Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 1 of 76 Page ID
` #:1496
`
`Exhibit Q
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 2 of 76 Page ID
` #:1497
`
`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. IPR2018-00522
`U.S. Patent No. 7,524,087
`__________________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U. S. PATENT NO. 7,524,087 UNDER
`
`35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`Exhibit Q, Page 493
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 3 of 76 Page ID
` #:1498
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`REQUIREMENTS FOR AN INTER PARTES REVIEW PETITION ............ 4
`II.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§ 42.104(B)) .. 5
`III.
`THE PURPORTED INVENTION .................................................................. 6
`IV.
`V.
`SUMMARY OF THE RELEVANT PROSECUTION HISTORY ................ 7
`VI. CLAIM CONSTRUCTION .......................................................................... 10
`“pocket”/“cavity” ....................................................................................... 11
`A.
`“lead receiving compartments are formed in the peripheral sidewall of the
`B.
`reflector housing”/“said reflector housing further having . . . a peripheral
`sidewall . . ., said peripheral sidewall having a plurality of lead receiving
`compartments formed therein” .................................................................. 14
`VII. PERSON HAVING ORDINARY SKILL IN THE ART ............................. 19
`VIII. BRIEF DESCRIPTION OF THE PRIOR ART ............................................ 19
`Japanese Patent Application Publication No. 2001-118868 (“Kyowa”) .. 19
`A.
`B.
`United States Patent Application Publication No. 2004/0206964
`(“Matsumura”) ........................................................................................... 23
`United States Patent 6,834,977 (“Suehiro”) .............................................. 25
`C.
`D. United States Patent 6,653,661 (“Okazaki ’661”) ..................................... 27
`E.
`United States Patent Application No. 2008/0054287 (“Oshio”) ............... 29
`IX.
`PRECISE REASONS FOR THE RELIEF REQUESTED ........................... 30
`A. Ground 1: Claims 1, 6-8, 15, and 17 Are Rendered Obvious by
`Kyowa ........................................................................................................ 30
`Independent Claim 1 ............................................................................... 30
`Dependent Claim 6 ................................................................................. 39
`Dependent Claim 7 ................................................................................. 40
`
`1.
`2.
`3.
`
`i
`
`Exhibit Q, Page 494
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 4 of 76 Page ID
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`4.
`5.
`6.
`B.
`
`1.
`2.
`3.
`4.
`5.
`6.
`C.
`
`Dependent Claim 8 ................................................................................. 40
`Independent Claim 15 ............................................................................. 40
`Dependent Claim 17 ............................................................................... 43
`Ground 2: Claims 1, 6-8, 15, and 17 are rendered obvious by
`Matsumura ................................................................................................. 44
`Independent Claim 1 ............................................................................... 44
`Dependent Claim 6 ................................................................................. 50
`Dependent Claim 7 ................................................................................. 51
`Dependent Claim 8 ................................................................................. 51
`Independent Claim 15 ............................................................................. 51
`Dependent Claim 17 ............................................................................... 54
`Ground 3: Claims 1, 6-8, 15, and 17 Are, in the Alternative, Rendered
`Obvious by Matsumura in View of Suehiro ............................................. 54
`“Reflector Housing” (Elements 1[b] and 15[a]) ..................................... 55
`“Lead Receiving Compartment” (Elements 1[e] and 15[c]) “Ribs”
`(Claim 6) ................................................................................................. 56
`D. Ground 4: Claims 1, 6-8, 15, and 17 Are, in the Alternative, Rendered
`Obvious by Matsumura in View of Oshio ................................................ 60
`Ground 5: Claims 1, 6-8, 15, and 17 Are, in the Alternative, Rendered
`Obvious by Kyowa in view of Okazaki ’661 ............................................. 63
`CONCLUSION .............................................................................................. 67
`X.
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
`
`1.
`2.
`
`E.
