`571.272.7822
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`Paper No. 9
`Filed: July 7, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2017-00551
`Patent 7,915,631 B2
`_______________
`
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`TCL 1041, Page 1
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`IPR2017-00551
`Patent 7,915,631 B2
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`A. Background
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`I. INTRODUCTION
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`Vizio, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) seeking to
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`institute an inter partes review of claims 1–4, 7, 8, 10, and 11 of U.S. Patent
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`No. 7,915,631 B2 (Ex. 1001, “the ’631 patent”) pursuant to 35 U.S.C.
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`§§ 311–319. Nichia Corporation (“Patent Owner”) filed a Preliminary
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`Response. (Paper 8, “Prelim. Resp.”). We have jurisdiction under
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`35 U.S.C. § 314(a), which provides that an inter partes review may not be
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`instituted “unless . . . there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.”
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`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. § 103 on the following specific grounds (Pet. 15–57):
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`References
`Baretz1
`Baretz and Matoba2
`Baretz and Pinnow3
`Baretz, Matoba, and Pinnow
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`Claims Challenged
`1, 2, 10, and 11
`1, 2, 10, and 11
`3, 4, 7, and 8
`3, 4, 7, and 8
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`For reasons discussed below, we deny Petitioner’s request to institute
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`inter partes review of claims 1–4, 7, 8, 10, and 11 of the ʼ631.
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`1 U.S. Patent No. 6,600,175 (Ex. 1004, “Baretz”).
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`2 JP Patent Pub. No. H7-99345 with certified translation (Ex. 1005,
`“Matoba”).
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`3 U.S. Patent No. 3,699,478 (Ex. 1006, “Pinnow”).
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`2
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`TCL 1041, Page 2
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`Patent 7,915,631 B2
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`B. Related Proceedings
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`We have been informed that Nichia Corp. v. VIZIO, Inc., C.A. No.
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`C.A. No. 8:16-cv-545 (C.D. Cal.), may be impacted by this proceeding.
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`Pet. 5. In addition, Petitioner has filed petitions seeking inter partes review
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`of several related patents, 7,901,959 (IPR2017-00552), 7,855,092 (IPR2017-
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`00556), and 8,309,375 (IPR2017-00558). See id.
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`A. The ʼ631 patent
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`The ’631 patent describes a light emitting diode (“LED”) containing
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`phosphor. Ex. 1001, 1:28–31. LEDs “emit[] light of clear color with high
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`efficiency” and are free from such trouble as burn-out and are durable
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`enough to endure repetitive ON/OFF operations. Id. at 1:33–37. As
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`described in the specification, prior attempts to emit white light from LEDs
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`had unsatisfactory results due to “variations in the tone, luminance and other
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`factors of the light emitting component” and in addition, it was sometimes
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`necessary to use complex circuitry to compensate for variations between
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`materials used to create the LEDs. Id. at 1:55–61. The ’631 patent purports
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`“to solve the problems described above and provide a light emitting device
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`which experiences only extremely low degrees of deterioration in emission
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`light intensity, light emission efficiency and color shift over a long time of
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`use with high luminance.” Id. at 3:1–7. Figure 1 of the ’631 patent is
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`reproduced below.
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`3
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`TCL 1041, Page 3
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`Patent 7,915,631 B2
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`Figure 1 is a schematic sectional view of a lead type LED. Id. at 4:53–55.
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`LED 100 has light emitting component 102, which is installed in cup 105a.
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`Id. at 8:34–35. Coating resin 101 fills cup 105a and the resin contains a
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`specified phosphor to cover light emitting component 102. Id. at 8:35–37.
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`Light emitting component 102, which is also known as an LED chip,
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`“excites the phosphor contained in the coating resin 101 to generate
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`fluorescent light having a wavelength different from that of LED light, so
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`that the fluorescent light emitted by the phosphor and LED light which is
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`output without contributing to the excitation of the phosphor are mixed and
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`output.” Id. at 8:45–50. Thus, LED 100 emits light having a different
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`wavelength than the light emitted by the LED chip. Id. at 8:50–53.
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`C. Illustrative Claim
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`Petitioner challenges claims 1–4, 7, 8, 10 and 11 of the ʼ631 patent, of
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`which claim 1 is independent. Claim 1 is illustrative of the challenged
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`claims and is reproduced below:
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`4
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`TCL 1041, Page 4
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`1. A light emitting diode comprising:
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`an LED chip having an electrode;
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`a transparent material covering said LED chip, and a phosphor
`contained in said transparent material and absorbing a
`part of light emitted by said LED chip and emitting light
`of wavelength different from that of the absorbed light;
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`wherein the main emission peak of said LED chip is within the
`range from 400 nm to 530 nm,
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`a concentration of said phosphor in the vicinity of said LED
`chip is larger than a concentration of said phosphor in the
`vicinity of the surface of said transparent material, and
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`said phosphor diffuses the light from said LED chip and
`suppresses a formation of an emission pattern by a partial
`blocking of the light by said electrode.
