QUINN EMANUEL URQUHART & SULLIVAN LLP
`Michael Fazio (SBN 228601)
`michaelfazio@quinnemanuel.com
`865 S. Figueroa St., 10th Floor
`Los Angeles, California 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`Raymond N. Nimrod (admitted pro hac vice)
`raynimrod@quinnemanuel.com
`Richard W. Erwine (admitted pro hac vice)
`richarderwine@quinnemanuel.com
`Matthew A. Traupman (admitted pro hac vice)
`matthewtraupman@quinnemanuel.com
`51 Madison Ave.
`New York, NY 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`
`Attorneys for Defendant and Counterclaim-Plaintiff
`VIZIO, INC.
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`Case No. 8:16-cv-00545-SJO-MRW
`
`VIZIO, INC.’S PRELIMINARY
`INVALIDITY CONTENTIONS
`
`
`
`NICHIA CORPORATION
`
`Plaintiff and Counterclaim-
`Defendant,
`v.
`
`VIZIO, INC.
`Defendant and Counterclaim-
`Plaintiff.
`
`
`
`
`
`NICHIA EX2009, Page 001
`
`

`

`Author
`
`Kaneko
`
`Auzel
`
`Huo
`
`Title
`Cerium Doped
`Yttrium Aluminum
`Garnet
`Liquid Crystal TV
`Displays
`Materials and
`Devices Using
`Double-Pumped
`Phosphors with
`Energy Transfer
`Novel Technique of
`Phosphor
`Deposition to Form
`Cathode-Ray-Tube
`Screens
`
`Publisher
`
`Publication Date
`
`KTK Scientific
`Publishers
`Proceedings of the
`IEEE, Vol. 61, No. 6
`
`1987
`
`1973
`
`IEEE
`
`1986
`
`VIZIO’s positions with respect to these references are stated on information
`and belief, and are subject to further investigation and discovery, including
`information and documents that will be produced by Nichia and third parties.
`VIZIO reserves the right to amend these invalidity contentions to assert these
`references depending on the claim construction and infringement positions Nichia
`may take as the case proceeds. Moreover, VIZIO reserves the right to use these
`references in combination with other references to render the claims of the ’375
`patent obvious in the event Nichia takes the position that certain claim limitations
`are missing from the references charted in the Exhibits identified in the charts
`above.
`B.
`
`Local Patent Rule 3-3(b): Whether Each Item Anticipates or
`Renders Obvious the Asserted Claims
`Nichia asserts claim 4 of the ’375 patent against VIZIO in this lawsuit. Claim
`4 is invalid because the ’375 patent fails to meet one or more of the statutory
`requirements for patentability. The individual bases of invalidity for anticipation
`and obvious pursuant to 35 U.S.C. §§ 102 and 103 are provided below and in the
`claim charts attached as Exhibits 375-1 to 375-6.
`
`
`
`NICHIA EX2009, Page 002
`
`

`

`1.
`Anticipation
`Asserted claim 4 of the ’375 patent is invalid as anticipated under 35 U.S.C. §
`102 in view of each of the prior art references identified above and in the claim
`charts included in Exhibits 375-1 to 375-6, which identify specific examples of
`where each limitation of the asserted claim is found in the prior art references. As
`explained above, the cited portions of prior art references identified in the attached
`claim charts are exemplary only and representative of the content and teaching of
`the prior art references, and should be understood in the context of the reference as a
`whole and as they would be understood by a person of ordinary skill in the art.
`2. Obviousness
`In accordance with Patent L.R. 3-3(b), prior art references rendering asserted
`claim 4 of the ’375 patent obvious, alone or in combination with other references,
`are identified in Exhibits 375-1 to 375-6. Exhibits 375-1 to 375-6 include
`exemplary claim charts for the ’375 patent showing specific combinations of
`references, including citations to relevant disclosures in those references. To the
`extent any limitation is deemed not to be exactly met, either explicitly or inherently,
`by an item of prior art listed above and in Exhibits 375-1 to 375-6, then any
`purported differences are such that the claimed subject matter as a whole would
`have been obvious to one skilled in the art at the time of the alleged invention, in
`view of the state of the art and knowledge of those skilled in the art. The item of
`prior art would, therefore, render the relevant claims invalid for obviousness under
`35 U.S.C. § 103(a).
`As an overview of obviousness, the technology claimed in the asserted
`patents is a basic application of the fundamental color mixing concept that blue and
`yellow make white, applied in the field of LEDs. As early as 1704, Newton
`published a paper describing how white can be made either by mixing equal parts
`red, green, and blue or by combining blue and yellow. Over the next 300 years, this
`
`
`
`NICHIA EX2009, Page 003
`
`

