UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`Introduction ..................................................................................................... 1 
`
`Background ..................................................................................................... 2 
`
`
`
`I. 
`
`II. 
`
`III. 
`
`Petitioner May Not Have Disclosed All Real-Parties-in-Interest. ................. 7 
`
`IV.  The Board Should Deny Institution Because the Same or Substantially
`the Same Prior Art and Disclosures Were Previously Presented to the
`Office (All Grounds)....................................................................................... 9 
`
`A.  Ground 1 relies on references previously considered by the
`examiner. ............................................................................................ 10 
`
`B. 
`
`Ground 2 relies on disclosures and references previously
`considered by the examiner. ............................................................... 11 
`
`V. 
`
`Petitioner Fails to Complete the Required Graham Analysis and,
`Therefore, Has Not Carried Its Burden to Show It Is Reasonably
`Likely to Succeed on One or More Claims (All Grounds). .......................... 12 
`
`A. 
`
`B. 
`
`Petitioner provides no analysis of the scope and content of the
`prior art or whether the asserted references are analogous art. .......... 13 
`
`Petitioner provides no analysis of the level of ordinary skill in
`the art. ................................................................................................. 14 
`
`VI.  Petitioner Improperly Relies on an Unstated Definition That Was Not
`Provided to the Board and Is Facially Unreasonable (All Grounds). ........... 17 
`
`A. 
`
`B. 
`
`The Board should apply a district-court-type claim
`construction. ....................................................................................... 17 
`
`Petitioner implicitly construes “combining said light emitting
`component and said phosphor so that the blue color light from
`said light emitting component and the yellow color light from
`said phosphor are mixed to make a white color light.” ...................... 17 
`
`i
`
`

`

`
`VII.  There Is No Reasonable Likelihood Petitioner Would Prevail on Its
`Contention that Baretz Discloses the “Mixing” Limitation of the
`Claims (All Grounds). .................................................................................. 20 
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`A. 
`
`Petitioner ignores Baretz’s disclosure about mixing red, green,
`and blue light emitted by the luminophoric medium, not the
`LED chip, to make white light. .......................................................... 23 
`
`1. 
`
`2. 
`
`Petitioner ignores Baretz’s disclosure about the role of
`red, green, and blue phosphor emissions in the Baretz
`devices. ..................................................................................... 23 
`
`Petitioner ignores Baretz’s disclosure that the
`luminophoric medium emits the light that is mixed to
`make white light, not the LED chip. ........................................ 26 
`
`B. 
`
`Petitioner introduces a number of red-herring arguments that
`fail to demonstrate that Baretz mixes unconverted blue light
`from the LED chip in order to make white light. ............................... 31 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Petitioner’s reliance on a supposed admission by Nichia’s
`prior expert that Baretz teaches “partial conversion” is
`misplaced, incorrect, and misleading. ...................................... 32 
`
`Petitioner’s argument that Baretz teaches mixing of light
`emitted from the LED chip and down-converted light
`emitted from a phosphor is without merit. ............................... 35 
`
`Petitioner’s grammatical argument about Baretz’s use
`singular and plural nouns is baseless. ...................................... 41 
`
`Petitioner’s argument that Baretz teaches the use of a
`single yellow phosphor is without merit. ................................. 44 
`
`VIII.  There Is No Reasonable Likelihood Petitioner Would Prevail on
`Ground 1 or 2 Because Pinnow Is Not Analogous Art (All Grounds). ........ 49 
`
`A. 
`
`B. 
`
`Pinnow is not in the same field of endeavor as the ’375 patent. ........ 50 
`
`Pinnow is not reasonably pertinent to the problems faced by the
`inventors of the ’375 patent. ............................................................... 56 
`
`ii
`
`

`

`
`
`C. 
`
`D. 
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`Nichia’s inclusion of Pinnow on an IDS is irrelevant to the
`question of whether it is analogous art. .............................................. 59 
`
`The Federal Circuit’s In re Cree decision is irrelevant to the
`question of whether Pinnow is analogous art. .................................... 59 
`
`IX.  Conclusion .................................................................................................... 61 
`
`
`
`
`
`iii
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`

