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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SEOUL SEMICONDUCTOR CO., LTD., AND
`SEOUL SEMICONDUCTOR, INC.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2018-00333
`Patent 7,256,486
`____________
`
`
`
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`PATENT OWNER’S RESPONSE
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`
`
`TABLE OF CONTENTS
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`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PETITIONERS FAIL TO ACCURATELY IDENTIFY THE SCOPE OF
`THE CLAIMS BEING CHALLENGED ........................................................ 7
`
`A. Disputed Claims .................................................................................... 7
`
`B.
`
`Petitioners’ Proposed Claim Constructions Are Wrong ....................... 8
`
`III. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 12
`
`A. Ground 1 Fails ..................................................................................... 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Petitioners’ Ground 1 Challenge Against Claim 1 Fails Because
`Rohm Does Not Disclose or Suggest a Light Emitting Diode
`Having a Metallized Bottom Major Surface, and Kish Does Not
`Remedy Rohm’s Shortcomings ..................................................... 12
`
`Rohm Does Not Disclose the Claimed “Electrically Conductive
`Mounting Pad,” “First Electrically Conductive Connecting Pad,”
`and “First Electrically Conductive Interconnecting Element”
`Recited in Claim 1 .......................................................................... 17
`
`Petitioners’ Ground 1 Challenge Against Claim 2 Fails Because
`Rohm Does Not Disclose or Suggest a Light Emitting Diode
`Having a Metallized Top Major Surface, and Kish Does Not
`Remedy Rohm’s Shortcomings ..................................................... 21
`
`Rohm Does Not Disclose the Claimed “Electrically Conductive
`Bonding Pad,” “Second Electrically Conductive Connecting Pad,”
`and “Second Electrically Conductive Interconnecting Element”
`Recited in Claim 2 .......................................................................... 25
`
`Petitioners’ Ground 1 Challenge Against Dependent Claim 3 Also
`Fails for the Reasons Explained Above For Claims 1 and 2 ......... 28
`
`B.
`
`Ground 2 Fails ..................................................................................... 29
`
`- i -
`
`
`
`1.
`
`Petitioners’ Ground 2 Challenge Against Claim 1 Fails Because
`Matsushita Does Not Disclose or Suggest a Light Emitting Diode
`Having a Metallized Bottom Major Surface, and Edmond ’589
`Does Not Remedy Matsushita’s Shortcomings ............................. 29
`
`2. Matsushita Does Not Disclose the Claimed “Electrically
`Conductive Mounting Pad,” “First Electrically Conductive
`Connecting Pad,” and “First Electrically Conductive
`Interconnecting Element” Recited in Claim 1 ............................... 31
`
`3.
`
`Petitioners’ Ground 2 Challenge Against Claim 2 Fails Because
`Matsushita Does Not Disclose or Suggest a Light Emitting Diode
`Having a Metallized Top Major Surface, and Edmond ’589 Does
`Not Remedy Matsushita’s Shortcomings ....................................... 34
`
`4. Matsushita Does Not Disclose the Claimed “Electrically
`Conductive Bonding Pad,” “Second Electrically Conductive
`Connecting Pad,” and “Second Electrically Conductive
`Interconnecting Element” Recited in Claim 2 ............................... 37
`
`5.
`
`Petitioners’ Ground 2 Challenge Against Dependent Claim 3 Also
`Fails for the Reasons Explained Above For Claims 1 and 2 ......... 39
`
`IV. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 40
`
`V.
`
`CONCLUSION .............................................................................................. 41
`
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`- ii -
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`
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`TABLE OF AUTHORITIES
`
`Cases
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) .................................................. 20, 26, 33, 38
`
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) ..................................................................... 20
`
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ....................................................................... 14
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ......................................................................... 14
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003 (PTAB Oct. 25, 2012) (Paper 8) ............................... 22, 36
`
`MEHL/Biophile Int’l Corp. v. Milgraum,
`192 F.3d 1362 (Fed. Cir. 1999) ..................................................................... 14
`
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`138 S. Ct. 1365 (2018) ................................................................................... 40
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ....................................................................... 16
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ................................................................ 20, 28, 34, 39
`
`Statutes
`
`35 U.S.C. § 154(a)(2) ................................................................................................. 8
`
`35 U.S.C. § 282(a) ................................................................................................... 41
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`
`37 C.F.R. § 42.104(b)(3)-(4) ...................................................................................... 9
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`- iii -
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`
`
`Other Authorities
`
`Other Authorities
`
`M.P.E.P. § 2112 (IV) ............................................................................................... 14
`M.P.E.P. § 2112 (IV) ............................................................................................... 14
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`
`
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`- iv -
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`-iv-
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`PATENT OWNER’S LIST OF EXHIBITS
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`
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`Exhibit Number
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`Exhibit Description
`
`2001
`
`2002
`
`2003
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`First Amended Joint Claim Construction Statement
`
`Reserved
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`Deposition Transcript of Michael Pecht, Ph.D.
`
`2004-2099
`
`Reserved
`
`2100-2103
`
`Expunged
`
`2104
`
`2105
`
`Reserved
`
`Expunged
`
`2106-2107
`
`Reserved
`
`2108
`
`Expunged
`
`
`
`
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`- v -
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`
`
`IPR2018-00333 Patent Owner’s Response
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`Pursuant to 37 C.F.R. § 42.120, Patent Owner Document Security Systems,
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`Inc. (“DSS” or “Patent Owner”) files this Response, setting forth reasons why the
`
`Board should determine that claims 1-3 of U.S. Patent No. 7,256,486 (the “’486
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`patent”) are not unpatentable, contrary to the Petition for inter partes review
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`(“IPR”) filed by Seoul Semiconductor Co., Ltd., and Seoul Semiconductor, Inc.
