Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`Paper 33
`Entered: June 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., and CREE, INC.,
`
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-003331
`Patent 7,256,486 B2
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Cree, Inc., which filed a Petition in IPR2018-01205, has been joined as a
`petitioner in this proceeding.
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`Patent 7,256,486 B2
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`I. INTRODUCTION
`A. Background
`Seoul Semiconductor Co., Ltd. and Seoul Semiconductor, Inc. filed a
`Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–3 (the
`“challenged claims”) of U.S. Patent 7,256,486 B2 (Ex. 1001, the “’486 patent”).
`We subsequently granted a request filed by Cree, Inc. to join this proceeding as a
`petitioner.2 IPR2018-01205, Paper 11. Document Security Systems, Inc. (“Patent
`Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of
`all challenged claims. Paper 9 (“Dec.”).
`Patent Owner filed a Patent Owner’s Response (Paper 17, “PO Resp.”),
`Petitioner filed a Reply (Paper 20, “Reply”), and Patent Owner filed a Patent
`Owner’s Sur-Reply (Paper 24, “Sur-Reply”). An oral hearing was held on January
`31, 2019, and a copy of the transcript was entered into the record. Paper 29
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of
`the claims on which we instituted trial. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Having reviewed the arguments of the parties and the supporting evidence, we
`determine that Petitioner has shown, by a preponderance of the evidence, that the
`challenged claims of the ’486 patent are unpatentable.
`
`
`2 Seoul Semiconductor Co., Ltd., Seoul Semiconductor, Inc., and Cree, Inc. are
`referred to collectively hereinafter as “Petitioner.” Everlight Electronics Co., Ltd.
`which had previously been joined as a petitioner (IPR2018-01225, Paper 14), has
`been terminated as a party. Paper 32.
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`B. Related Proceedings
`The parties indicate that there are a number of related court proceedings:
`Document Security Systems, Inc. v. Seoul Semiconductor Co., No. 8:17-cv-00981
`(C.D. Cal.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-04263
`(C.D. Cal.); Document Security Systems, Inc. v. Everlight Electronics Co., No.
`2:17-cv-04273 (C.D. Cal.); Document Security Systems, Inc. v. OSRAM GmbH,
`No. 2:17-cv-05184 (C.D. Cal.); Document Security Systems, Inc. v. Lite-On, Inc.,
`No. 2:17-cv-06050 (C.D. Cal.); and Document Security Systems, Inc. v. Nichia
`Corporation et al., No. 2:17-cv-08849 (C.D. Cal.). Pet. 2; Paper 4, 2.
`Patent Owner indicates that IPR2018-01166 (instituted on November 30,
`2018) and IPR2018-01220 (institution denied November 18, 2018) challenge(d)
`the ’486 patent. Paper 11, 2. Patent Owner indicates that the following additional
`pending inter partes reviews are related to the present inter partes review:
`IPR2018-00522, IPR2018-00965, IPR2018-00966, and IPR2018-01165. Id. at 2.
`C. The ’486 Patent
`The ’486 patent generally relates to a semiconductor packaging device.
`Ex. 1001, Abstract. The semiconductor packaging device can include a light
`emitting diode (LED). Id. at 5:20–22. A semiconductor device is illustrated in
`Figures 2A and 2B, reproduced below. Id. at 3:5–8.
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`Figure 2A shows a perspective view of a semiconductor device 200,
`including a semiconductor die/LED 250. Id. at 3:5–8, 6:5–7. Figure 2B is a side
`view of the semiconductor device 200. Id. at 3:5–8. A substrate 110, having major
`surfaces 112, 114, is shown having a mounting pad 130 and a bonding pad 132 on
`the top major surface 112, and connecting pads 140, 142 on the bottom major
`surface 114. Id. at 3:43–57, 4:64–66. Interconnecting elements 120, 122 pass
`through the substrate 110 and connect the mounting pad 130 with the connecting
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`pad 140, and the bonding pad 132 with the connecting pad 142. Id. at 3:58–67. A
`wire 254 connects the LED 250 with the bonding pad 132. Id. at 5:15–17.
