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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., CREE, INC., and
`EVERLIGHT ELECTRONICS, LTD.,
`Petitioner,
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`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-003331
`Patent 7,256,486 B2
`___________
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`Held: January 31, 2019
`____________
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`
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`Before SALLY C. MEDLEY, SCOTT C. MOORE, and BRENT M.
`DOUGAL, Administrative Patent Judges.
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`
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`1 Cree, Inc., who filed a Petition in IPR2018-01205, and Everlight
`Electronics Co., Ltd., who filed a Petition in IPR2018-01225, have been
`joined as petitioners in this proceeding.
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`Case IPR2018-00333
`Patent 7,256,486 B2
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`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
`MICHAEL B. EISENBERG, ESQ.
`Holland & Knight, LLP
`31 West 52nd Street,12th Floor
`New York, New York 10019
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`
`ON BEHALF OF PATENT OWNER:
`WAYNE HELGE, ESQ.
`Davidson, Berquist, Jackson & Gowdey
`8300 Greensboro Drive, Suite 500
`McLean, Virginia 22102
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`The above-entitled matter came on for hearing on Thursday,
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`January 31, 2019, commencing at 2:40 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
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`JUDGE MEDLEY: Good afternoon. This is the hearing for
`IPR2018-00333, Seoul Semiconductor, et al., vs. Document Security
`Systems.
`At this time, we would like the parties to please introduce counsel
`for the record, beginning with Petitioner.
`MR. EISENBERG: Michael Eisenberg of Holland & Knight on
`behalf of the Petitioners.
`JUDGE MEDLEY: Thank you.
`And Patent Owner?
`MR. HELGE: Good afternoon, Your Honor. Wayne Helge for
`Document Security Systems.
`JUDGE MEDLEY: Thank you.
`Each party has 45 minutes to present arguments. Petitioner, you
`will proceed first to present your case with respect to the challenged claims
`and grounds for which the Board instituted trial. You may reserve some of
`your argument time to respond to arguments presented by Patent Owner.
`Thereafter, Patent Owner, you will respond to Petitioner's
`presentation, and you may reserve argument time for sur-rebuttal.
`Are there any questions as to the order?
`MR. EISENBERG: No, Your Honor.
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`JUDGE MEDLEY: Petitioner, would you like to reserve time for
`rebuttal?
`MR. EISENBERG: Yes, Your Honor. I would like to reserve 20
`minutes.
`JUDGE MEDLEY: Okay, thank you.
`And, Patent Owner, would you like to reserve time for sur-
`rebuttal?
`MR. HELGE: Just two minutes, Your Honor.
`JUDGE MEDLEY: Okay, great.
`All right. We would like to remind the parties again that this
`hearing is open to the public and the transcript will be entered into the public
`record of the proceeding.
`Petitioner, you may proceed.
`MR. EISENBERG: Thank you, Your Honor.
`Thank you, Your Honor. I am back here this time to talk about the
`'486 patent. There are only three claims at issue here, claims 1 through 3,
`and I have a small outline provided on slide 4. There are two major issues
`that I'd like to discuss today. The first one is metallized surface, and the
`second one has to do with major surface, and I'll then try to answer any of
`Your Honors' questions.
`So the single most important issue in here, as it is in most petitions
`and most appeals, is “what do the claims mean?” We have to go through the
`same claim construction analysis here as we do in any case, and, again, we
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`start with the claims themselves, and that's according to Phillips and, as I
`said earlier today, talking about the order of evidence, not the -- how it is to
`be weighed under the broadest reasonable interpretation standard, but the
`order in which we look at it.
`So looking at the claims themselves, I have reproduced parts of
`claims 1, 2, and 3 here, because all three claims give us some information
`about how broad at least these limitations must be. So starting with claim 1,
`that claim introduces a metallized bottom major surface --
`JUDGE MEDLEY: Excuse me. Could you please refer to the
`slides so that the -- the slide number --
`MR. EISENBERG: Oh, sorry. This is slide 7. My apologies,
`Your Honor.