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`Ex. 1001, 30:59–31:6.
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`D. Identification of Real Parties-in-interest
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`Petitioner declares that it is the real party-in-interest (“RPI”) pursuant
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`to 37 C.F.R. § 42.8(b)(1). Pet. 5. That rule requires the Petition to
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`“[i]dentify each real party-in-interest.” 37 C.F.R. § 42.8(b)(1) (emphasis
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`added). Patent Owner questions whether this is a complete listing of RPIs
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`because “facts presently available to Nichia suggest that TCL Multimedia
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`Technology Holdings Ltd. and its subsidiary, TTE Technology, Inc.
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`(together, ‘TCL’), may also be real parties-in-interest.” Prelim. Resp. 7.
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`Patent Owner contends that Petitioner conspicuously failed to list as a
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`related matter Patent Owner’s suit against TCL in Delaware (Nichia Corp. v.
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`TCL Multimedia Tech. Holdings Ltd., Case 1:16-cv-00681 fled Aug. 8,
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`2016) (Ex. 2008), also alleging infringement of the ’631 patent. Id. TCL
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`engaged as its litigation counsel the same law firm that Petitioner engaged in
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`5
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`TCL 1041, Page 5
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`Nichia Corp. v. VIZIO, Inc., C.A. No. 8:16-cv-545 (C.D. Cal.). Id. Thus,
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`Petitioner and TCL share the same lead trial counsel in their district court
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`proceedings. Id. at 8. In the Delaware case, TCL responded to discovery
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`requests concerning preparation and filing of the Petition by asserting the
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`joint defense privilege and common interest doctrine, Patent Owner
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`contends that TCL essentially acknowledges it was communicating with
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`counsel for third parties, likely including Petitioner’s counsel, concerning
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`the preparation and filing of the Petition. Id. (citing Ex. 2011, Response
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`Request 50).
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`In this proceeding Petitioner is represented a law firm and named
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`counsel that is different from the firm and counsel engaged by Petitioner and
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`TCL in the district court cases. As Patent Owner notes, it is Petitioner’s
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`burden to establish it has complied with the statutory requirement to identify
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`all real parties in interest. Id. at 9 (citing Amazon.com, Inc. v. Appistry, Inc.,
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`Case IPR2015-00480, slip op. at 6 (PTAB July 13, 2015)). On this record,
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`we find that the mere existence of a joint defense agreement between parties
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`represented by the same trial counsel is insufficient to establish that
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`Petitioner, which is represented by different counsel in this inter partes
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`review, has failed to name all real parties-in-interest. A non-party is not
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`necessarily a real party-in-interest by virtue of its status as a co-defendant or
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`co-member of a joint defense group with a petitioner. See Trial Practice
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`Guide at 48,760; see also, Petroleum Geo-Servs. Inc. v. WesternGeco LLC,
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`Case IPR2014-00687, slip op. at 16 (PTAB Dec. 15, 2014) (Paper 33)
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`(holding petitioner and non-party’s shared interest in invalidating patent at
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`issue, “collaborat[ion] together, and invo[cation of the] common interest
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`6
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`TCL 1041, Page 6
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`privilege with respect to sharing potentially invalidating prior art references”
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`was insufficient to render non-party a real party in interest).
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`There is no bright line test for determining the necessary quantity or
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`degree of participation to qualify as a real party in interest, although whether
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`the unnamed party could have exercised control over a party’s participation
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`is a common consideration. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 58 (Aug. 14, 2012). On the current record, Patent Owner has offered
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`no evidence that TCL assisted in preparation or financing of the Petition or
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`exerted any control over its filing or content. TCL’s assertion of the joint
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`defense privilege in the district court, in and of itself, does not indicate that
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`TCL participated in this proceeding in such a manner as to be a real party in
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`interest. TCL’s response to Patent Owner’s discovery request is in the form
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`of an objection and states that subject to its objections, TCL will produce
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`relevant, non-privileged documents responsive to this request that are in
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`TCL’s possession, custody, and control that are located after a reasonably
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`diligent search. Ex. 2011, Request Response 50. Patent Owner does not
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`state whether any such documents have been received, whether TCL has
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`refused to produce any such documents, or whether there are any other
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`indications that TCL exercised control over the filing or content of the
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`Petition. We are not persuaded that the circumstances raise sufficient doubt
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`about whether Petitioner has satisfied its obligation to name all real parties
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`in interest.).