`Encapsulant 252 is shown covering the top major surface 112 of the substrate,
`including the LED 250, wire 254, mounting pad 130, and bonding pad 132. Id. at
`5:12–15, Figures 2A–2B.
`The Specification also describes the LED 250 as including “anode and
`cathode electrodes (not shown) covering at least parts of its opposed major
`surfaces.” Id. at 5:8–10. The bottom electrode is further described as
`“metallization on the bottom major surface of semiconductor die 250.” Id. at 5:20–
`22.
`
`Of the contested claims, claim 1 is independent, claim 2 depends from claim
`1, and claim 3 depends from claim 2. Claims 1–3 are reproduced below:
`1. A semiconductor device, comprising:
`a substantially planar substrate having opposed major
`surfaces;
`an electrically conductive mounting pad located on one of
`the major surfaces of the substrate;
`a light emitting diode (LED) having a metallized bottom
`major surface that is mounted on the electrically conductive
`mounting pad, the metallized bottom major surface comprising
`one of an anode and a cathode of the LED;
`a first electrically conductive connecting pad located on
`the other of the major surfaces of the substrate; and
`a first electrically conductive interconnecting element
`extending through the substrate and electrically interconnecting
`the mounting pad and the first electrically conductive connecting
`pad.
`
`
`2. The semiconductor device of claim 1, further comprising:
`an electrically conductive bonding pad located on the one
`of the major surfaces of the substrate;
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`a bonding wire extending between a metallized top major
`surface of the LED and the electrically conductive bonding pad;
`a second electrically conductive connecting pad located on
`the other of the major surfaces of the substrate; and
`a second electrically conductive interconnecting element
`extending through the substrate and electrically interconnecting
`the bonding pad and the second connecting pad.
`
`3. The semiconductor device of claim 2 wherein the metallized
`top major surface comprises a first electrode of the LED and the
`metallized bottom major surface comprises a second electrode of
`the LED.
`
`
`
`II. ANALYSIS
`A. Obviousness under 35 U.S.C. § 103
`The question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level of
`ordinary skill in the art; and (4) objective evidence of nonobviousness.3 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). A patent claim can be obvious in light
`of a single prior art reference if it would have been obvious to modify
`that reference to arrive at the patented invention. See, e.g., Takeda Chem. Indus.,
`Ltd. v. Alphapharm Pty, Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007); SIBIA
`Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
`B. Level of Ordinary Skill
`Petitioner states that a person of ordinary skill “at the time of the [] invention
`would have had at least a B.S. in mechanical or electrical engineering or a related
`
`
`3 The parties do not direct us to any objective evidence of nonobviousness.
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`field, and two years’ experience designing LED packages.” Pet. 13 (citing
`Ex. 1003, Declaration of Petitioner’s proffered expert, Dr. Michael Pecht, (“Pecht
`Decl.”) ¶¶ 29–31). Petitioner contends that “a higher level of education or skill
`might make up for less experience, and vice-versa.” Id.
`Patent Owner does not contest or otherwise address Petitioner’s proposed
`level of ordinary skill. See generally, PO Resp.
`Having reviewed the argument and evidence, we adopt Petitioner’s
`definition above. We also find that Petitioner’s definition is consistent with the
`appropriate level of skill, as reflected in the cited references. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, claim terms in an
`unexpired patent are given their broadest reasonable construction in light of the
`specification of the patent. See 37 C.F.R. § 42.100(b) (2016); see also Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has
`statutory authority to construe claims according to 37 C.F.R. § 42.100(b)).4 Claim
`terms are given their ordinary and customary meaning as would be understood by a
`person of ordinary skill in the art at the time of the invention and in the context of
`
`
`4 The Office recently changed the claim construction standard used in inter partes
`review proceedings. 37 C.F.R. § 42.100(b) (2018). As stated in the Federal
`Register notice, however, the new rule applies only to petitions filed on or after
`November 13, 2018, and, therefore, does not impact this matter. See Changes to
`the Claim Construction Standard for Interpreting Claims in Trial Proceedings
`Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(final rule) (stating “[t]his rule is effective on November 13, 2018 and applies to all
`IPR, PGR and CBM petitions filed on or after the effective date”).
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`the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). We apply this standard to the claims of the ’486 patent.