`
`ii
`
`Exhibit Q, Page 495
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`

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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 5 of 76 Page ID
` #:1500
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`PETITIONER’S EXHIBIT LIST
`
`EXHIBIT
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
` U.S. Patent No. 7,524,087 (087 patent)
`
`File History of U.S. Patent No. 7,524,087 (087 file History)
`
`Declaration of Michael Pecht, Ph.D. (Pecht)
`
`English translation of Japanese Design Patent No. D1223595
`(Nichia)
`
`LED 2006 Toyoda Gosei catalog of Optoelectronic Products
`(Gosei)
`
`Patent Owner’s contentions (Contentions)
`
`Merriam Webster’s Collegiate Dictionary (10th ed. 1997) pgs. 183,
`234, 865, 897, 975, 1090 (Merriam Webster)
`
`Webster’s Encyclopedia Unabridged Dictionary of the English
`Language (1996) pgs. 331, 416, 1441, 1491, 1610 and 1777
`(Webster’s Encyclopedia)
`
`English translation Japanese Patent Application Publication No.
`2001-118868 (Kyowa)
`
`United States Patent Application Publication No. 2004/0206964
`(Matsumura)
`
`United States Patent No. 6,834,977 (Suechiro)
`
`United States Patent No. 6,653,661 (Okazaki ’661)
`
`English translation of Japanese Patent Application Publication No.
`2007-189150 (Enomoto)
`
`United States Patent Application No. 2008/0054287 (Oshio)
`
`iii
`
`Exhibit Q, Page 496
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 6 of 76 Page ID
` #:1501
`
`EXHIBIT
`
`1015
`
`1016
`
`1017
`
`1018
`
`DESCRIPTION
`
`Volume III: Fundamentals of Injection Molding Series: “Plastic
`Injection Molding…mold design and construction fundamentals
`by Douglas M. Bryce (Plastic Injection Molding) pgs. 8 and 29
`
`Geometrical, Physical, and Visual Optics by Michael P. Keating,
`Ph.D Second Edition (Geometrical, Physical, and Visual Optics)
`
`CV Of Pecht
`
`Plastic Part Design for Injection Molding by Robert A. Malloy
`(Plastic Part Design) pgs. 12, 171 and 172
`
`iv
`
`Exhibit Q, Page 497
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 7 of 76 Page ID
` #:1502
`
`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, 6-8, 15, and 17 of United States Patent No.
`
`7,524,087 to Aizar et al., entitled “Optical Device” (hereinafter “the ’087 patent”) is
`
`requested. This Petition establishes that Petitioners have a reasonable likelihood of
`
`prevailing with respect to at least one of claims 1, 6-8, 15, and 17. A copy of the
`
`’087 patent is provided as Ex. 1001.
`
`As explained in Section IV below, the ’087 patent is focused on a pair of
`
`discloses features of housings for light emitting diodes: (1) a “pocket”/“cavity”
`
`formed on the bottom of a housing and (2) “lead receiving compartments” formed in
`
`a sidewall of the housing. As shown in the primary references Kyowa and
`
`Matsumura analyzed in detail below, those features, and indeed each and every
`
`requirement of the relevant claims was known in the prior art. But those references
`
`reflect only a narrow view into the crowded field at the relevant time, especially
`
`when viewed through the prism of the broad interpretation of the claim scope
`
`applied by the Patent Owner as reflected in Section VI.
`
`For context regarding the state of the art, therefore, color-coded figures
`
`created from Japanese Design Patent No. D1223595 (Ex. 1004 (“Nichia”)) are
`
`provided below. The same colors correspond to the same features throughout this
`
`1
`
`Exhibit Q, Page 498
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 8 of 76 Page ID
` #:1503
`
`Petition. Nichia discloses a light emitting diode package having a housing (white),
`
`lead frame (green), LEDs (red), a first pocket (blue), second pocket (purple), ribs
`
`(grey), and lead receiving compartments (dotted orange lines). In other words,
`
`Nichia disclosed the pockets and compartments later claimed by the Patent Owner.
`
`
`
`Similarly, a 2006 catalog from Toyoda Gosei (Ex. 1005) shows a number of
`
`LED products with similar designs. Images and schematics of the E1S27-*M1F7-03
`
`line of SMD Multicolor LEDs, for example, are reproduced below. The schematics
`
`are provided with the same color scheme added. Id. at 78; see also Ex. 1013
`
`(Enomoto), Fig. 6.