`

`
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`TABLE OF AUTHORITIES
`
`CASES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Page(s)
`
`Abbott Labs. v. Baxter Pharm. Prods., Inc.,
`
`334 F.3d 1274 (Fed. Cir. 2003) ......................................................................................59
`
`Amazon.com, Inc. v. Appistry, Inc.,
`Case IPR2015-00480, Paper 18 (July 13, 2015) ...........................................................9
`
`Anascape, Ltd. v. Nintendo of Am., Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .................................................................................23, 31
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .................................................................................49, 50
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) .............................................................................13, 56, 57
`
`Ex Parte Cree,
` Control No. 90/010,940 (PTAB Nov. 11, 2014) .........................................................60
`
`In re Cree, Inc.,
`818 F.3d 694 (Fed. Cir. 2016) ...................................................................................59, 60
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ..........................................................................................1, 12, 13, 14, 49
`
`Hyundai Motor Co. v. Blitzsafe Texas, LLC,
`Case IPR2016-01477, Paper 13 (PTAB Jan. 27, 2017) ............................................40
`
`Kirk v. Raymark Indus., Inc.,
`61 F.3d 147 (3d Cir. 1995) ...............................................................................................34
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .................................................................................50, 57
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................................12
`
`Lear Auto. Dearborn, Inc. v. Johnson Controls, Inc.,
`789 F. Supp. 2d 777 (E.D. Mich. 2011) ........................................................................34
`
`iv
`
`

`

`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`Case CBM2012-00004, Paper 10 (PTAB Jan. 25, 2013) .........................................10
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
` Cases IPR2014-00488, -00607, Paper 61 (PTAB May 22, 2015) ............................9
`
`In re Mercier,
`515 F.2d 1161 (C.C.P.A. 1975) .......................................................................................23
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998) .........................................................................................13
`
`N5 Techs. LLC v. Capital One N.A.,
`56 F. Supp. 3d 755 (E.D. Va. 2014) ...............................................................................34
`
`Nora Lighting, Inc. v. Juno Mfg., LLC,
`Case IPR2015-00601, Paper 13 (PTAB Aug. 12, 2015) ...........................................10
`
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) .......................................................................................49
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .......................................................................................13
`
`ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010) .........................................................................................59
`
`Rohm & Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) .......................................................................................31
`
`Schott Gemtron Corp. v. SSW Holding Co.,
`Case IPR2014-00367, Paper 62 (PTAB May 26, 2015) ...........................................57
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`Case IPR2012-00041, Paper 16 (PTAB Feb. 22, 2013) ............................................20
`
`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) .........................................................................................55
`
`v
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`

`

`
`
`
`STATUTES & REGULATIONS
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`35 U.S.C. § 103 .............................................................................................................12, 13, 14
`
`35 U.S.C. § 312 ...........................................................................................................................7
`
`35 U.S.C. § 314 .....................................................................................................................2, 61
`
`35 U.S.C. § 325 ...................................................................................................................10, 12
`
`37 C.F.R. § 42.8 .......................................................................................................................7, 8
`
`37 C.F.R. § 42.100 ....................................................................................................................17
`
`37 C.F.R. § 42.104 ........................................................................................................18, 20, 21
`
`37 C.F.R. § 42.107 ......................................................................................................................1
`
`37 C.F.R. § 42.120 ....................................................................................................1, 13, 15, 17
`
`
`
`OTHER AUTHORITY
`
`Fed. R. Evid. 810 .......................................................................................................................34
`
`
`
`
`
`vi
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`