`
`1. “metallized . . . surface”
`Petitioner proposes that we construe the term “metallized . . . surface,” as
`recited in claims 1–3, as meaning “a metal layer on at least a portion of the
`surface” or “a thin layer of metal on at least a portion of the surface.” Pet. 10
`(emphasis omitted). Claim 3 of the ’486 patent captures how the term “metallized
`. . . surface,” is used in the context of the claims: “wherein the metallized top major
`surface comprises a first electrode of the LED and the metallized bottom major
`surface comprises a second electrode of the LED.” Ex. 1001, 12:36–39 (emphasis
`added).
`Petitioner identifies that the ’486 patent Specification uses phrases like:
`“metallization on the bottom major surface of semiconductor die” in a number of
`locations. Pet. 9 (emphasis omitted) (quoting Ex. 1001, 5:21–22); see also id. at 8–
`9 (citing Ex. 1001, 1:19–23, 1:49–51, 5:10–12). These phrases are used both in the
`“Background” section and in the “Detailed Description” section of the ’486 patent
`Specification. Id. at 8–9. Petitioner also identifies that the ’486 patent
`Specification describes the metallization of the major surfaces as forming
`electrodes, such as “anode and cathode electrodes (not shown) [of an LED]
`covering at least parts of its opposed major surfaces.” Id. at 9 (quoting Ex. 1001,
`5:8–10; see also id. (citing 5:18–22). As indicated in the above quote, we also note
`that the ’486 patent Specification indicates that the electrodes and major surface
`metallization of the LEDs are not shown in the Figures. See e.g., Ex. 1001, 5:8–
`10.
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`In further support, Petitioner offers a number of dictionary definitions of the
`term “metallization” (Pet. at 10) including:
`A film pattern (single or multilayer) of conductive material deposited
`onto a substrate to interconnect electronic components, or the metal
`film on the bonding area of a substrate that becomes part of the bond
`and performs both electrical and mechanical functions.
`Ex. 1004 (Modern Dictionary of Electronics (7th ed. 1999)) 467;
`The most common and familiar use of metal films in semiconductor
`technology is for surface wiring. The materials, methods, and processes
`of “wiring” the components parts together is generally referred to as
`metallization or the metallization process.
`Ex. 1005 Microchip Fabrication (4th ed. 2000) 396;
`METALLIZATION: A deposited or plated thin metallic film used for
`its protective or electrical properties.
`Ex. 1006 (Plastic-Encapsulated Microelectronics (1995)) 459; and
`metallize . . . to coat, treat, or combine with a metal.
`Ex. 1007 (Merriam Webster’s Collegiate Dictionary (10th ed.)) 730.
`Patent Owner argues that Petitioner is writing out the term “major” from the
`proposed construction. PO Resp. 5. Patent Owner argues that the claims require a
`“metallized . . . major surface” and not just a metallized surface. Id. Patent Owner
`states that the “construction is wrong because it fails to consider that the claimed
`‘surface’ must be a ‘major surface,’ and is also wrong because it fails to consider
`that the ‘major surface’ itself must be metallized.” Id. at 9.
`In limiting the proposed claim construction to “metallized . . . surface,” we
`do not agree that Petitioner is attempting to omit the term “major” from the claims.
`This is evident in Petitioner’s identification of the “major surfaces” in the cited
`prior art and the discussion of how certain of the major surfaces are metallized.
`See, e.g., Pet. 14 (Rohm “includes a substantially planar substrate 12 (colored red)
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`with top and bottom major surfaces”); id. at 15 (Rohm’s “LED chip 30 has a
`‘bottom surface electrode’ on its bottom major surface”); see also Pet. 14–17, 20–
`26; Ex. 1003 ¶¶ 46–50, 53–55; Reply 13.
`Patent Owner’s primary concern is with Petitioner’s proposal that the metal
`need be on only “a portion of the surface,” such that the claims do not require a
`surface “substantially covered with metal.” PO Resp. 12. Patent Owner argues
`that “a metallization layer, arranged on only a small fraction of a major surface,
`does not constitute a metallized major surface.” Id. at 10. We note that Patent
`Owner does not contest or address the teachings of the ’486 patent Specification or
`the dictionary definitions provided as evidence by Petitioner. See generally, PO
`Resp. 8–12. Further, though Patent Owner mentions the language of the claims, no
`detailed analysis of the claims or the Specification is provided, either in support of
`Patent Owner’s construction or opposing Petitioner’s construction. See generally,
`id. Patent Owner provides no persuasive evidence in support of its position. See
`generally, id.