`I'm on slide 7, and, again, this is claims 1 through 3 with certain of
`the claim limitations brought out and emphasized with underlining. I'd like
`to start with the metallized bottom major surface. As it says here, "The
`metallized bottom major surface comprising one of an anode or a cathode,"
`and those are types of electrodes, a positive source or negative source.
`So what we have here from claim 1 is that the metallized bottom
`major surface is an anode or a cathode, and moving on to claim 3, we can
`see that the metallized bottom major surface comprises an electrode, here a
`second electrode, but the important point here is that the term "metallized
`bottom major surface" is used interchangeably with "electrode," that the
`former is or can be something -- the latter, the electrode.
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`The same thing goes with "metallized top major surface" in claim
`2. Again, in claim 3, it explains that the metallized top major surface
`comprises a first electrode, again giving a correspondence between the
`metallized surface and the concept of an electrode.
`After looking at the claims, we then must look to the specification.
`Claims must be read in view of the specification. The specification is
`always highly relevant to the claim construction analysis. Usually it is
`dispositive. It is the single best guide to the meaning of a disputed term.
`That is all from Phillips.
`So talking about the specification, what we can see here -- and I'm
`on slide 9 now -- is that there is nothing in the figures showing metallization
`or electrodes. Both of those features, both of those elements are actually
`absent from all of the figures. I've reproduced two of them here, Figure 2A
`and 2B on slide 9.
`And to confirm that the electrodes are not shown, on slide 10, here
`is a description corresponding to the figures, and it says, "In the example
`shown, semiconductor die 250 embodies a light-emitting diode and has
`anode and cathode electrodes (not shown) covering at least parts of its
`opposed major surfaces." That's important for a couple of reasons.
`First of all, it's very clear there that the figures do not show those
`electrodes. It is also clear that the electrodes need only cover at least parts
`of those surfaces. Stated in the specification, there is no description
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`anywhere in the specification, in the figures, or elsewhere of those electrodes
`covering anything more than at least part of those surfaces.
`And, again, moving on to slide 11, the correspondence between the
`bottom electrode and the metallization is made clear that I referred to --
`JUDGE DOUGAL: Counsel?
`MR. EISENBERG: Yes, Your Honor?
`JUDGE DOUGAL: So in your mind, does that exclude covering a
`large portion or the entire surface?
`MR. EISENBERG: No. No, not at all, Your Honor. The
`important thing is that it must cover at least part. It's open-ended from there,
`and it could cover the entire surface; it could cover substantially all of the
`surface. As long as it covers at least part, it is within the scope of that
`recitation.
`JUDGE DOUGAL: Right. But the claim language doesn't mirror
`this statement, right? I mean, isn't there a little bit of difference between
`metallization or a metallized layer versus an electrode covering or even
`metallization on a surface?
`MR. EISENBERG: Well, what we need to do, Your Honor, is, as
`always, try to figure out what the invention is. We look to the specification
`to see what is described as the metallized surface or a surface having
`metallization, and when we look to the specification, we see that there is no
`description of an entirely covered surface. There is no express statement
`that the surface is entirely covered.
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`So what we then need to do is figure out, if there's evidence in the
`record that makes it required to be -- for a surface to be metallized, is it
`necessary for it to be entirely covered? And we look to the intrinsic record,
`we look to -- that includes the claims and the specification, and we look to
`the extrinsic record to see if there's anything saying that those terms, when
`used by a person of ordinary skill in the art, when viewed from the point of
`view of a person of ordinary skill in the art, do those terms connote surface
`coverage? Is entire surface coverage necessary? Should that be imported
`into the claims? That's the issue. Or is it enough for at least part of the
`surface to be covered? And right now, I'm trying to go through the evidence
`from the specification indicating that at least part of the surface needs to be
`covered.
`JUDGE DOUGAL: All right, thank you.
`MR. EISENBERG: Moving on to slide 11, what you can see here
`is that the metallization on the bottom major surface is the cathode electrode
`in this example. Again, so in these two consecutive paragraphs, we have the
`definition that the metallization acts as the cathode electrode, and we also
`have the statement above that electrodes do not need to cover the entire
`surface. They need to cover at least parts of the surface. That's the evidence
`from the specification.
`The same thing goes for the top surface. What we have is a
`bonding pad located on a top major surface. We can also see -- now I'm on
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`slide 12 -- we also see that the bonding pad is typically part of or connected
`to the anode electrode.