`

`
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`Exhibit
`
`EX2001
`
`EX2002
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`EX2009
`
`LIST OF EXHIBITS
`
`Description
`
`Reporter’s Transcript of Scheduling Conference,
`Nichia Corporation v. VIZIO, Inc., Case No. 8:16-cv-
`00545 (C.D. Cal.) (Dec. 5, 2016) (excerpt)
`
`Press Release, The Nobel Prize in Physics 2014
`(The Royal Swedish Academy of Sciences Oct. 7, 2014)
`
`Shuji Nakamura, Nichia’s 1cd Blue LED Paves Way for
`Full-Color Display, Nikkei Electronics Asia, 65-69
`(June 1994)
`
`Phosphor Handbook (Shigeo Shionoya et al. eds., 1999)
`(excerpt)
`
`McGraw-Hill Dictionary of Science and Technical
`Terms (Sybil P. Parker ed., 5th ed. 1994) (excerpt)
`
`Complaint for Patent Infringement, Nichia Corporation
`v. VIZIO, Inc., Case No. 8:16-cv-00545 (C.D. Cal.)
`(dated Mar. 23, 2016) (Docket #1) (without exhibits)
`
`Civil Minutes, Order Granting Defendant’s Motion to
`Stay Pending Completion of Inter Partes Review
`Proceedings, Nichia Corporation v. VIZIO, Inc.,
`Case No. 8:16-cv-00545-SJO-MRW (C.D. Cal.)
`(dated Feb. 2, 2017) (Docket #68)
`
`Complaint, Nichia Corporation v. TCL Multimedia
`Holdings, Ltd. et al., Case No. 1:16-cv-00681 (D. Del.)
`(dated Aug. 8, 2016) (Docket #1) (without exhibits)
`
`VIZIO’s Demand for Jury Trial, Nichia Corporation v.
`VIZIO, Inc., Case No. 8:16-cv-00545 (C.D. Cal.)
`(dated Sept. 20, 2016) (Docket #37)
`
`vii
`
`

`

`
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`Exhibit
`
`EX2010
`
`EX2011
`
`EX2012
`
`EX2013
`
`EX2014
`
`EX2015
`
`EX2016
`
`EX2017
`
`Description
`
`Defendants’ Corporate Disclosure Statement, Nichia
`Corporation v. TCL Multimedia Holdings, Ltd. et al.,
`Case No. 1:16-cv-00681 (D. Del.) (dated Nov. 14, 2016)
`(Docket #14)
`
`Defendants’ Objections and Responses to Nichia
`Corporation’s First Set of Requests for the Production of
`Documents and Things, Nichia Corporation v. TCL
`Multimedia Holdings, Ltd. et al., Case No. 1:16-cv-
`00681 (D. Del.) (dated Mar. 20, 2017) (excerpt)
`
`Brief on Appeal, In re Baretz, Serial No. 08/621,937
`(BPAI) (dated Feb. 2, 2000) (excerpt)
`
`Transcript of Jury Trial, vol. 7, Everlight Electronics Co.
`et al. v. Nichia Corporation et al., Case No. 4:12-cv-
`11758 (E.D. Mich.) (Apr. 15, 2015) (excerpt)
`
`Verdict Form, Everlight Electronics Co. et al. v. Nichia
`Corporation et al., Case No. 4:12-cv-11758 (E.D. Mich.)
`(dated Apr. 22, 2015) (Docket #505)
`
`Notice of Appeal, Everlight Electronics Co. et al. v.
`Nichia Corporation et al., Case No. 4:12-cv-11758 (E.D.
`Mich.) (dated Feb. 12, 2016) (Docket #607)
`Technical Information, Lumogen® F, Collector Dyes
`(BASF Aktiengesellschaft Nov. 1997)
`Lumogen® F Dyes: Lumogen® F Yellow 083
`(BASF Corporation)
`
`
`
`
`
`viii
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`

`

`
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Nichia Corporation (“Nichia”)
`
`submits its preliminary response to the petition for inter partes review (“Petition”
`
`or “Pet.”) of U.S. Patent No. 8,309,375 (“the ’375 patent”), which was submitted
`
`by Petitioner VIZIO, Inc. (“Petitioner”) and challenges independent claim 1 and
`
`dependent claim 4. For the reasons set forth herein, the Petition should be denied
`
`in its entirety.
`
`I.
`
`Introduction
`
`On its face, Petitioner’s submission fails to provide the Board with the basic
`
`evidence and analysis required to institute any inter partes review. If the Board
`
`nonetheless institutes trial on any of the challenged claims, then, pursuant to 37
`
`C.F.R. § 42.120, Nichia will address, in its patent owner’s response, the numerous
`
`substantive errors and shortcomings that underlie each of Petitioner’s arguments
`
`and its purported evidence.
`
`In this preliminary response, however, Nichia addresses fundamental
`
`shortcomings of the Petition, including that (i) Petitioner may not have disclosed
`
`all real-parties-in-interest; (ii) the same or substantially the same references and
`
`arguments previously were presented to the Office; (iii) Petitioner has failed to
`
`satisfy its burden by offering an incomplete obviousness analysis and failing to
`
`address all of the Graham factors; (iv) Petitioner improperly relies on an unstated
`
`and unreasonable claim construction, and without such claim construction,
`
`
`
`