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`E. Patent Owner’s Arguments under 35 U.S.C. § 325(d)
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`Patent Owner argues the Board should deny institution of inter partes
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`review because the same or substantially the same prior art or arguments
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`previously were presented during prosecution of the ʼ631 Patent. Prelim
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`7
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`TCL 1041, Page 7
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`Resp. 11–13. Patent Owner points out that Baretz, Pinnow, and Matoba
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`were all cited in Information Disclosure Statements before the Examiner.
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`Prelim. Resp. 12–13.
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`We note that 35 U.S.C. § 325(d) includes permissive language
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`regarding the Board’s discretion with respect to institution of inter partes
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`review and does not require the Board to decline institution. 35 U.S.C.
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`§ 325(d) (“the Director may take into account whether, and reject the
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`petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office”) (emphasis added).
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`Although Baretz, Pinnow, and Matoba were listed on Information Disclosure
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`Statements submitted to the Examiner and Matoba was cited in the
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`“Background of the Invention,” there is no evidence that the references were
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`applied against the claims of the ʼ631 patent. We also have no evidence that
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`the Examiner considered, in the context of the claims of the ’631 patent, the
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`particular disclosures cited by Petitioner in the Petition or addressed
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`arguments similar to those Petitioner now presents before the Board.
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`Having considered Patent Owner’s arguments and the particular facts
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`and circumstances of the instant proceeding, we are not persuaded that it is
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`appropriate to exercise our discretion to deny the Petition under 35 U.S.C.
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`§ 325(d).
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`II. CLAIM CONSTRUCTION
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`As stated in our Order entered on April 6, 2017, recognizing that the
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`’631 Patent is likely to expire during this inter partes review, we apply a
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`district court-type claim construction in this proceeding. Paper 7, 2–3.
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`Petitioner asserts constructions for the terms “electrode” and “main emission
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`peak.” Pet. 14. Patent Owner “reserves further discussion about claim
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`8
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`TCL 1041, Page 8
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`Patent 7,915,631 B2
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`construction as may be appropriate for its patent owner’s response under 37
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`C.F.R. § 42.120, if a trial is instituted.” Prelim. Resp. 19. We decline to
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`provide an express construction for any terms in the ’631 patent because we
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`determine that no such construction is required for the purposes of this
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`Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
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`necessary to resolve the controversy’”).
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`III. ANALYSIS
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`Petitioner asserts four grounds of unpatentability. Pet. 6. The first
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`and second asserted grounds allege that claims 1, 2, 10, and 11 would have
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`been obvious over Baretz or Baretz and Matoba. Id. The third and fourth
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`grounds allege that claims 3, 4, 7, and 8 would have been obvious over
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`Baretz and Pinnow or Baretz, Matoba, and Pinnow. Id. Patent Owner
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`asserts that Petitioner fails to provide proper analysis to support these
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`grounds. Prelim. Resp. 14. According to Patent Owner, “Petitioner
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`proceeds to combine bits of its favored references, but fails to provide any
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`substantive analysis of, for example, the scope and content of the prior art
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`and the level of ordinary skill in the pertinent art.” Id. We find Patent
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`Owner’s argument to be persuasive.
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`The Petition provides a short description of the asserted references
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`(Pet. 15–22), argument for combining Baretz and Matoba (id. at 22–24),
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`argument for combining Baretz and Pinnow (id. at 24–28), and then a single
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`combined claim chart for grounds 1–4 (id. at 28–57). The claim chart is
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`composed of short conclusions stating that the art discloses a particular
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`limitation and then a series of quotes from the cited art without a narrative
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`discussion of the art as applied to the claim limitations. For example,
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`9
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`TCL 1041, Page 9
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`Petitioner lists limitation “1C” on the claim chart. Id. at 35. This portion of
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`claim 1 recites “a phosphor contained in said transparent material and
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`absorbing a part of light emitted by said LED chip and emitting light of
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`wavelength different from that of the absorbed light.” The claim chart
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`contains the following statement:
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`Baretz discloses that said light emitting diode comprises a
`phosphor (e.g., “fluorescer(s) and/or phosphor(s)”) contained in
`said transparent material (see [1.B]) and absorbing a part of
`light emitted by said LED chip (e.g., “output of the LED is
`absorbed”) and emitting light of wavelength different from that
`of the absorbed light (e.g., “emit second, relatively longer
`wavelength”).
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`Id. Then the chart reproduces a dozen quotes from Baretz and Figure 1 of
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`Baretz (with an annotation pointing to phosphor). Id. at 35–37. This portion
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`of the claim chart concludes with a “see also” citation listing two other
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`figures and five other citations to Baretz. Id. at 37. There is, however, no
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`explanation of how Petitioner interprets these quotes or why Petitioner
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`believes that these quotes teach or suggest the limitation. Petitioner leaves
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`us to weave together these quotes in a manner that would have rendered the
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`claim obvious. That, however, is not our role.
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`Rule 42.22(a)(2) requires the Petition to contain “a detailed
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`explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2).