`So, again, we see the correspondence between the feature
`described, the top surface electrode, and its location on the top surface. And
`we also know again from above that the top electrode does not need to cover
`the entire surface; it needs to cover at least part.
`There's a second description -- this is on slide 13 -- of a different
`embodiment. The actual language and explanation are substantially the
`same. I reproduced it here just to show that all descriptions that I am aware
`of, that I have been shown in the record, point to at least part of the surface
`being covered. Again, you can see that on the right, which is column 8, lines
`21 to 40, which again confirms that the anode and cathode electrodes cover
`at least parts of the surfaces.
`So in order to move on into the extrinsic evidence, I'm now on
`slide 14, what I tried to figure out is, well, does metallization, does a
`metallized surface, do those terms themselves connote, require entire surface
`coverage? And the definitions that I found from my search do not. None of
`them say the entire surface has to be covered.
`And, in fact, moving on to slide 15, it says -- this is a quotation
`from Microchip Fabrication. "The most common and familiar use of metal
`films in semiconductor technology is for surface wiring. The materials,
`methods, and processes of wiring the component parts together is generally
`referred to as metallization or the metallization process."
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`What we can see there, again, is that metallization itself does not
`necessitate entire surface coverage. Wiring is meant to be a connection, a
`narrow connection between parts. There's no implication on a chip. There's
`no implication that metallization requires the entire surface to be covered.
`That term itself doesn't imply it. A general dictionary definition identifies
`metallization, but it says "to coat, treat, or combine with a metal," as broad
`meanings of metallization or to metallize.
`In this case, "coating" itself might indicate one type of coverage,
`but "treating" or "combining with" does not. It's a broad term that does not
`connote the meaning that Patent Owner has given it.
`The only evidence we get from Patent Owner of how it has to be
`only part of the surface, rather than all of the surface, is a quotation having
`to do with the prior art, the Rohm reference, and what the Patent Owner says
`is that a metallization arranged on only a small fraction of a major surface
`does not constitute a metallized major surface. And it provided a star there,
`because there's no citation, there's no expert declaration. This is just counsel
`for the -- for Patent Owner saying this is my opinion. If it's only a small
`fraction, it can't be metallized. And importantly here, one of the figures that
`they point to, Figure 3, is actually prior art in Rohm. It's not the description
`of the invention.
`Again, we have a similar situation as we had in the last proceeding
`where there's an argument about positions taken in the litigation. What
`Patent Owner says is the correct construction -- and I'm on slide 18 now --
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`the correct construction of "metallized major surface "is a major surface, as
`defined above, substantially covered with metal. There's a couple of
`important things about that.
`First of all, even Patent Owner concedes entire surface coverage is
`not required. How much is substantially? How much do we know needs to
`be covered? Is there any guidance in the specification, the claims, or the
`prosecution, how much less than entire surface coverage is allowed? The
`answer is no. That's just -- this entire thing is -- this entire statement is
`simply Patent Owner's counsel presenting a theory. It's not evidence. The
`evidence that's cited is Exhibit 2001 at pages 12 to 13, and I have that
`evidence on the next slide, slide 19.
`What you can see here is the defendants in the case said, Patent
`Owner, you've taken a position in the IPR, in the pending hearing -- in the
`pending proceeding here, and said that's what this claim term means, and
`defendants rightly said, here in the district court, you should be bound by
`that disclaimer. That same argument does not rebound and then bind the
`Petitioners. He could be wrong about the meaning and could still be bound
`under an estoppel.
`We're not saying that construction is right. We're not even saying
`that we like that construction necessarily. We're just saying that's what
`Patent Owner wants, and they shouldn't be able to go -- to disclaim that here.
`They shouldn't be able to run away from it in district court. That is very
`different from expressly pursuing and saying a claim construction is correct.
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`Moving on from there to slide --
`JUDGE DOUGAL: Well, I want to give, I guess, a little bit of an
`analogy or a comparison. You know, if a layperson obviously talks about a
`metal table, you know, someone I think would understand that that means
`that it's substantially made out of metal. It can have wood on it or it can
`have other things, but it's -- it would be mostly substantially metal.
