the LED die 230 is
`
`10
`
`Exhibit O, Page 374
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 17 of 76 Page ID
` #:1377
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`reflected by the silvered surface of the circular floor 222 and the side
`walls 224 in an upwards direction . . . .
`
`’771 patent at 4:20-25 (emphasis added).
`
`This interpretation is further supported by figure 17 (reproduced in part and
`
`colored to the right), which uses the
`
`same reference numbers and again
`
`shows platform 270 partially within
`
`(pink) and partially outside (red) of the
`
`aperture.
`
`In view of the relevant disclosures, Petitioner asserts that the recitation “said
`
`platform being located outside of said aperture” means that at least a portion of the
`
`platform extends outside of the aperture under the broadest reasonable construction
`
`standard.
`
`VIII. PERSON HAVING ORDINARY SKILL IN THE ART
`
`As explained in M.P.E.P. § 2141.03, a number of factors may be considered in
`
`determining the proper level of skill:
`
`The person of ordinary skill in the art is a hypothetical person who is
`presumed to have known the relevant art at the time of the invention.
`Factors that may be considered in determining the level of ordinary
`skill in the art may include: (A) “type of problems encountered in the
`art;” (B) “prior art solutions to those problems;” (C) “rapidity with
`which innovations are made;” (D) “sophistication of the technology;
`
`11
`
`Exhibit O, Page 375
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 18 of 76 Page ID
` #:1378
`
`and” (E) “educational level of active workers in the field. In a given
`case, every factor may not be present, and one or more factors may
`predominate.”
`
`A person of ordinary skill in the art at the time of the purported invention would
`
`have had at least a B.S. in mechanical or electrical engineering or a related field, and
`
`four years’ experience designing LED packages. Ex. 1003 (Pecht)2 ¶29-¶31. This
`
`description is approximate, and a higher level of education or skill might make up
`
`for less experience, and vice-versa. Id. For example, a M.S. in the above fields and
`
`two years’ experience would suffice. Id.
`
`IX. BRIEF DESCRIPTION OF THE PRIOR ART
`
`A.
`
`Japanese Patent Application Publication No. 07-235696 (Sharp)
`
`Japanese Patent Application Publication No. 07-235696 (hereinafter “Sharp”)
`
`is entitled “Chip Component Type LED and Manufacture of Same.” Ex. 1004
`
`(Sharp). Sharp, which was not of record during the prosecution of the ’771 patent,
`
`was published more than one year prior to the filing date of the ’771 patent on
`
`September 5, 1995. Sharp, therefore, is prior art against the ’771 patent under pre-
`
`AIA 35 U.S.C. § 102(b) and (a).
`
`
`
`2 Exhibit 1003 is the declaration of Michael Pecht Ph.D.
`
`
`
`12
`
`Exhibit O, Page 376
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 19 of 76 Page ID
` #:1379
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`As will be apparent throughout this petition, the invention disclosed and
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`claimed in Sharp is, for all relevant purposes, indistinguishable from the purported
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`invention claimed in the ’771 patent.
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`Figure 1 of Sharp (reproduced and colored below) includes a substrate 10
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`(colored purple) having an
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`aperture 12 (colored green).
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`Ex. 10043 (Sharp) Abstract,
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`¶28. The aperture 12
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`(referred to in Sharp as a
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`“through-hole”) extends
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`through the substrate from the top surface to the bottom surface. Id. at ¶28.
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`An LED chip 1 (colored blue) is mounted within the aperture 12 on a platform
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`(colored red). Id. at ¶30. The platform includes a metal sheet 5 provided on the back
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`surface of the substrate, which covers the aperture’s opening in the bottom surface of
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`the substrate 10. Id. The platform also includes a metal layer (for example a copper
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`film or copper plating) that extends over the inclined surface 121 of the aperture 12.
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`Id. at ¶29 (explaining that wiring pattern 9 extends into the aperture); ¶34
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`
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`3 Exhibit 1004 comprises Sharp, a translation of Sharp and translator
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`declaration.