`Rather, Patent Owner focuses on Petitioner’s allegations concerning the
`teachings of Rohm. Id. at 10–11. However, Patent Owner has not shown how its
`arguments concerning why Rohm does not teach a metalized major surface support
`Patent Owner’s proposed claim construction. Further, it is unclear how Patent
`Owner’s disagreement with Petitioner’s positions concerning the teachings of
`Rohm show that Petitioner’s claim construction is incorrect. For example, Patent
`Owner summarizes one of Petitioner’s arguments as equating Rohm’s electrode
`30a that “covers a small portion of LED chip 30” with a contact pad and then states
`that the claims distinguish between a pad and a metalized surface. Id. Patent
`Owner does not explain how this is relevant to the claim construction at issue or
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`how the argument supports Patent Owner’s claim construction or discredits that of
`Petitioner.
`We also note that Patent Owner cites, without explanation, to the parties’
`First Amended Joint Claim Construction Statement (Ex. 2001) in the underlying
`litigation. Id. at 12. Petitioner notes that the joint claim construction is based, at
`least in part, on Patent Owner’s disclaimer in this proceeding. In other words, it is
`based on Patent Owner’s arguments we rejected from the Preliminary Response
`(see Dec. 6), that Patent Owner renewed in its Response, and that we rejected again
`above. Reply 6. For at least this reason, this citation by Patent Owner, without
`any explanation, is not persuasive evidence in support of its position. We further
`note that the underlying litigation is under a different claim construction standard.
`In view of the above, we construe the term “metallized . . . surface,” as
`meaning “a metal layer on at least a portion of the surface.”
`2. “the metallized top major surface comprises a first electrode
`. . . and the metallized bottom major surface comprises a second
`electrode”
`Petitioner also proposes a construction for the phrase “the metallized top
`major surface comprises a first electrode . . . and the metallized bottom major
`surface comprises a second electrode,” as recited in claim 3. Pet. 11–12. Patent
`Owner does not address the proposed claim construction other than to contest
`Petitioner’s claim constructions generally. See PO Resp. 8–9.
`We decline to provide an express construction for this term, or any other
`term in the ’486 patent, because we determine that no such construction is required
`for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`
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`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter
`partes review).
`D. Instituted Grounds
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 3, 19–51):5
`Reference[s]
`Claims challenged
`1–3
`
`Rohm, or Rohm and Kish
`
`Matsushita and Edmond
`
`1–3
`
`As further support, Petitioner offers the Declaration of Michael Pecht, Ph.D.
`Ex. 1003 (“Pecht Declaration”).
`E. Obviousness over Rohm alone, or in view of Kish – Claim 1
`Petitioner asserts that claim 1 would have been obvious over Rohm alone, or
`in view of Kish, citing record evidence. Pet. 19–27. Petitioner asserts that Rohm
`teaches a semiconductor light-emitting device as required by claim 1. Id. at 19–20
`(citing e.g., Ex. 1003 ¶ 52; Ex. 1008 ¶ 30). Petitioner provides color coded mark-
`ups of Rohm Figure 1 indicating the substrate 12, as well as other claimed features.
`Id. at 14–15, 20–22. Petitioner’s color coded mark-up of Rohm Figure 1 showing
`an LED package is reproduced below.
`
`
`5 Japanese Pat. Pub. 2003-17754, Jan. 17, 2003 (Ex. 1008) (“Rohm”); U.S.
`5,376,580, Dec. 27, 1994 (Ex. 1010) (“Kish”); Japanese Pat. Pub. 2001-352102,
`Dec. 21, 2001 (Ex. 1009) (“Matsushita”); U.S. Patent 5,523,589, June 4, 1996
`(Ex. 1011) (“Edmond”).
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`The above color coded mark-up of Rohm Figure 1 shows an LED package. Pet.
`14.