`So what is different here when they're saying "a metallized
`surface" from, you know, the common understanding of what one would
`consider a metal table or a metal anything? What -- why should we construe
`"metallized" in maybe a broader way than we would if someone said this is a
`metal table?
`MR. EISENBERG: Well, I mean, there's a couple things we can
`look at here, Your Honor, and one of them is an admission by Patent Owner
`here in this proceeding -- and I'm on slide 22 here -- and in response to an
`obviousness rejection -- a claim by the Petitioners, Patent Owner said, well,
`a person of ordinary skill in the art wouldn't cover the entire top surface of
`an LED with metal. That's simply not what would be done. You would
`block the light. That's what Patent Owner has said here, that that makes no
`sense.
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`That's --
`JUDGE MOORE: What slide are you on?
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`MR. EISENBERG: I am on slide 22, and it's a picture of Figure
`2A that I modified. What I did was I drew Figure 2A with a top surface
`covered with metal.
`JUDGE DOUGAL: Well, I'm not saying entirely, right? If I have
`a metal table, that doesn't necessarily mean the entire table is made out of
`metal.
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`MR. EISENBERG: But why would -- I'm sorry, Your Honor. I
`would answer the same way. Why would a person of ordinary skill in the
`art, reading a specification that it says "at least part of a surface must be
`covered," why would that person of ordinary skill in the art, looking at the
`specification, say, okay, substantially all or a substantial portion of this
`surface must be covered? Why would they reach that conclusion?
`And the answer is they would not, because covering a substantial
`portion of the surface of an LED with metal is inconsistent with how LEDs
`are known to operate, as Patent Owner explained. The light comes out. The
`light needs to come out. For a person of ordinary skill in the art, reading
`their specification, to read that and say, oh, of course, they meant
`substantially all of the surface was covered, despite the fact that that would
`reflect light, is inconsistent not only with logic and reason but with the
`specification's express statement that at least part of the surface is covered.
`I would also point to Patent Owner's positions in the underlying
`litigation, and this is on slide 24.
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`JUDGE DOUGAL: I guess before you get there, I'm having
`trouble understanding how the description in the spec, which you conceded
`could mean all or, you know, a small portion, a large portion, you know, the
`claim doesn't use the words in the specification. It doesn't use that phrase,
`and, in fact, it seems like it talks about metallization on surfaces, but the
`claim says "a metallized surface." Are we -- should we give some different
`meaning to “metal on a surface” versus “a metallized surface”?
`MR. EISENBERG: Well, I don't see how we can, Your Honor,
`because the claims have to be directed to the invention. We have to look at
`the specification and pick the meaning that's most consistent with the
`invention, especially under the broadest reasonable construction standard.
`So unless there's some express definition of the -- in the specification of
`"metallized surface means substantially all," we haven't been pointed to that.
`If there's some figure that shows substantially all, that doesn't exist.
`We are just left with the bare term, "metallized surface," and the
`question then is, in the field of LEDs, and especially when talking about the
`top surface of an LED, does it make any rational sense for someone to say
`"metallized surface" necessarily means substantially all of the surface is
`covered? It simply can't because Patent Owner says it can't, that a person of
`ordinary skill in the art would not do that because it blocks light.
`For Patent Owner to come here and say it would be nonobvious to
`do it because it would have deleterious effects, but then to say a person of
`ordinary skill in the art would necessarily interpret the specification of
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`requiring that feature, reading that into "metallized surface," which could
`have broader or narrower meanings. As Patent Owner said, "metallized
`surface" does not mean an entirely metallized surface. It can't. So there has
`to be some dividing line.
`That gets us to the problem. Where does "substantially" come
`from? Your Honor asked me that question, and I do think that the proper
`answer is unless we're given guidance on that, and the table analogy doesn't
`really help us on that, to know in this field, in this technology, what does it
`mean for the top surface of an LED to be substantially covered with metal,
`and why would a person of ordinary skill in the art interpret it that way, why
`would that be the meaning?