`

`
`Petitioner’s primary reference, U.S. Patent No. 6,600,175 (“Baretz”), lacks a
`
`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`material limitation in the patent’s only independent claim; and (v) Petitioner has
`
`failed to show that one of its secondary references, U.S. Patent No. 3,699,478
`
`(“Pinnow”), which is necessary for all of the Grounds in the Petition, is analogous
`
`art (and it is not).
`
`For these reasons, the Petition fails to show that there is a reasonable likelihood
`
`that Petitioner will prevail in proving any challenged claim unpatentable, the
`
`Petition should be denied, and no inter partes review should be instituted under 35
`
`U.S.C. § 314.
`
`II. Background
`Nichia is recognized as a leader in the light emitting diode (“LED”) industry.
`
`The ’375 patent stems from research Nichia performed in connection with its
`
`development of the first practical, long-lived white LED, technology that is still
`
`used to this day in a wide variety of applications. As described in the ’375 patent
`
`and summarized below, that achievement required Nichia to identify and solve a
`
`number of problems that had frustrated Nichia and the research community as a
`
`whole for several years.
`
`A brief summary of the development of LED technology may be helpful:
`
`In 1962 was the development of the first red LED. A little bit later in
`… 1971, was the development of the green LED. The creation of the
`
`2
`
`

`

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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`blue LED was much more difficult. Researchers and scientists spent
`decades trying to come up with a viable blue LED. It wasn’t until
`1994 that a commercially viable blue LED became available. The
`three researchers who were responsible for that actually were awarded
`the Nobel Prize in 2014 for that accomplishment ….1
`
`EX2001 35:24-36:6.
`
`In fact, the commercially viable blue LED was developed by a team of
`
`researchers at Nichia.2 The recipients of the Nobel Prize in Physics in 2014
`
`included Dr. Shuji Nakamura, a member of the Nichia team at the time of this
`
`development. EX2002.
`
`After the announcement of the blue LED, researchers focused their efforts on
`
`using a blue LED to make white light. This was because, with the achievement of
`
`the blue LED, researchers now had red, green, and blue LEDs, the light from
`
`which, when mixed, could create white light. EX2002; EX1001 1:49-54. For
`
`example, Dr. Nakamura pursued creation of white light with the combination of
`
`three separate LEDs (red, green, and blue). EX2003, at 65-67.
`
`
`1 This summary was provided by Petitioner’s litigation counsel during the pending
`
`litigation between Petitioner and Nichia.
`
`2 Although not material for the purposes of this preliminary response, Nichia notes
`
`that this blue LED was announced at a press conference in 1993.
`
`3
`
`

`

`The inventors of the ’375 patent observed a number of problems with this
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`
`
`approach. The 3-LED combinations required complex circuitry, as the electric
`
`power to drive them differed from LED to LED. EX1001 1:58-62. And the
`
`3-LED systems did not produce the desired tone of white light due to variations
`
`among the components, which issue could be exacerbated by the components’
`
`unsynchronized deterioration. Id.1:54-58, 1:62-2:1.
`
`The inventors of the ’375 patent turned to the use of phosphors. As explained
`
`in the ’375 patent, the inventors set out to identify phosphors that, when used in
`
`combination with a blue LED, could withstand light and heat, and absorb and emit
`
`light with the characteristics required to create white light. EX1001 3:3-32. The
`
`latter requirement included the need for sufficient contributors of red, green, and
`
`blue light to generate white light with good color rendering.3 EX2004, at 367-373,
`
`814-816.
`
`
`3 The human eye perceives color based on the light that the object reflects. Thus,
`
`the color of an object is affected by the characteristics of the illuminating light.
`
`The color of a tree leaf, for example, is not perceived accurately if the illumination
`
`source lacks green light. Daylight and incandescent light each contain a broad
`
`spectrum of colors that together are perceived as white, with good color rendering.
`
`EX2004, at 367-373, 814-816; EX2005, at 410.
`
`4
`
`