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`
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`13
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`Exhibit O, Page 377
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 20 of 76 Page ID
` #:1380
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`(explaining that a layer 15 is formed on the inclined surface 121 of the aperture 12);
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`¶35 (explaining that the layer 15 may be nickel, silver, gold, or palladium deposited
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`over a copper film or copper plating). A transparent resin 11 (yellow) encapsulates
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`the light emitting diode 1. Id. at Abstract, ¶30.
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`A similar embodiment is shown in figure 4 (reproduced below), with like
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`elements indicated with the
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`same colors. In this figure,
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`relevant features are labeled
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`as follows: LED chip 21
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`(blue), substrate 30 (purple),
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`aperture 32 (green), transparent encapsulant 31 (yellow), and a platform (red)
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`comprising a metallic layer 27 formed on the back of substrate 30 and a metallic
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`layer 29 formed on the inner surface of the aperture 32. Id. at ¶38-¶40.
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`B.
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`Japanese Patent Application Publication No. 11-284233 (Stanley)
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`Japanese Patent Application Publication No. 11-284233 (hereinafter
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`“Stanley”) is entitled “Flat Mounting Type Led Element.” Stanley, which was not of
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`record during the prosecution of the ’771 patent, was published more than one year
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`prior to the filing date of the ’771 patent on October 15, 1999. Stanley, therefore, is
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`prior art against the ’771 patent under pre-AIA 35 U.S.C. § 102(b) and (a).
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`
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`14
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`Exhibit O, Page 378
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 21 of 76 Page ID
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`Figure 1 of Stanley (reproduced and colored below) includes a substrate 2
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`(colored purple) having an
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`aperture 2a (colored green). Ex.
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`1005 (Stanley)4 ¶8. The
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`aperture 2a (referred to in
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`Stanley as a “through hole”)
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`extends through the substrate 2
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`from the top surface to the
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`bottom surface. Id. at ¶9.
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`An LED chip 6 (colored blue) is mounted within the aperture 2a on a platform
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`(colored red). Id. at ¶9. The platform includes a “copper foil 4 . . . that closes the
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`hole 2a from the rear surface of the resin substrate 2.” Id. at ¶10. Stanley explains
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`that because “the copper foil 4 . . . is directly exposed to the exterior, and comes into
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`direct contact with a circuit substrate or outside air . . . [it] allows cooling efficiency
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`with respect to the LED chip 6 to be improved.” Id. at ¶16-¶17. Finally, a transparent
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`resin 8 (colored yellow) encapsulates the LED chip 6. Id. at ¶13.
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`
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`4 Exhibit 1005 comprises Stanley, a translation of Stanley, and a translator
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`declaration.
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`
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`15
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`Exhibit O, Page 379
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 22 of 76 Page ID
` #:1382
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`C. United States Patent No. 5,635,115 (Konishi)
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`United States Patent No. 5,635,115 to Konishi et al. (hereinafter “Konishi”) is
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`entitled “Method for Producing Semiconductor Device.” Ex. 1006 (Konishi).
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`Konishi, which was not of record during the prosecution of the ’771 patent, issued
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`more than one year prior to the filing date of the ’771 patent on June 3, 1997.
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`Konishi, therefore, is prior art against the ’771 patent under pre-AIA 35 U.S.C.
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`§ 102(b), (a), and (e).
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`Konishi discloses a method for producing a dome lens over a semiconductor
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`light emitting device based on molding. Ex. 1006 (Konishi) 6:13-17. An example
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`disclosure is provided with respect to figures 20, 21A and 21B. Id. at 21:20-56.
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`Konishi explains that the use of a molding process for adding a lens to an LED has
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`the advantage that it is possible “to produce a number of light-emitting devices at the
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`same time.” Id. at 1:34-38; see also id. at 24:51-55.
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`X.