`
`Petitioner states that the semiconductor device, shown in the color coded
`mark-up of Rohm Figure 1, above, includes a substrate 12 in red, a mounting pad
`18 in green, a bonding pad 20 also in green, conductive pads 22, 24 in orange,
`interconnecting elements 26, 28 in purple, an LED chip 30 in blue, an electrode
`30a in violet on the top surface of the LED chip 30, and a wire 32 in yellow. Id. at
`14–15. We agree with and adopt Petitioner’s contentions regarding the undisputed
`limitations of claim 1. Pet. 14–15, 17–27; Ex. 1003 ¶¶ 45–57. Petitioner’s
`reliance on Kish and further aspects of Rohm are discussed below in reference to
`the disputed limitations.
`1. Metallized Bottom Major Surface
`Patent Owner argues that Rohm and Kish do not teach or suggest an LED
`with a “metallized bottom major surface” as required by claim 1. PO Resp. 12–17.
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`In the Petition, Petitioner argues that Rohm’s “LED chip 30 has a ‘bottom
`surface electrode’ on its bottom major surface.” Pet. 15; see also Ex. 1003 ¶ 55
`(Petitioner’s expert refers to “the metalized bottom major surface of the LED chip
`30 in Rohm”). Petitioner points to Rohm’s disclosure that the LED is “diebonded
`to the top surface of the die bonding electrode 18.” Pet. 22. (quoting Ex. 1008
`¶ 16). Petitioner further argues that this creates an electrical connection between
`the LED and the die bonding electrode 18. Id. Petitioner acknowledges that Rohm
`does not discuss cathodic or anodic electrodes but argues that “a person having
`ordinary skill in the art would have understood that each electrode must be one or
`the other.” Id. (citing Ex. 1003 ¶¶ 47–49, 55).
`Petitioner also acknowledges that “Rohm does not expressly state that the
`bottom surface electrode of the LED 30 comprises a metallized surface.” Id. at 23.
`However, Petitioner states that this “would have been considered the most natural
`and obvious implementation of an LED’s bottom surface electrode.” Id. (citing
`Ex. 1003 ¶¶ 47–49, 55). In addition, Petitioner relies on Kish for this feature. Id.
`at 23.
`Petitioner states that Kish teaches ‘“metallized electrodes for applying
`voltages to LEDs.’” Id. at 24 (citing Ex. 1010 5:19–21). Petitioner also includes
`Kish Figure 14, reproduced below. Id.
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`Petitioner states that the LED in Kish Figure 14 depicts electrodes that are
`“metal[l]ized top and bottom surfaces” 142, 144 and “describes the formation of
`upper and lower metal electrodes on an LED as ‘standard.’” Pet. 24. (citing e.g.,
`Ex. 1010 7:48–55, Fig. 14).
`Petitioner further argues that “[b]y the time of the purported invention, the
`concept of metal layer formation was well known and predictable” as evidenced by
`Kish. Id. (citing Ex. 1003 ¶¶ 46–48, 55). Petitioner argues that implementing
`metal electrodes in Rohm using the teachings of Kish would have been obvious as
`it is merely “the adoption of [a] standard technique[].” Id. at 25 (citing Ex. 1003
`¶ 48).
`In contesting the assertions of Petitioner, Patent Owner first faults Petitioner
`for not pointing to a depiction in Rohm’s figures showing an LED having a
`metallized bottom surface. PO Resp. 12–13. We note that there is no requirement
`that the prior art show all of the features in the figures.6 Further, Petitioner does
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`6 The ’486 patent similarly does not illustrate any of the LED electrodes. See e.g.,
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`not assert that the figures of Rohm illustrate a metallized bottom major surface of
`an LED, or that this feature is otherwise explicitly disclosed by Rohm. Pet. 23.
`Rather, Petitioner argues that metallization on the bottom major surface of Rohm’s
`LED “would have been considered the most natural and obvious implementation of
`an LED’s bottom surface electrode,” citing the Pecht Declaration. Id. (citing
`Ex. 1003 ¶¶ 47–49, 55). Petitioner also cites Kish in support of this proposition.
`Id. at 25. Patent Owner’s arguments do not address the actual teachings of Rohm,
`nor does Patent Owner provide evidence to refute Dr. Pecht’s testimony.