`

`fundamental concept has been applied in various lighting fields using various
`materials. Phosphors are one such material. A phosphor absorbs light of one color
`and emits light of a different color. Because of this unique property, phosphors have
`been commonly used since at least the 1930s to mix colors. Broadly speaking, this
`color mixing is accomplished by placing a phosphor over a light source where the
`phosphor converts a portion of the light emitted by the light source to a different
`color and the remainder of light is emitted unaltered. The overall effect is the
`emission of light of different colors, which will be perceived by the eye as a mixture
`of these two colors.
`In 1996, Yttrium Aluminum Garnet (“YAG”) was a well-known phosphor for
`absorbing blue light emission and converting it to yellow under harsh operating
`conditions. YAG was discovered in the 1960s by G. Blasse and A. Bril, researchers
`at Philips Research. Two research papers published in 1967 describe core
`characteristics of YAG, including that it absorbs blue light at about 460 nm and
`provides a bright yellow emission. Researchers thereafter combined YAG with blue
`light sources to make white light. For example, in 1969, researchers at Bell Labs
`applied YAG phosphors to blue-light-emitting lasers, as reflected in the Pinnow
`patent. In Pinnow, the YAG phosphor absorbed a portion of the blue laser light to
`create yellow light, which then mixed with the remaining blue light to create white
`light. A 1971 publication by the Pinnow inventors explained that by “coating a
`viewing screen with existing organic and inorganic phosphors, it is possible to
`efficiently convert monochromatic blue or ultraviolet laser light into virtually any
`visible color including white.”
`In the late 1970s, GE applied YAG to another commercial blue light source –
`high pressure mercury vapor lamps. Mercury vapor lamps emit light in the blue
`color region, with some lamps emitting too much blue. A 1977 article by Mary
`Hoffman at GE taught improved color rendition using YAG to convert a portion of
`
`
`
`NICHIA EX2009, Page 004
`
`

`

`the blue light emitted from mercury vapor lamps into yellow light. Hoffman
`specifically taught that YAG work efficiently at the high temperatures of high
`pressure mercury vapor lamps.
`A 1986 Philips patent disclosed the use of YAG in low pressure mercury
`vapor lamps, known as compact florescent light bulbs. Philips taught the use of
`YAG Phosphors with blue mercury vapor lamps to emit white light at a given color
`temperature. Thus, prior to 1996, YAG had been used by two of largest lighting
`companies in the world, Philips and GE, and one of the leading research laboratories
`in the U.S., Bell Labs, to partially down-convert blue light emission into yellow
`light in order to make white light.
` By 1996, it was also known to use Indium Gallium Nitride LED
`semiconductor chips as a blue-light-emitting source to combine with materials like
`YAG in order to produce white light. The first visible light LED, developed in
`1962, emitted red light. By the early 1970s, green LEDs had also been developed.
`Thus, researchers focused on developing a blue LED. Those in the industry
`recognized the commercial importance of making a blue LED to make a highly
`efficient source of white light. However, the blue LED proved incredibly hard to
`make, and for over 20 years, the industry struggled to develop one. In the early
`1990s, Shuji Nakamura, then at Nichia, along with other researchers finally
`succeeded in developing a commercially viable blue LED. A March 1994 article by
`Nakamura announced that “candela-class high-brightness InGaN/AlGaN DH blue
`LEDS with the luminous intensity of 1 cd were fabricated for the first time.” In
`recognition of their achievements in developing the blue LED, Nakamura and two
`others were awarded the 2014 Nobel Prize in Physics. The Nobel Committee
`recognized the industry’s struggle to make a blue LED, “which took three more
`decades to achieve.” The Nobel Committee also recognized “[t]he invention of
`efficient blue LEDs has led to white light sources for illumination.”
`
`
`
`NICHIA EX2009, Page 005
`
`

`

`In view of the state of the art, it is clear that the alleged inventions claimed in
`the asserted patents did not advance LED art in any discernible way. The true
`breakthrough occurred when Professor Nakamura invented high intensity blue light
`LEDs. As Nichia’s expert in the Everlight litigiation acknowledged, Nakamura’s
`new blue LEDs “were what gave everyone the incentive to move forward to create a
`simple blue plus yellow LED that emits white light.” In fact, Nichia’s litigation
`expert explained that, “after the demonstration of the blue LEDs, the development of
`the white LED was unstoppable.”
`Nichia’s expert testified in a litigation involving two related patents, U.S.
`Patent Nos. 5,998,925 and 7,531,960, which Nichia had asserted against LED
`manufacturer Everlight Electronics Co. In that case, all asserted claims, including
`claims reciting a blue LED combined with a yellow phosphor to make white light
`using the partial down conversion approach, were found invalid over the prior art.
`Like the asserted claims of these related patents, the asserted patent claims here are
`invalid over the prior art.
`The prior art reveals the immediate and obvious development of blue LEDs
`with the known yellow phosphors discussed above after Nakamura’s blue LEDs
`became commercially available in about 1994. By January 1996, prior art
`publications had already disclosed the combination of the new blue LED with
`phosphors that partially absorbed the blue light to make a yellow light that was then
`mixed with the remaining blue LED emission to make white light. And, by
`September 1996, Siemens AG’s lighting group Osram-Sylvania had already
`developed a white LED using the new blue LED with the preferred “yttrium
`aluminum garnet,” or “YAG,” phosphor. The selection and combination of down-
`converting phosphor (e.g., YAG) with the new blue LED required no more than
`routine skill.
`
`
`
`NICHIA EX2009, Page 006
`
`