`
`2
`
`Exhibit Q, Page 499
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 9 of 76 Page ID
` #:1504
`
`
`
`These depictions are essentially indistinguishable from the accused product in
`
`the underlying litigation, images of which are reproduced below from the Patent
`
`Owner’s infringement contentions. Ex. 1006. Simply put, the Patent Owner has
`
`adopted an expansive interpretation of its purported invention, encompassing a pile
`
`of prior art. Patent Owner’s positions should doom its claims to invalidity.
`
`
`
`3
`
`Exhibit Q, Page 500
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 10 of 76 Page ID
` #:1505
`
`II. REQUIREMENTS FOR AN INTER PARTES REVIEW PETITION
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioners certify that the ’087 patent is available for inter partes review and
`
`that Petitioners are not barred or estopped from requesting an inter partes review
`
`challenging claims 1, 6-8, 15, and 17 of the ’087 patent on the grounds identified.
`
`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
`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.
`
`4
`
`Exhibit Q, Page 501
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 11 of 76 Page ID
` #:1506
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`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.); Document Security Systems, Inc. v.
`
`Lite-On, Inc., No. 2:17-cv-06050 (C.D. Cal.); and Document Security Systems, Inc.
`
`v. Nichia, No. 2:17-cv-08849 (C.D. Cal.).
`
`E.
`
`Fee for Inter Partes Review
`
`The Director is authorized to charge any fees specified by 37 CFR
`
`§ 42.15(a) to Deposit Account No. 50-2324.
`
`F.
`
`Proof of Service
`
`Proof of service of this petition is provided in Attachment A.
`
`III.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B))
`• Ground 1: Claims 1, 6-8, 15, and 17 are rendered obvious by Kyowa
`• Ground 2: Claims 1, 6-8, 15, and 17 are rendered obvious by
`
`Matsumura
`
`• Ground 3: Claims 1, 6-8, 15, and 17 are rendered obvious by
`
`Matsumura in View of Suehiro
`5
`
`Exhibit Q, Page 502
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 12 of 76 Page ID
` #:1507
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`• Ground 4: Claims 1, 6-8, 15, and 17 Are, in the Alternative, Rendered
`
`Obvious by Matsumura in View of Oshio
`• Ground 5: Claims 1, 6-8, 15, and 17 Are, in the Alternative, Rendered
`
`Obvious by Kyowa in view of Okazaki ’661
`
`IV. THE PURPORTED INVENTION
`
`The purported invention of the ’087 patent is described with respect to “FIGS.
`
`1 through 6 [which depict] an exemplary optical device 10.” Id. at 2:5-6. The
`
`relevant features of the device 10 are depicted in figures 1 and 2.
`
`Figure 1 of the ’087 patent is
`
`reproduced and colored to the right.
`
`The example embodiment shown
`
`includes a reflector housing (20). Id.
`
`at 2:12-17. The exposed portions of a
`
`lead frame (32), including individual
`
`leads (36, 40, and 42), are green. Id.
`
`at 2:35-37. A first pocket (30) is
`
`formed in the upper surface of the
`
`housing (20) and is blue. Id. at 2:17-19. Three LED dies (12, 14, and 16) are located
`
`in the first pocket (30) and are red.
`
`6
`
`Exhibit Q, Page 503
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 13 of 76 Page ID
` #:1508
`
`The focus of the ’087 patent is on a pair of features shown in figure 2
`
`(reproduced and colored to the right).
`
`First, the device 10 includes a second
`
`pocket 34 formed in the bottom
`
`surface (24), which is purple. And
`
`second, lead receiving compartments
`
`(52) are provided. The sides of an
`
`example lead receiving compartment
`
`(52), which the applicants depicted
`
`with its associated lead (42) omitted (see id. at 2:38-39), is indicated by orange
`
`dotted lines. The lead receiving compartments (52) are shown separated by ribs (54,
`
`56, 60, and 62), which are grey.
`
`V.