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`PRECISE REASONS FOR THE RELIEF REQUESTED
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`A. Ground 1: Claims 1-9 Are Rendered Obvious by Sharp
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`The discussion below addresses the general description of the disclosed
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`invention in Sharp as well as the detailed descriptions of two substantially similar
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`exemplary embodiments as depicted, for example, in figures 1 and 4, which
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`correspond to the first and second embodiments in Sharp. It would have been
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`obvious to a person of ordinary skill to combine the features disclosed in these two
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`
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`16
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`Exhibit O, Page 380
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 23 of 76 Page ID
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`embodiments in Sharp, as explained below. These two embodiments in Sharp
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`together provide sufficient disclosure for each recitation in claims 1-9.5 The general
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`description as well as the detailed embodiments, whether considered alone or in
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`combination, would have rendered the claims obvious to a person of ordinary skill.
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`1.
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`Independent Claim 1
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`“1. A light source comprising”
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`To the extent that the preamble is found to limit the claims, Sharp discloses “a
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`chip component type LED [light emitting diode].” Ex. 1004 (Sharp) ¶1, see also,
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`e.g., id. at Abstract, Claims 1-4, ¶27, ¶37; see also Ex. 1003 (Pecht) ¶57. The
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`exemplary embodiments of figures 1 and 4 (reproduced below left and right
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`respectfully) depict light sources including an LED chip (labeled 1 on the left and 21
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`on the right).
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`
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`5 To the extent that Sharp expressly discloses all of the elements in a single
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`embodiment, the claim is unpatentable for anticipation and obviousness because
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`“anticipation is the epitome of obviousness.” Wasica Finance GmbH v. Continental
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`Auto. Sys., 853 F.3d 1272, 1278 n.3 (Fed. Cir. 2017).
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`
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`17
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`Exhibit O, Page 381
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`

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`
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`“[a] a substrate having opposing first and second surfaces,
`the substrate defining an aperture extending from the first
`surface to the second surface, said aperture having a first
`opening in the first surface and second opening in said second
`surface”
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`Sharp discloses “an insulating substrate in which a through-hole has been
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`formed.” Ex. 1004 (Sharp) Claim 1; see also, e.g., id. at Abstract, ¶12-¶17, ¶20-¶22,
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`¶28-¶33, ¶38, ¶43-¶45; Figures 3(a-
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`d); Figures 6(a-e). The exemplary
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`embodiment of figure 1 (reproduced
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`and colored to the right) depicts
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`substrate 10 (colored purple), which
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`has opposing top surface 102 and bottom surface 101. Id. at ¶28. Substrate 10 also
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`has an aperture 12 (colored green and referred to in Sharp as a “through-hole”) that
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`extends through the substrate 10 and comprises openings in the top surface 102 and
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`bottom surface 101 of substrate 10. Id. at Abstract, Claims 1-4, ¶28; Ex. 1003
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`(Pecht) ¶58.
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`
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`18
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`Exhibit O, Page 382
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-16 Filed 02/26/18 Page 25 of 76 Page ID
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`Similarly, figure 4 (reproduced and colored to the right) depicts a substrate 30
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`having opposing top surface 302 and
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`bottom surface 301. Ex. 1004 (Sharp)
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`¶38. Substrate 30 also has an aperture
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`32 (colored green and referred to in
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`Sharp as a “through-hole”) that extends through the substrate 30 and comprises
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`openings in the top surface 302 and bottom surface 301 of substrate 30 as shown in
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`figure 4. Id. at Abstract, Claims 1-4, ¶38-¶40; Ex. 1003 (Pecht) ¶58.
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`“[b] a platform covering said first opening, said platform
`being located outside of said aperture”
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`Sharp discloses a platform, which functions both as wiring for an LED and as
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`a surface on which the LED is mounted. Ex. 1004 (Sharp) Abstract, Claims 1-4. A
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`portion of the platform is located outside of the aperture and covering its bottom
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`opening. Id. at Abstract, Claims 3 and 4, ¶12-¶13, ¶22, ¶25, ¶38-¶39, FIGs. 4 and
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`6(a-e); see also Ex. 1003 (Pecht) ¶59.
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`The exemplary embodiment of figure 1 (reproduced and colored to the right)
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`depicts a platform as recited.
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`Specifically, the “platform”
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`corresponds to metal layer (5) and
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`coating (15) of the embodiment
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`illustrated in Figures 1 and 3(a-d). As indicated by