`And I would point to slide 24 to confirm that that's not really what
`Patent Owner thinks this claim means. Patent Owner has said what I'm
`pointing to is this little tiny dot on the top surface of an LED, these are my
`infringement contentions. And, again, it is important to make sure that
`under the broadest reasonable construction standard here, the Patent Owner
`is not allowed to run away from the Phillips standard construction it takes
`elsewhere. That can't be the right result. We're supposed to be broader here,
`at least until the rule change comes through.
`They have said -- and I have reproduced the image here on slide
`24 -- that's a metallized top major surface. The Patent Owner should explain
`how -- and has not yet to this date and should not truly be able to here raise a
`new argument -- but I've put this forward. They've said a metallized top
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`major surface doesn't need to be substantially covered. They should be
`stuck with that.
`They did point in their reply -- and I didn't understand precisely
`why -- but on slide 25, they provided a different image, and they said, no,
`no, no, here is another example of what we meant by "metallized surface."
`Slide 25, however, again, doesn't show or at least they don't identify an LED
`substantially covered with metal. In order for that construction to make
`sense, to be consistent with the positions they've taken elsewhere, to be
`consistent with the specification that says at least part of the surface needs to
`be covered, they need to come up with some evidence that says that's how a
`person of ordinary skill in the art would interpret this claim recitation.
`That's not what they've done, however.
`What they've done is present attorney argument alone to say
`"metallized" means metallized, and we're done. That's -- looking at one term
`in a claim, in a vacuum, and saying it has to mean what it says, no narrower,
`is not the right standard in Phillips, under the broadest reasonable
`interpretation standard, or anywhere else. We need to look to the
`specification, and, if necessary, we need to look to the prosecution history to
`figure out what that claim term means.
`Patent Owner could have put us on notice of what it meant. They
`could have drawn the surface on its figures. They chose not to. They could
`have put us on notice in the specification and told us how much of the
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`surface had to be covered. They did not, other than saying "at least part."
`That leaves us where we are today.
`It was within Patent Owner's ability to define their invention, to
`describe it, to put the -- to put us, the public, on notice of what we could and
`could not do, and for now, for them to come forward not based on dictionary
`definitions, not based on expert testimony, not based on anything other than
`its counsel's idea of what "metallized surface" means, to say it's clear that
`that has to be substantial coverage, and that's not evidence.
`Did you have any other questions on that topic, Your Honors?
`JUDGE DOUGAL: (Indicating no.)
`JUDGE MOORE: (Indicating no.)
`MR. EISENBERG: I wanted to move on to the major surface
`geometry issue starting on slide 26, but I will quickly go to slide 27. This is
`exactly the opposite issue than what we were dealing with in the prior issue
`about metallized surface. In metallized surface, we were given nothing in
`the specification, no evidence or information of how to interpret a term.
`Here, Patent Owner says, well, we do have evidence. The evidence is the
`figures. Under the figures, it must be the largest surface.
`Now, I would say that's not a proper way to construe claims. You
`don't import limitations from the figures into the claims. That's not how it's
`done. What you're looking for is some explanation in the specification of
`the invention, a definition, a disclaimer, something more. But at least here,
`there is some guidance.
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`What we have is the specification pointing to the fact that -- now
`I'm on slide 28 -- in the example shown, there are opposed major surfaces.
`There's no definition, no explanation of what that means. It's simply the
`same claim term repeated in the specification. Nowhere in the specification
`is the LED shape ever mentioned, described, no mention of how big, how
`small, how wide, how long. None of those characteristics are mentioned
`anywhere in the specification.
`Instead, again, what we have is Patent Owner's counsel coming
`forward and saying, well, I have read the specification, and in my opinion,
`it's the greatest surface in area. That's what it means. Now, I would argue
`that a major surface can't be the greatest, because the top and bottom are
`both major. They can't both be greatest.
`I would also argue that there's nothing in the specification or the
`claims that limit the invention to planar LEDs. There was no disclaimer to
`say we are disclaiming pointy LEDs, round LEDs, any other shape. So to
`say that there must necessarily be a top and bottom surface with greatest
`surface area, that necessarily implies a specific planar shape.
