Case 1:16-cv-00681-RGA Document 52 Filed 10/05/17 Page 1 of 23 PageID #: 795
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`NICHIA CORPORATION,
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`Plaintiff,
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`v.
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`TCL MULTIMEDIA TECHNOLOGY
`HOLDINGS LIMITED and TTE
`TECHNOLOGY, INC.,
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`Defendants.
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`Case Action No. 16-681-RGA
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`DEFENDANTS’ OPENING BRIEF IN SUPPORT OF MOTION TO STAY
`PENDING INTER PARTES REVIEW OF THE PATENTS-IN-SUIT
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`CONNOLLY GALLAGHER LLP
`Arthur G. Connolly, III (#2667)
`Ryan P. Newell (#4744)
`Mary I. Akhimien (#5448)
`The Brandywine Building
`1000 West Street, Suite 1400
`Wilmington, DE 19801
`(302) 757-7300
`aconnolly@connollygallagher.com
`rnewell@connollygallagher.com
`makhimien@connollygallagher.com
`
`OF COUNSEL:
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`Raymond N. Nimrod
`James M. Glass
`51 Madison Ave., 22nd Floor
`New York, New York 10010
`(212) 849-7000
`raynimrod@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`Attorneys for TCL Multimedia Technology
`Holdings Limited and TTE Technology, Inc.
`
`NICHIA EX2007
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`

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`Case 1:16-cv-00681-RGA Document 52 Filed 10/05/17 Page 10 of 23 PageID #: 804
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`B.
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`Nichia’s Patents Are Either Expired or Will Expire Imminently
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`The patents-in-suit all claim priority to U.S. Patent Application No. 08/902,725, filed on
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`July 29, 1997. All but the ’631 patent expired on July 29, 2017. The ’631 patent is subject to a
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`90 day extension and, thus, will expire imminently – on October 27, 2017.
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`C.
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`TCL’s IPR Petitions Incorporate The PTAB’s Teachings From Vizio
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`Nichia will likely note that the PTAB previously rejected IPR petitions filed by Vizio, Inc.
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`against the same asserted patents. As an initial matter, the grounds presented in TCL’s petitions
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`are different from those asserted by Vizio. Vizio’s petitions relied primarily on a prior art
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`patent3 which, according to the PTAB, failed to disclosed key limitations of the claims, including
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`the partial absorption of blue LED light and the synthesis of that light with yellow phosphor light.
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`TCL’s petitions address the PTAB’s concerns by identifying a different reference that expressly
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`discloses these limitations – a prior publication by a co-inventor of Nichia’s own asserted patents,
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`Japanese Unexamined Patent Application Publication No. H08-7614 to Shimizu et al. This
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`reference discloses the partial absorption of blue LED light and synthesizing that light with
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`yellow phosphor light. Indeed, the patents-in-suit even include a discussion of this reference,
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`stating that:
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`“The light emitting diode disclosed [in Shimizu is] capable of emitting white light
`by mixing the light of a plurality of sources can be made by using a light
`emitting component capable of emitting blue light and molding the light emitting
`component with a resin including a fluorescent material that absorbs the light
`emitted by the blue light emitting diode and emits yellowish light.”
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`’631 patent, 2:23-29.4
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`3 The subject patent is U.S. Patent No. 6,600,175 to Baretz et al.(“Baretz”).
`4 The specifications of the Nichia Patents are virtually identical, although there are some
`differences in column and line numbers associated with various passages. Unless stated
`otherwise, Nichia will provide citation to only the ’631 patent when citing the shared disclosures.
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`
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`6
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`NICHIA EX2007
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`

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`Case 1:16-cv-00681-RGA Document 52 Filed 10/05/17 Page 11 of 23 PageID #: 805
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`TCL’s petitions also address other issues raised by the Board in connection with the
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`Vizio IPRs. For instance, the Board noted that Vizio did not explain how U.S. Patent No.
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`3,699,478 to Pinnow et al. (“Pinnow”) is analogous to the patents-in-suit, e.g., stating that
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`“Petitioner does not explain how the gas ion laser projection system disclosed in Pinnow is in the
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`same field of endeavor as a solid state LED light source.” Ex. 5 (IPR2017-00556, Paper 9) at
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`35-36; see also Ex. 6 (IPR2017-00558, Paper 9) at 14 (“Petitioner has not provided any evidence
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`or argument as to whether Pinnow is in the same field of endeavor as the ’375 patent”). Vizio,
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`however, did not explain that the Federal Circuit already found in a prior proceeding (in the
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`context of another Pinnow reference) that Pinnow’s teachings on lasers clearly apply to LED
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`technology. In re Cree, 828 F.3d 694 (Fed. Cir. 2016) (affirming ruling that Pinnow laser prior
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`art was applicable to LED art in early 1996). That decision was binding on the Board, is flatly
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`contrary to the reasoning the Board adopted in the Vizio IPRs, and its implications have been
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`fully briefed in TCL’s petitions.
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`In other instances, the PTAB refused to address the substance of Vizio’s petitions at all,
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`because Vizio failed to provide basic substantive analysis of its grounds and instead relied on
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`claim charts. Ex. 7 (IPR2017-00551, Paper 9) at 8-9. In other words, some of Vizio’s petitions
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`were denied because the Board could not discern Vizio’s positions due to their overreliance on
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`summary claim charts. TCL’s petitions do not rely on summary claim charts, but instead provide
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`a reasoned, detailed narrative explaining each of the references, their disclosures vis-à-vis the
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`claims, and specific rationales as to why a skilled artisan would have combined them.
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`In short, TCL’s petitions address each and every concern raised by the PTAB, and
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`provide the PTAB with a factual record and legal analysis that was lacking from the Vizio
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`petitions.
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`7
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`NICHIA EX2007
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`

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`Case 1:16-cv-00681-RGA Document 52 Filed 10/05/17 Page 23 of 23 PageID #: 817
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`Thus, a stay will not unduly prejudice or otherwise tactically disadvantage Nichia.
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`V.
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`CONCLUSION
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`for a stay until the IPR proceedings are resolved(cid:484)(cid:883)(cid:882)(cid:3)
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`For the reasons set forth above, TCL respectfully requests that the Court grant its motion
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`DATED: October 5, 2017
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`
`/s/ Arthur G. Connolly, III
`CONNOLLY GALLAGHER LLP
`Arthur G. Connolly, III (#2667)
`Ryan P. Newell (#4744)
`Mary I. Akhimien (#5448)
`The Brandywine Building
`1000 West Street, Suite 1400
`Wilmington, DE 19801
`(302) 757-7300
`aconnolly@connollygallagher.com
`rnewell@connollygallagher.com
`makhimien@connollygallagher.com
`
`OF COUNSEL:
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`Raymond N. Nimrod
`James M Glass
`51 Madison Ave., 22nd Floor
`New York, New York 10010
`(212) 849-7000
`raynimrod@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`Attorneys for TCL Multimedia Technology
`Holdings Limited and TTE Technology, Inc.
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`10 Pursuant to Local Rule 7.1.1, counsel avers that a reasonable effort was made to reach
`agreement with the opposing party on the matters set forth in the motion.
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`19
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`NICHIA EX2007
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`