`

`In fact, in reexamination No. 90/010,940, the PTAB determined that it would
`have been obvious in 1996 to combine Nakamura’s newly disclosed blue LED with
`the yellow phosphors to make white light. The Federal Circuit affirmed that ruling,
`noting the Board’s view that “the invention was ‘nothing more than a new
`application of a high-power, high-brightness blue LED developed by Dr. Nakamura
`in late 1993’” that “was predictable in view of the state of the art in LEDs, the
`market demand for white light devices, the finite number of identified means to
`convert light from LEDs into white light, and the advantages of using the down-
`conversion approach.” In re Cree, 828 F.3d at 699 (Fed. Cir. 2016). The Federal
`Circuit further agreed with the Board’s combination of Nakamura’s blue LED with
`Pinnow:
`The Board found that Pinnow teaches a down-conversion process for
`creating white light that would work with blue light of any source,
`including the blue LEDs disclosed in Nakamura. That was an entirely
`reasonable conclusion to draw from Pinnow. Therefore the Board was
`correct when it said that it was “known” to create white light from LEDs
`using down-conversion, as Pinnow teaches a down-conversion process
`that was understood to be equally applicable when used with an LED
`light source as with the laser source specifically used in Pinnow.
`Id., 700.
`The prior art Shimizu publication, which discloses work by one of the
`named inventors, but published more than one year before the earliest effective U.S.
`filing date, had already combined the new blue LED with yellow phosphors to make
`white light using the partial down-conversion approach. Shimizu discloses a
`backlight LED which, just like the asserted patent embodiments, includes a blue
`LED, whose light is partially absorbed by a phosphor that emits yellow light, which
`is synthesized with unabsorbed blue light to make white light. Thus, Shimizu
`
`
`
`NICHIA EX2009, Page 007
`
`

`

`expressly describes how unabsorbed blue LED light is mixed with light emitted by
`one or more phosphors, as required by the asserted claims.
`
`The asserted patents do not claim anything that was not already known and
`obvious in light of the prior art. Instead, the asserted claims are directed to inherent
`and obvious characteristics of a blue-light LED mixed with a yellow phosphor,
`along with non-inventive features such as components of a liquid crystal display that
`the LEDs are incorporated into, or the distribution of phosphor.
`Exhibits 375-1 to 375-6 also identify motivations and rationales for why a
`person of ordinary skill in the art at the time of the invention would have modified
`or combined the teachings of the prior art. The identified motivations and rationales
`are exemplary, and VIZIO reserves the right to provide additional evidence to
`support the motivations and rationales, or to identify other motivations or rationales,
`after further discovery and through expert reports and testimony.
`In addition to the prior art references cited in Exhibits 375-1 to 375-6, VIZIO
`may rely on additional materials to demonstrate the background and state of the art
`at the time of the invention, the knowledge or understanding of a person of ordinary
`skill in the art, and motivations and rationales to combine the prior art. The subject
`matter claimed in the ’375 patent was well known in the fields of lighting and light
`emitting diodes. References and other materials from these fields may be relevant to
`the obviousness of asserted claim 4 of the ’375 patent, and VIZIO reserves the right
`to rely on them for that purpose. These references and materials include, but are not
`limited to, those listed on the face of the Asserted Patents and cited during
`prosecution.
`C.
`Local Patent Rule 3-3(c): Charts Identifying where Specifically in
`each Alleged item of Prior Art each Asserted Claim is Found
`Pursuant to Local Patent Rule 3-3(c), charts identifying where specifically in
`each alleged item of prior art each limitation of asserted claim 4 is found, including
`
`
`
`NICHIA EX2009, Page 008
`
`

`

`Nichia’s December 28, 2016 Infringement Contentions, to the extent VIZIO has
`such documents in its possession, custody, or control. These documents are
`contained in production range: VIZIO-00000001 through VIZIO-00000479, and
`VIZIO-00004603 through VIZIO-00005250. VIZIO is in the process of collecting
`and producing documents sufficient to show the operation of any aspects of the
`additional accused products identified in Nichia’s September 14, 2017 Third
`Amended and Supplemented Preliminary Disclosure of Asserted Claims and
`Infringement Contentions.
`Pursuant to Patent Local Rule 3-4(b), VIZIO is producing a copy or sample of
`the prior art references identified pursuant to Patent Local Rule 3-3(a), to the extent
`they do not appear in the file history of the Asserted Patents, along with English
`translations of foreign references. These documents are contained in production
`range: VIZIO-00000480 through VIZIO-00004602, and VIZIO-00005251 through
`VIZIO-00005289.
`
`
`
`DATED: September 25, 2017
`
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`
`By /s/
`
`Attorneys for Defendants
`VIZIO, INC.
`
`
`
`
`
`
`
`
`
`NICHIA EX2009, Page 009
`
`