`
`SUMMARY OF THE RELEVANT PROSECUTION HISTORY
`
`A copy of the file history for the ’087 patent as accessed from PAIR is
`
`provided as Exhibit 1002. As filed, the application for the ’087 patent included 20
`
`claims. The independent claims addressed in this petition (claims 1 and 15)
`
`correspond respectively to application claims 1 and 16, which read:
`
`1. An optical device comprising:
`a lead frame with a plurality of leads;
`a reflector housing formed around the lead frame, the reflector housing
`having a first end face and a second end face and a peripheral sidewall
`
`7
`
`Exhibit Q, Page 504
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 14 of 76 Page ID
` #:1509
`
`extending between the first end face and the second end face, the reflector
`housing having a first pocket with a pocket opening in the first end face and a
`second pocket with a pocket opening in the second end face;
`at least one LED die mounted in the first pocket of the reflector
`housing; and
`a light transmitting encapsulant disposed in the first pocket and
`encapsulating the at least one LED die.
`
`16. An illumination system, comprising:
`
`a reflector housing molded on a lead frame having a plurality of
`electrically conductive leads, the reflector housing having a first cavity and a
`second cavity on opposite sides of the reflector housing;
`
`at least one LED die mounted in said first cavity and electrically
`connected to said plurality of electrically conductive leads.
`
`Ex. 1002 (’087 file history) at 91, 93.
`
`By Office Action dated August 25, 2008, the Examiner rejected application
`
`claims 16 and 18 as anticipated by U.S. Patent No. 6,707,069 to Song et al.
`
`(“Song”). Id. at 58. With respect to the term “molded” as recited in application claim
`
`16, the Examiner noted that “the term molded is a product by process claim
`
`[recitation] and given no patentable weight.” Id. In particular, the Examiner cited
`
`figures 4(a) and 6 (reproduced to the left and right respectively below) as disclosing
`
`first and second cavities in a housing. Id.
`
`8
`
`Exhibit Q, Page 505
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 15 of 76 Page ID
` #:1510
`
`In addition, the Examiner rejected all of the pending claims as obvious based
`
`
`
`on U.S. Patent No. 5,298,768 to Okazaki
`
`et al. in view of U.S. Patent No.
`
`7,282,740 to Chikugawa et al. Id. at 58-
`
`60. The Examiner did not refer to a
`
`specific figure of Okazaki. Exemplary
`
`figure 6 is reproduced to the right.
`
`Rather than dispute the rejections, the applicants amended application claim 1
`
`to add a final clause “wherein a plurality of lead receiving compartments are formed
`
`in the peripheral sidewall of the reflector housing.” Id. at 40. Similarly, the
`
`applicants amended application claim 16 to add a final clause “said reflector housing
`
`further having a first end face and a second end face and a peripheral sidewall
`
`extending between the first end face and the second end face, the reflector housing
`
`having a cavity in the first end face, said peripheral sidewall having a plurality of
`
`lead receiving compartments formed therein.” Id. at 42. The focus of the applicants’
`
`remarks was the added “lead receiving compartment” language. Id. at 45-50.
`9
`
`Exhibit Q, Page 506
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 16 of 76 Page ID
` #:1511
`
`A Notice of Allowance was subsequently issued, although no reasons for
`
`allowance were provided. Id. at 31-34.
`
`VI. CLAIM CONSTRUCTION
`
`Because the ’087 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 standard is
`
`different from—and broader than—that applied in district court. Versata Dev. Grp.,
`
`Inc. v. SAP Am., Inc., 793 F.3d 1306, 1327-28 (Fed. Cir. 2015).1
`
`The Board may also consider the positions taken by the Patent Owner in a
`
`district court proceeding. See Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00316,
`
`2016 WL 5105719 (P.T.A.B. Sept. 7, 2016) (paper 39); 35 U.S.C. § 301 (“Any
`
`person at any time may cite to the Office in writing . . . statements of the patent
`
`owner filed in a proceeding before a Federal court or the Office in which the patent
`
`owner took a position on the scope of any claim of a particular patent.”). In addition,
`
`although the implicit claim constructions adopted by a patent owner for purposes of
`
`
`
`1 Petitioners do 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. Petitioners reserve the right to argue for alternative and narrower
`
`definitions in district court.