`Patent Owner then argues that, “Petitioner[] ha[s] failed to show that Rohm
`discloses or suggests a metallized bottom major surface for the simple reason that
`Petitioners have not addressed the geometry of the bottom surface of Rohm in any
`meaningful way.” PO Resp. 13. Though we initially determined that “Petitioner
`does not address the geometry of the bottom surface of Rohm’s LED,” we also
`determined that
`the geometries of the LED in Rohm Figures 1–3 and the LED in
`Matsushita Figures 1–2, appear to be essentially the same as that of the
`LED shown in the ’486 patent Figures 2A–D. Thus, it is unclear from
`Patent Owner’s argument how the claims of the ’486 patent distinguish
`over the prior art.
`Dec. 10–11. Upon further review, we note that though Petitioner does not initially
`describe why the bottom surface of Rohm’s LED is a major surface, Petitioner does
`assert that it is one. See e.g., Pet. 15; Ex. 1003 ¶ 55. Further, in response,
`Petitioner explains that the bottom surface of Rohm’s LED is a major surface
`because “the figures show that the surface area of the top and bottom surfaces of
`
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`Ex. 1001, 5:8–10 (“anode and cathode electrodes (not shown) covering at least
`parts of [the LED’s] opposed major surfaces”).
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`the LED (30) are greater than the surface area of its sides. In other words, for both
`structures, the side surfaces are wider than they are tall.” Reply 13.
`Patent Owner does not contest that the bottom surface of Rohm’s LED is a
`major surface, just that Petitioner does not sufficiently discuss the issue in the
`Petition. See PO Resp. 13. In fact, Petitioner’s position is consistent with Patent
`Owner’s characterizations in the Preliminary Response of the major surfaces in the
`’486 patent. See Prelim. Resp. 5 (“The ’486 patent is consistent in its usage of
`‘major surface’ to refer to a surface that is greater in size than other surfaces of the
`element being described.”). We agree with Petitioner that the top and bottom
`surfaces of Rohm’s LED are major surfaces and that Petitioner identified these
`major surfaces in the Petition.
`Patent Owner goes on to address Kish Figures 7 and 12 arguing that the
`electrodes illustrated in these figures “occupy a small portion of the LED
`structure,” and “clearly do not disclose a “major surface.” PO Resp. 13. Patent
`Owner also argues that the electrodes in Kish Figures 14 and 15 also do not clearly
`teach “an electrode structure” that is a “major surface.” Id. at 15 (citing Ex. 2003
`(the Pecht deposition)). As discussed above, however, the Petition relies on Rohm
`for teaching top and bottom major surfaces of the LED, rather than Kish.
`Similarly, Patent Owner argues that “Petitioners have not addressed why a
`POSITA [(person of ordinary skill in the art)] would have been motivated to
`implement Kish’s figure 14 structure or figure 15 structure in Rohm’s device.” Id.
`Patent Owner does not identify where the Petition lays out a theory dependent on
`the bodily incorporation of Kish’s structure into Rohm’s device and we find none.
`The Petition primarily relies on Kish for teaching that the electrodes are metal
`(Pet. 23), and that it would be obvious to implement “a bottom surface electrode
`[in Rohm’s device] using metal” based on the teachings of Kish (id. at 25). Thus,
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`Patent Owner’s argument is not directed to the Petitioner’s positions laid out in the
`Petition. See also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“To justify
`combining reference teachings in support of a rejection it is not necessary that a
`device shown in one reference can be physically inserted into the device shown in
`the other.”).
`Patent Owner also argues that “Petitioner[] ha[s] failed to establish that a
`metal electrode discloses a ‘metallized surface’” in its combination of Rohm and
`Kish. PO Resp. 14. Patent Owner argues that Petitioner is instead relying on
`inherency. Id. In our initial decision addressing this argument from the
`Preliminary Response, we stated that “[t]hough Patent Owner makes this assertion,
`Patent Owner does not adequately explain why the Petition only relies on
`inherency in view of the arguments and evidence cited in the Petition.7” Dec. 12
`(footnote in original). Patent Owner repeats this argument word for word in the
`Patent Owner Response. Compare Prelim. Resp. 13–14, with PO Resp. 14. Patent
`Owner makes no attempt to address our concern that the argument is not
`adequately developed. Patent Owner also does not address any of the teachings
`identified in the Petition as to why a metal electrode discloses a “metallized
`
`7 The Petition cites Kish as teaching the formation of metal electrodes on the LED.