`

`As described below, the inventors discovered that the issue was more
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`
`
`complicated than they had identified. While they understood that phosphors used
`
`in a white LED would need to survive exposure to light and heat from the LED,
`
`they discovered that moisture, despite the high heat, was unexpectedly contributing
`
`to phosphor degradation in the light-intense LED environment, and would need to
`
`be addressed. EX1001 24:40-56. They also concluded that the combination of
`
`red, green, and blue phosphors4 was too limiting, and they would have to think
`
`creatively about how to achieve white light with good color rendering.
`
`To eventually arrive at the solution to these problems, the inventors of the ’375
`
`patent abandoned the conventional red-green-blue approach. They began
`
`investigating a solution in which blue light was provided by the LED chip itself
`
`and yellow light was provided by a phosphor excited by the blue light. EX1001
`
`5:4-8, 5:55-67, 6:31-41, 8:45-55, 8:66-9:2, 9:16-22, 10:4-7, 10:17-35. The LED
`
`chip would play a dual role in the invention, requiring that it simultaneously
`
`provide light suitable for exciting the phosphor to emit in a desired spectral range,
`
`and light suitable for blending with the phosphor emission to make white light. Id.
`
`
`4 In this response, when a color is used to characterize an LED or a phosphor (e.g.,
`
`“blue LED” or “red phosphor”), the color refers to the light emitted from the LED
`
`or phosphor.
`
`5
`
`

`

`
`In addition, the use of a yellow phosphor was counterintuitive, as it would not be
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`U.S. Patent No. 8,309,375
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`expected to contribute the broad range of frequencies (“from green to red regions”)
`
`needed for good color rendering. Id. 9:52-53.
`
`With this approach in mind, Nichia still had to overcome several issues. The
`
`approach required identification of phosphors that, for example, would be stable
`
`over the long term in an LED environment, would be excited by the light from a
`
`blue LED and simultaneously emit light that could be combined with that same
`
`blue LED light to create white light, and would emit across a sufficient breadth of
`
`spectrum so that, when combined with the blue LED light, the resulting white light
`
`would have good color rendering. EX1001 5:4-8, 6:31-41, 9:16-62.
`
`The problems Nichia overcame and Nichia’s solutions are reflected in the ’375
`
`patent and related patents. The manufacturing steps for achieving a desired
`
`chromaticity5 of white light is a particular focus of the ’375 patent. The emission
`
`spectrum of both the blue light source and the phosphor, the excitation spectrum of
`
`the phosphor, and the concentration and placement of the phosphor must all be
`
`properly controlled to obtain a white light LED of desired chromaticity when the
`
`
`5 “Chromaticity” refers to the quality of a color, independent of its brightness. As
`
`discussed in the Petition, Pet. 8-11, it is often plotted as an x,y coordinate on a so-
`
`called CIE diagram. EX2004, at 367-368; EX2005, at 368.
`
`6
`
`

`

`
`blue light from the LED and the yellow light from the phosphor are mixed.
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`EX1001 Figs. 6, 16, 17; id. 7:12-17, 7:50-58, 8:45-55, 8:66-9:2, 10:4-7, 10:31-36,
`
`14:39-57, 19:23-45.
`
`By filing this Petition and others with the Board, Petitioner has challenged the
`
`patentability of certain claims of the ’375 patent and three related patents that are
`
`generally directed to white light LEDs, methods for manufacturing white light
`
`LEDs, and liquid crystal displays with back lights employing LEDs. See Cases
`
`IPR2017-00551, -00552, and -00556. The ’375 patent, which is the subject of the
`
`present Petition, is generally directed to methods for manufacturing white light
`
`emitting devices. See, e.g., EX1001, claim 1.
`
`III. Petitioner May Not Have Disclosed All Real-Parties-in-Interest.
`As a threshold matter, it is questionable whether Petitioner has identified all
`
`real-parties-in-interest to this Petition, as required by 35 U.S.C. § 312(a)(2). Id.
`
`(providing that a petition “may be considered only if … the petition identifies all
`
`real parties in interest”); 37 C.F.R. § 42.8(b)(1) (requiring the Petitioner to
`
`“[i]dentify each real party-in-interest for the party”). The facts presently available
`
`to Nichia suggest that TCL Multimedia Technology Holdings, Ltd. and its
`
`subsidiary, TTE Technology, Inc. (together, “TCL”), may also be real-parties-in-
`
`interest.
`
`7
`
`