`
`10
`
`Exhibit Q, Page 507
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 17 of 76 Page ID
` #:1512
`
`its infringement contentions are not controlling, they are a factor that the Board may
`
`weigh in determining the broadest reasonable construction. Great W. Cas. Co. v.
`
`Intellectual Ventures II LLC, IPR2015-01707, 2017 WL 376834, at *6 (P.T.A.B.
`
`Jan. 17, 2017) (paper 30); Ericsson Inc. v. Intellectual Ventures II LLC, IPR2014-
`
`00915, 2015 WL 8633525, at *3 (P.T.A.B. Dec. 7, 2015) (paper 37). That practice is
`
`consistent with the Federal Circuit’s admonition that patent owners should not be
`
`permitted to interpret claims one way to maintain validity and another to pursue
`
`infringement. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351
`
`(Fed. Cir. 2001); see also Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
`
`IPR2015-00826, 2016 WL 8969209, at *10 (P.T.A.B. Aug. 19, 2016) (paper 31).
`
`A.
`
`“pocket”/“cavity”
`
`The term “pocket” is introduced in independent claim 1 as follows: “a
`
`reflector housing formed around the lead frame, the reflector housing having a first
`
`end face and a second end face and a peripheral sidewall extending between the first
`
`end face and the second end face, the reflector housing having a first pocket with a
`
`pocket opening in the first end face and a second pocket with a pocket opening in the
`
`second end face.” The similar term “cavity” is introduced in independent claim 15 as
`
`follows: “a reflector housing molded on a lead frame having a plurality of
`
`electrically conductive leads, the reflector housing having a first cavity and a second
`
`cavity on opposite sides of the reflector housing.”
`
`11
`
`Exhibit Q, Page 508
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 18 of 76 Page ID
` #:1513
`
`A first issue to address, albeit a simple one, is the relationship between a
`
`“pocket” as recited in claim 1 and a “cavity” as recited in claim 15. Although the
`
`claim language itself provides little guidance, the specification explains that the
`
`terms “pocket” and “cavity” are used interchangeably. Ex. 1001 (’087 patent) at
`
`2:17-19 (referring to “a first cavity 30 (also referred to as a pocket)”). There is,
`
`therefore, no substantive difference between the two terms.
`
`The term cavity is used in the specification of the ’087 patent to describe two
`
`different concepts. First, the patent describes the spaces (30) and (34) formed in the
`
`top and bottom of the housing (20). Id. at 2:17-19; 2:21-22. The pair of spaces are
`
`blue and purple in the versions of figures 1 and 2 below.
`
`In a second usage, the term cavity is used to describe a “lead receiving
`
`compartment.” Id. at 2:64-67 (“Each of the leads 36, 40, 42, 44, 46 and 50 of the
`
`exemplary embodiment is located over a cavity or lead receiving compartment (e.g.,
`12
`
`
`
`Exhibit Q, Page 509
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 19 of 76 Page ID
` #:1514
`
`52) formed in the exterior of the peripheral wall 26.”). An example lead receiving
`
`compartment is indicated by the dotted orange lines in the version of figure 2 above.
`
`The broadest reasonable construction of the terms pocket/cavity in view of the
`
`specification of the ’087 patent, therefore, is a partially enclosed space.
`
`The extrinsic evidence as reflected in the following dictionary definitions
`
`further support interpreting cavity/pocket as a partially enclosed space:
`• “cavity . . . an unfilled space within a mass” (Ex. 1007 (Merriam
`
`Webster’s) at 183);
`• “pocket . . . a cavity containing a deposit (as of gold, water or gas)” (id.
`
`at 897);
`• “cavity . . . any hollow place” (Ex. 1008 (Webster’s) at 331); and
`• “pocket . . . any pouchlike receptacle, compartment, hollow, or cavity”
`
`(id. at 1491).
`
`Finally, Petitioners note that Patent Owner has taken the position in the
`
`underlying litigation that a small depression left as an artifact from the injection
`
`molding process is sufficient to comprise a pocket/cavity. The image below
`
`reproduces a portion of Patent Owner’s infringement contentions:
`
`13
`
`Exhibit Q, Page 510
`
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 20 of 76 Page ID
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`These contentions confirm the broad scope sought by Patent Owner in the
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`underlying litigation, which is consistent with Petitioners’ proposal under the
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`broadest reasonable construction standard – a partially enclosed space.