`Pet. 24. In Figure 14, cited by the Petition, an electrode 144 is illustrated as the
`bottom surface of the LED. Id. The Petition also cites to Kish’s teaching that the
`electrodes can be formed from a gold-tin alloy or a gold-germanium alloy. Id.
`(citing Ex. 1010 7:51–55). The Petition also cites to the Pecht Declaration for
`support that the electrode of Kish is a metallized bottom surface. Id. (citing
`Ex. 1003 ¶ 48, which includes the assertion “Indeed, like the ’486 patent, Kish
`depicts an LED with metal[l]ized layer electrodes at its top (142) and bottom (144)
`surfaces.”). The Petition also cites the Background section of the ’486 patent for
`support that it was known in the art that a gold-tin alloy electrode is a metalized
`surface. Id. at 24–25 (quoting Ex. 1001, 149–52 “semiconductor die having a
`substrate surface metallization layer of a gold-tin alloy”).
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`surface,” such as those we included in the original footnote, reproduced herein.
`Thus, we are not persuaded by Patent Owner’s contentions.
`Patent Owner argues that “Petitioners’ reliance on Slater [U.S. Patent
`6,791,119 B2, Sept. 14, 2004, Ex. 1012] is also misplaced.” PO Resp. 16.
`Petitioner relies on Slater as additional evidence to support its position that it
`would have been obvious to implement metal electrodes in Rohm. Pet. 25–26.
`Petitioner states that Slater teaches “that metal electrodes can be used to provide
`optical improvements to an LED.” Id. at 25 (citing Ex. 1012, 18:33–67).
`Petitioner states that “using a metal having a reflective surface to redirect light that
`would otherwise exit toward the mounting pad would have provided the known
`advantage that more of the generated light would escape from the device into the
`region to be illuminated.” Id. at 25–26 (citing Ex. 1003 ¶ 49).
`Patent Owner argues that “Rohm already discloses a die bonding electrode
`18 [below the LED], having a ‘slightly larger shape’ than the LED chip 3” (PO
`Resp. 16 (citing Rohm ¶ 28), which Dr. Pecht confirmed “could be reflective” (id.
`at 16–17 (citing Ex. 2003, 25:20–26:15)). Thus, Patent Owner argues “a POSITA
`would not have been motivated to make this suggested modification” because
`“[t]he light emitted from the LED chip’s active region can reflect off this existing
`surface.” Id. at 17 (citing Rohm ¶ 16).
`Petitioner notes “that a ‘conductive adhesive’ is used to bond [Rohm’s] LED
`to the die bonding electrode.” Reply 17 (citing Ex. 1008 ¶ 18). Petitioner argues
`that Patent Owner’s argument fails because it does not “address how the potential
`(though undescribed) reflectivity of Rohm’s die bonding electrode is relevant
`despite an intervening layer of conductive adhesive.” Id. at 18.
`Patent Owner’s argument does not overcome Petitioner’s evidence that
`metal electrodes are “standard” in the industry. See Pet. 24–25; Ex. 1010, 7:48–55,
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`Fig. 14; Ex. 1003 ¶¶ 46–48, 55. Further, though there may be multiple metal
`components that offer reflectivity, we determine that that does not negate the
`potential benefit of the reflectivity of a bottom metal electrode.
`In view of the foregoing, we find Petitioner has made a persuasive showing
`that Rohm alone, or in view of Kish, suggests a metallized bottom major surface as
`required by claim 1. We further find that Petitioner has articulated reasoning
`having an adequate rational underpinning to support the legal conclusion of
`obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`2. Three Elements – Mounting Pad, Connecting Pad,
`Interconnecting Element
`Patent Owner argues that as required by claim 1, Rohm does not teach:
`an electrically conductive mounting pad located on one of the major
`surfaces of the substrate; . . .
`a first electrically conductive connecting pad located on the other of
`the majo