`

`On March 23, 2016, Nichia sued Petitioner in California alleging infringement
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
`
`
`
`of the ’375 patent and related U.S. Patent Nos. 7,855,092, 7,915,631, and
`
`7,901,959. EX2006 ¶¶6-29. In December 30, 2016, Petitioner filed petitions for
`
`inter partes review on each of the patents. See Cases IPR2017-00551, -00552,
`
`and -00556. On Petitioner’s motion, the case was stayed pending the Board’s
`
`decision on institution and, if instituted, pending the resolution of inter partes
`
`review proceedings. EX2007, at 13. On August 8, 2016, Nichia sued TCL in
`
`Delaware alleging infringement of the same four patents. EX2008 ¶¶11-34. TCL
`
`engaged as its litigation counsel the same law firm that Petitioner engaged.
`
`EX2009, at 1-2; EX2010, at 2. And Petitioner and TCL share the same lead trial
`
`counsel. Ibid. (identifying Attorney Nimrod of Quinn Emanuel).
`
`In this Petition, however, and despite its obligations under 37 C.F.R.
`
`§ 42.8(b)(2), Petitioner conspicuously failed to disclose the TCL case as related
`
`matter. See Pet. 2-3; 37 C.F.R. § 42.8(b)(2) (requiring the Petitioner to “[i]dentify
`
`any other judicial or administrative matter that would affect, or be affected by, a
`
`decision in the proceeding”).
`
`Also, recently in the TCL case, TCL responded to discovery requests asking for
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`communications between TCL and third parties concerning the “preparation and/or
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`filing” of the Petition. TCL asserted that those communications were covered by
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`“the joint defense privilege and common interest doctrine,” meaning that TCL
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`itself asserts that TCL’s counsel was communicating with counsel for third parties,
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`likely including Petitioner’s counsel, concerning the preparation and filing of the
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`Petition in furtherance of a joint defense or shared legal strategy or interest. See
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`EX2011, Response to Request 50.
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`Thus, Petitioner’s statement that it is the only real-party-in-interest should not
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`be taken at face value. Pet. 2. Nichia respectfully suggests that, at the very least,
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`the burden remains with the Petitioner to establish that it has complied with the
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`statutory requirement. See Amazon.com, Inc. v. Appistry, Inc., Case IPR2015-
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`00480, Paper 18, at 6 (July 13, 2015) (petitioner has burden to establish it has
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`identified all real-parties-in-interest); cf. Medtronic, Inc. v. Robert Bosch
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`Healthcare Sys., Inc., Cases IPR2014-00488, -00607, Paper 61, at 18-20 (PTAB
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`May 22, 2015) (terminating inter partes review proceedings after institution in
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`light of discovery regarding an undeclared real-party-in-interest).
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`IV. The Board Should Deny Institution Because the Same or Substantially
`the Same Prior Art and Disclosures Were Previously Presented to the
`Office (All Grounds).
`Petitioner presents two Grounds for institution of inter partes review of claims
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`1 and 4 of the ’375 patent, each asking the Board to revisit substantially the same
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`art and disclosures that the examiner already considered during the initial
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`prosecution of the ’375 patent. Petitioner’s complaint is simply that the examiner
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`got it wrong based on the information before him. The Board should exercise its
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`discretion to decline Petitioner’s invitation to institute an inter partes do-over. See
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`35 U.S.C. § 325(d); Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., Case
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`CBM2012-00004, Paper 10, at 28-29 (PTAB Jan. 25, 2013) (recognizing the
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`Office’s authority to reject a “petition when the same or substantially the same
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`prior art or arguments previously were presented to the Office”); Nora Lighting,
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`Inc. v. Juno Mfg., LLC, Case IPR2015-00601, Paper 13, at 11-12 (PTAB Aug. 12,
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`2015) (denying institution where duplicative art was considered previously during
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`the initial examination and reexamination).
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`A. Ground 1 relies on references previously considered by the
`examiner.
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`Ground 1 recites that claims 1 and 4 are “rendered obvious by Baretz in view of
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`Pinnow.” Pet. 5, 26. Baretz and Pinnow were both, however, brought to the
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`attention of the examiner during prosecution, and are both listed on the face of the
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`patent. Baretz and Pinnow were cited by Nichia in an IDS filed at the time of the
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`initial application. EX1003, IDS, at 2-3 (Nov. 9, 2010). There is no new
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`information in Baretz or Pinnow, the only prior art cited by Petitioner in Ground 1,
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`that was not before the examiner in the initial examination, and thus the Petition
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`presents the same art previously before the Office. See 35 U.S.C. § 325(d).