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`
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`B.
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`“lead receiving compartments are formed in the peripheral
`sidewall of the reflector housing”/“said reflector housing further
`having . . . a peripheral sidewall . . ., said peripheral sidewall having
`a plurality of lead receiving compartments formed therein”
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`Claims 1 and 15 respectively recite “lead receiving compartments are formed
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`in the peripheral sidewall of the reflector housing” and “said reflector housing
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`further having . . . a peripheral sidewall . . ., said peripheral sidewall having a
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`plurality of lead receiving compartments formed therein.” Although the words
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`appear in a different order, the concepts recited are the same. There appear to be two
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`substantive issues (1) what the structure is; and (2) where that structure is located.
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`14
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`Exhibit Q, Page 511
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 21 of 76 Page ID
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`The first issue can be resolved simply based on the claim language alone,
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`which implies a partially enclosed space that can receive a lead. That interpretation
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`is supported by the specification of the ’087 patent, which discloses “[e]ach of the
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`leads 36, 40, 42, 44, 46 and 50 of the exemplary embodiment is located over a cavity
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`or lead receiving compartment (e.g., 52).” Ex. 1001 (’087 patent) 2:64-66. As this
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`passage describing an example embodiment indicates, the term receiving does not
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`require that each lead actually be within its
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`associated compartments, but instead that
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`the compartment be capable of receiving
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`that lead. This interpretation is also
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`supported by figured 2 (reproduce and
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`colored to the right). The individual
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`compartments (52) are each a partially
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`enclosed space that can receive a lead.
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`The extrinsic evidence as reflected in the following dictionary definitions
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`further support interpreting “lead receiving compartment” as a partially enclosed
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`space that can receive a lead:
`• “compartment . . . 1: a separate division or section 2: one of the parts into
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`which an enclosed space is divided ” (Ex. 1007 (Merriam Webster’s) at
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`234);
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`15
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`Exhibit Q, Page 512
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 22 of 76 Page ID
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`• “receive . . . 1: to come into possession of . . . 2a: to act as a receptacle or
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`container for” (id. at 975);
`• “compartment . . . 1. a part or space marked or partitions off. 2. A
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`separate room, section etc.” (Ex. 1008 (Webster’s) at 416); and
`• “receive . . . 6. to hold, bear, or contain” (id. at 1610).
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`Second, as to location, both peripheral and sidewall as recited indicate a
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`location adjacent to a side surface. The specification uses the terms sidewall and
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`peripheral wall interchangeably, supporting this interpretation. Ex. 1001 (’087
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`patent) 2:15-17 (“a peripheral wall 26 (also referred to as a sidewall) extending
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`between the first end face 22 and second end face 24 and running around the sides of
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`the housing 20.”). In other words, in the
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`example embodiment the peripheral
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`wall/sidewall comprises the sides of the
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`housing. And again, this interpretation is
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`consistent with figure 2 (reproduced and
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`colored to the right), which depicts lead
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`receiving compartments adjacent to the side surface.
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`And here again, the extrinsic evidence as reflected in dictionary definitions
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`support the locational aspect of the recitations to mean adjacent to a side surface:
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`16
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`Exhibit Q, Page 513
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 23 of 76 Page ID
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`• “sidewall . . . a wall forming the side of something” (Ex. 1007 (Merriam
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`Webster’s) at 1090);
`• “peripheral . . . of, relating to, involving or forming a periphery or surface
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`part” (id. at 865);
`• “sidewall . . . a wall that serves as the side of a structure.” (Ex. 1008
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`(Webster’s) at 1777); and
`• “peripheral . . . pertaining to, situated in, or constituting the
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`periphery”; “periphery . . . the external boundary of any surface or area
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`(id. at 1441).