`There was an argument about waiver, about whether a patent --
`whether a Petitioner had to provide an express definition in the petition. I'd
`just like to briefly address that. It's very clear that in writing a petition, it
`can't be that we construe every term that could possibly be disputed,
`precisely for the reason that we don't know what every term that could be
`disputed is. I personally did not believe that this was a disputable term, and
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`moving on to slide 35, simply because the prior art shows exactly the same
`thing.
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`Looking at Rohm, the top and bottom surfaces, they're the biggest.
`It didn't seem to be necessary to dispute, to construe, to do anything when
`that feature is indisputably there in the claims. The only issue, as I see it, is
`whether this surface must be nearly entirely covered with metal or some
`similar, undefined characteristic, and that would be inconsistent with the
`specification and the function of LEDs.
`Moving on again to -- just briefly on slide 39, this is the Matsushita
`reference. Again, what we can see here is an LED, it's square, it is shorter
`than it is wide, its two major surfaces are the top and bottom, the two biggest
`surfaces, greatest surfaces, largest. However you want to define it, those are
`the surfaces. Slightly more of the top surface here is covered with metal.
`Whether that's substantial or insubstantial, that's something that, again, the
`patent gives us no guidance on, no information on how to define the
`borderline between this one is substantially covered with metal; that one has
`metal but it's insubstantially covered. If that vague language is applied
`under the broadest reasonable construction standard, it has to be applied
`broadly, especially when the specification says "at least part."
`There was also some discussion about, in the context of
`obviousness, whether the entire bottom surface should be covered. I don't
`think it's necessary to find that the entire surface should be covered, but what
`Dr. Pecht did say -- and this is unrebutted in the record -- is that the prior art
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`teaches providing a reflective surface on the bottom surface of an LED. I'm
`on slide 37.
`When you put a reflective surface on, it's to reflect the light.
`Clearly, he's metallizing the bottom surface of the LED substantially to
`provide the benefit that's disclosed in Kish. Is it possible that less than the
`entire surface could be covered? Yes, but this is not about anticipation.
`This is an issue of obviousness, and what Dr. Pecht said -- and that's
`undisputed -- is that it would have been obvious to metallize the bottom
`surface based on Kish.
`He said also it would have been obvious -- and now I'm on slide
`38 -- to metallize the bottom surface based on Slater, to provide a reflective
`surface. I don't have to prove that that's the only way it could have been
`done. I don't have to prove that it was necessarily to have been done that
`way. That is not my burden.
`Based on the preponderance of the evidence standard, what I have
`to prove is that it's more likely than not that a person of ordinary skill in the
`art would have reason to coat the bottom surface with metal. I have an
`expert that says, based on the prior art, there is reason. Patent Owner has
`conjecture from its counsel that there are alternatives that somebody could
`have done instead. That's not the same thing.
`The same analysis was done for the combination with Matsushita.
`Here, Edmond, the two different Edmond patents were cited for disclosures
`of bottom surface metallization, and, again, one of the reasons described
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`from Edmond '342 to metallize the bottom surface, and this was actually
`what Dr. Pecht said -- I'm citing on slide 42 -- Dr. Pecht said -- explains that
`"there are several advantages of using a metallized layer on the bottom
`surface of an LED as an electrode." That's Dr. Pecht, an expert. He has not
`had his testimony rebutted by an expert. None of the deposition testimony
`got him to disagree with his conclusion, that providing a metallized layer on
`the bottom surface would have been obvious.
`I'm not sure what else in the record there could be to defeat the
`obviousness of providing a metallized bottom layer, even if substantial
`coverage is required. The sole issue, I think, for Your Honors to decide is
`does it make sense in the context of Patent Owner's written description, the
`LED field, and litigation positions, is it necessary for the entire -- for
`substantially the entire top surface of an LED to be covered with metal to be
`metallized? And I propose to you that there are arguments made by Patent
`Owner, but there is no evidence provided by Patent Owner, and it's evidence
`that you should be looking for, not argument.
`JUDGE MEDLEY: You have 12 minutes left of your total time.
`MR. EISENBERG: There was one other issue -- of my total time?
`JUDGE MEDLEY: Total time.
`MR. EISENBERG: Okay.
`I will quickly go through the separate structures argument and then
`save the rest of my time.
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`The issue with separate structures -- and I'm on slide 4
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