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`B. Ground 2 relies on disclosures and references previously
`considered by the examiner.
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`Ground 2 asserts that claims 1 and 4 are “rendered obvious by Baretz in view of
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`Pinnow, and further in view of Nakamura and Schuil.” Pet. 5, 71. As explained
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`above, both Baretz and Pinnow were before the examiner in the initial
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`examination. Petitioner notes that Nakamura et al., Appl. Phys. Lett. 67, 1868
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`(1995) (“the Nakamura reference”) and U.S. Patent No. 4,024,070 (“Schuil”) were
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`not. Pet. 16. This is disingenuous.
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`The Nakamura reference is being cited by Petitioner solely for its teachings on a
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`“well-known” method of manufacturing a III-V nitride-based blue LED. Pet. 21,
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`62, 72. That a blue LED was in the prior art has never been in dispute. See
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`EX1001, 1:41-44 (referring to a blue LED). Moreover, as discussed above, Dr.
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`Nakamura (a Nichia employee at the time) was an inventor of the blue LED, which
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`technology, according to Petitioner, became “commercially viable” in 1994.
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`EX2001 35:24-36:6.
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`Schuil is being cited by Petitioner solely for its teachings on manufacture of a
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`YAG phosphor. Pet. 23-24, 75-76. Again, the fact that YAG existed prior to the
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`Nichia inventors’ use of it has never been in dispute. Nichia cited to the examiner
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`numerous references concerning the YAG compound. See, e.g., EX1001, at 3
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`(citing Blasse, Appl. Phys. Lett. 11 (July 15 1967)).
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`The references asserted by Petitioner add nothing new to the initial examination
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`
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`that has already taken place. There is no new information that the Board needs to
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`consider. The Board should decline Petitioner’s request to expend its resources
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`and those of Nichia to retread old ground. 35 U.S.C. § 325(d).
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`V.
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`Petitioner Fails to Complete the Required Graham Analysis and,
`Therefore, Has Not Carried Its Burden to Show It Is Reasonably Likely
`to Succeed on One or More Claims (All Grounds).
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`The Board should deny the Petition because it fails to set forth how the
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`challenged claims are unpatentably obvious under 35 U.S.C. § 103, which is the
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`basis for each Ground that Petitioner has asserted. Throughout its Petition,
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`Petitioner has cut corners, avoided issues that were self-evident, and simply
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`ignored portions of evidence that, on their face, contradict Petitioner’s argument.
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`And it is not surprising that Petitioner fails to cite Graham (or KSR) in its
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`obviousness analysis because Petitioner fails to address all of the Graham factors.
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`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
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`Deere Co., 383 U.S. 1, 17-18 (1966). Indeed, Petitioner proceeds to combine bits
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`of its favored references, but fails to provide any substantive analysis of, for
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`example, the scope and content of the prior art and the level of ordinary skill in the
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`Case IPR2017-00558
`U.S. Patent No. 8,309,375
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`pertinent art.6
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`A.
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`Petitioner provides no analysis of the scope and content of the
`prior art or whether the asserted references are analogous art.
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`As for the first Graham factor, the scope and content of the prior art, neither
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`Petitioner nor its proffered expert, Dr. Prucnal, performs a substantive inquiry into
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`whether the asserted references are actually within the scope of the prior art.
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`Specifically, neither addresses whether the asserted references are analogous art to
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`the inventions claimed by the ’375 patent. They simply start combining bits of the
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`cited references without answering that first, basic question—whether it would be
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`proper to use the references under 35 U.S.C. § 103. Panduit Corp. v. Dennison
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`Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987); see Monarch Knitting Mach.
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`Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed. Cir. 1998) (explaining that
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`to ascertain t