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`Such explanation is lacking in this Petition. For example, the Petition does
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`not explain why Petitioner believes that the recited “absorbing a part of light
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`emitted by said LED chip” is disclosed Baretz. We instead must glean from
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`the quotes that Petitioner believes this limitation to be taught or suggested by
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`Baretz statement that the “output of the LED is absorbed.” See Pet. 35. We,
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`however, do not have argument or explanation from Petitioner as to why this
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`10
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`TCL 1041, Page 10
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`or any other statement found in Baretz would have taught one of ordinary
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`skill in the art the recited absorption of “part” of the light emitted.
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`Petitioner’s declarant Dr. Paul Prucnal similarly states that Baretz discloses
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`this limitation and then reproduces several quotes from the reference without
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`further discussion, application, explanation, or analysis. Ex. 1003 ¶ 116
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`(“Baretz discloses . . . absorbing a part of light emitted by said LED chip
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`(e.g., ‘output of the LED is absorbed’)”). Recitation of quotes without
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`explanation or analysis is not sufficient to meet Petitioner’s burden.
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`The claim chart also contains several passages placed throughout,
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`wherein the Petitioner recites a number of other references that it believes
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`would provide a person of ordinary skill in the art with reason to believe the
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`recited limitation to be obvious. For example, as to limitation “1A” (“an
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`LED chip having an electrode”), Petitioner asserts that “[t]o the extent it is
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`argued further disclosure is required, it would have been obvious based on
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`the knowledge of a POSITA to use an electrode on the LED chip’s emitting
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`surface in implementing Baretz’s LED.” Pet. 32 (citing Ex. 1003 ¶ 101).
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`Petitioner then cites four other references (Exs. 1007, 1010, 1011, 1012)
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`without explaining why those references are pertinent to the asserted
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`grounds. Id. As the Supreme Court has noted, however, “a patent composed
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`of several elements is not proved obvious merely by demonstrating that each
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`element was, independently known in the prior art.” KSR Int’l v. Telefex
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`Inc., 550 U.S. 398, 418 (2007). Thus, a listing of citations is not sufficient
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`to prove obviousness without an explanation of the import and impact of the
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`teaching.
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`In addition, Petitioner’s omnibus claim chart does not provide
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`sufficient information to allow us to understand each of their asserted
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`11
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`TCL 1041, Page 11
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`grounds. For example, Petitioner alleges that claims 1, 2, 10, and 11 would
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`have been obvious over Baretz. Petitioner does not explain explicitly what
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`disclosures it believes to be missing from Baretz. The Petition instead lists a
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`series of quotes from Baretz and then a series of quotes from Matoba (see
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`e.g., Pet. 38–42 (claim chart for element “1E”)) followed by a paragraph
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`stating that
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`As shown in Figure 1 of Baretz, a concentration of the
`phosphor in the vicinity of the LED chip (concentration of the
`phosphor in down-converting material 20 is larger than 0, e.g.,
`EX1004, 9:4-9) is larger than a concentration of the phosphor in
`the vicinity of the surface of the transparent material
`(concentration of the phosphor in the vicinity of the surface of
`enclosure 11 is zero, EX1004, 8:60-66). EX1004, Fig. 1;
`EX1003¶127; see also EX1008, 435, 688.
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`Id. at 42. This statement then is followed by paragraph asserting that to the
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`extent further disclosure is required one of ordinary skill in the art would
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`have looked to Matoba. Id. Missing from this discussion, however, is the
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`argument required for the assertion of obviousness over Baretz alone.
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`Petitioner does not explain what it believes to be missing from Baretz and
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`why one of ordinary skill would have found it obvious to modify Baretz to
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`achieve the recited limitation.
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`Thus, for all of the foregoing reasons, we are not persuaded that
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`Petitioner has met its burden to establish a reasonable likelihood that it
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`would prevail in showing claims 1–4, 7, 8, 10, and 11 of the ’631 patent
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`would have been obvious over the cited references.
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`12
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`TCL 1041, Page 12
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`IV. CONCLUSION
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`For the foregoing reasons, we determine Petitioner has not
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`demonstrated there is a reasonable likelihood it would prevail in establishing
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`the unpatentability of claims 1–4, 7, 8, 10, and 11 of the ʼ631 patent.
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`For the reasons given, it is
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`V. ORDER
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`ORDERED that this Petition is denied and no inter partes review
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`shall be instituted.
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`13
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`TCL 1041, Page 13
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`PETITIONER:
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`Gabrielle E. Higgins
`Gabrielle.higgins@ropesgray.com
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`Jordan M. Rossen
`Jordan.rossen@ropesgray.com
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`PATENT OWNER:
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`Catherine Nyarady
`cnyarady@paulweiss.com
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`David Cole
`dcole@paulweiss.com
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`14
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`TCL 1041, Page 14
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