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`In addition, as with the pocket/cavity terms addressed above, the breadth of
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`Patent Owner’s construction as reflected in
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`its infringement contentions support
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`Petitioners’ proposed construction. A
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`bottom view of the accused device as
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`provided in Patent Owner’s contentions is
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`reproduced to the right. Ex. 2006. The
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`locations of the purported side wall and lead receiving lead compartments are also
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`17
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`Exhibit Q, Page 514
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 24 of 76 Page ID
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`identified based on the below 3D model relied upon by the Patent Owner.2 Patent
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`Owner, therefore, relies upon partially enclosed spaces adjacent to a side surface
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`that can receive a lead.
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`The intrinsic and extrinsic evidence, therefore, both support interpreting these
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`phrases to mean partially enclosed spaces adjacent to a side surface that can
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`receive a lead.
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`
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`2 Petitioners do not concede that the 3D model relied upon by Patent Owner
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`accurately reflects the molded shape of the product as actually sold, as that is not the
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`purpose of the model. Indeed, clear differences exist between the photograph of the
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`accused device as relied upon by the Patent Owner and the simplified model.
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`18
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`Exhibit Q, Page 515
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 25 of 76 Page ID
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`VII. PERSON HAVING ORDINARY SKILL IN THE ART
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`As explained in M.P.E.P. § 2141.03, a number of factors may be considered in
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`determining the proper level of skill:
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`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;
`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.”
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`A person of ordinary skill in the art at the time of the purported invention would
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`have had at least a B.S. in mechanical or electrical engineering or a related field, and
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`two years’ experience designing LED packages. Ex. 1003 (Pecht) ¶29-¶31. This
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`description is approximate, and a higher level of education or skill might make up
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`for less experience, and vice-versa. Id. For example, a M.S. in the above fields and
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`two years’ experience would suffice. Id.
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`VIII. BRIEF DESCRIPTION OF THE PRIOR ART
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`A.
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`Japanese Patent Application Publication No. 2001-118868
`(“Kyowa”) (Ex. 1009)
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`Japanese Patent Application Publication No. 2001-118868 (“Kyowa”) is
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`entitled “Surface Mounted Component and Method for Manufacturing Same.” Ex.
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`19
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`Exhibit Q, Page 516
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 26 of 76 Page ID
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`1009 (Kyowa).3 Kyowa, which was not of record during the prosecution of the ’087
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`patent, was published on April 21, 2001. Kyowa, therefore, is prior art against the
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`’087 patent under pre-AIA 35 U.S.C. § 102(b) and (a).
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`Figures 2 and 3 of Kyowa depict “an LED 10, which is a surface-mounting
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`component [having] light-emitting part[s] of red (R), green (G), and blue (B) stored
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`in one resin package 11.” Ex. 1009 (Kyowa)
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`¶14. A colored version of figure 3 of Kyowa
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`is provided to the right. Maintaining the
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`same coloring scheme applied above, the
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`reflector housing (resin package 11) is
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`white. Id. at Abstract, ¶14. The exposed
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`portions of a lead frame (13) are green. Id. at
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`15. The lead frame can also be seen in figure
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`4 prior to the bending of the leads and the formation of the reflector housing. Id. at
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`¶18.
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`
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`3 Ex. 1009 includes Kyowa as well as a translation and supporting declaration.
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`Citations other than to the figures are to the translation.
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`20
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`Exhibit Q, Page 517
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`Case 8:17-cv-00981-JVS-JCG Document 57-18 Filed 02/26/18 Page 27 of 76 Page ID
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`A first pocket/cavity (opening 12) is provided in the top surface of the
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`housing. Id. at ¶14. The side surface and
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`exposed portions of the bottom surface of
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`the first pocket/cavity are blue in the version
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`of figure 2 above. The cross-sectional shape
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`of the first pocket/cavity is also depicted in
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`figure 3(reproduced and colored to the right).
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`The formation of a second pocket and lead receiving compartments in Kyowa
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`are described with respect to the
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`process steps of figures 5(a), (b), and
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`(c). In a first step as depicted in
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`figure 5(a) (reproduced and colored
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`to the right), a pre-bent lead frame
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`(green) is inserted upside down between an upper die (29) and a lower die (30). Id.
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`at ¶19-20. Next, as shown in figure
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`5(b) (reproduced and colored to the
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`right), the mold is clamped closed a