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`(collectively, “Petitioners”). This Response is also accompanied by the deposition
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`transcript of Petitioners’ technical declarant, Michael Pecht, Ph.D. (Ex. 2003).
`
`I.
`
`INTRODUCTION
`
`The ’486 patent, entitled “Packaging Device for Semiconductor Die,
`
`Semiconductor Device Incorporating the Same and Method of Making the Same,”
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`describes an exemplary semiconductor device having a semiconductor die arranged
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`on a packaging device. The packaging device of this exemplary semiconductor
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`device includes a substrate having opposed major surfaces and interconnecting
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`elements in two separate through-holes of the substrate. A first interconnecting
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`element connects a mounting pad arranged on a first major surface of the substrate
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`with a connecting pad arranged on the other major surface (the second major
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`surface) of the substrate. The second interconnecting element connects a bonding
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`pad arranged on the first major surface of the substrate with another connecting
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`pad arranged on the second major surface of the substrate. A semiconductor die is
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`arranged on the packaging device, and more specifically on the mounting pad. In
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`-1-
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`IPR2018-00333 Patent Owner’s Response
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`an exemplary embodiment and though not required in every claim of the ’486
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`patent, a bonding wire can extend between a metallized upper surface of the
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`semiconductor die and the bonding pad on the substrate’s first major surface. The
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`semiconductor die, mounting pad, and bonding pad are encapsulated with a
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`transparent encapsulant to allow emission of the light generated by the
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`semiconductor die.
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`Illustrations in the ’486 patent of such an exemplary semiconductor device
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`are shown in the first exemplary embodiment of FIGS. 2A and 2B, where
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`semiconductor device 200 includes packaging device 100, semiconductor die 250,
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`bonding wire 254, and encapsulant 252. Packaging device 100 of this exemplary
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`embodiment includes mounting pad 130, bonding pad 132, interconnecting
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`elements 120 and 122 (arranged in through-holes 116 and 118), and connecting
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`pads 140 and 142. The isometric view from FIG. 2A of this exemplary
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`semiconductor device 200 and the side view from FIG. 2B are reproduced below:
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`-2-
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`IPR2018-00333 Patent Owner’s Response
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`
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`
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`Turning to the challenges in this proceeding, Petitioners’ challenges against
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`the ’486 patent fail because they fail to fully and accurately construe and apply the
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`“major surface” term, which is described throughout the ’486 patent’s detailed
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`description and appears repeatedly throughout the challenged claims. In the
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`exemplary embodiment of FIG. 2B, the substrate’s first major surface is referred to
`
`as element 112, and the substrate’s second major surface is referred to as element
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`-3-
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`IPR2018-00333 Patent Owner’s Response
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`114. While not labeled, semiconductor die 250 also includes “opposed major
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`surfaces” on the top and bottom. ’486 patent, 5:9-10. In this exemplary
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`embodiment of FIG. 2A and FIG. 2B, the “[s]emiconductor die 250 is mounted on
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`packaging device 100 with the metallization on its bottom major surface attached
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`to mounting pad 130.” ’486 patent, 5:10-12. The “top major surface of
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`semiconductor die 250” includes a “bonding pad” for attaching bonding wire 254.
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`’486 patent, 5:15-17.
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`These major surfaces of the substrate are emphasized in the annotated
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`versions of FIG. 2B below. In the first annotated version of FIG. 2B, the
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`substrate’s first major surface 112 is annotated in red, and the substrate’s second
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`major surface 114 is annotated in purple:
`
`In the second annotated version of FIG. 2B below, the semiconductor die’s
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`top major surface is annotated in red, and the semiconductor die’s bottom major
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`
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`surface is annotated in purple:
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`
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`-4-
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`IPR2018-00333 Patent Owner’s Response
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`
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`The ’486 patent is consistent in its usage of “major surface” to refer to a
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`surface that is greater in size than other surfaces of the element being described,
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`whether that element is the substrate or the semiconductor device. Indeed, when
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`the ’486 patent identifies aspects of these major surfaces, it clearly explains certain
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`instances where the major surface characteristics may vary. For example, the ’486
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`patent explains that the “semiconductor die 250 [of the first exemplary
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`embodiment] embodies a light-emitting diode and has anode and cathode
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`electrodes (not shown) covering at least parts of its opposed major surfaces.”
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`’486 patent, 5:7-10. But the ’486 patent never refers to a major surface as a small
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`portion of any element’s surface.
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`Petitioners’ challenges against the ’486 patent fail to interpret the claims
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`consistent with this disclosure, and even go so far as to write out the “major” term
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`from their proposed constructions. Specifically, Petitioners propose an incorrect
`
`construction of “metallized … surface,” and fail to consider that the “metallized …
`
`surface” recited in the claims is actually a “metallized … major surface.” Pet., 8-
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`-5-
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`IPR2018-00333 Patent Owner’s Response
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`10. Nowhere do Petitioners define or explain how the term “major” would be
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`understood to a person of ordinary skill in the art (“POSITA”).
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`Properly construed, the claims are neither disclosed nor suggested by the
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`relied-upon art in the Petition. The primary references, Rohm1 and Matsushita, 2
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`used in Grounds 1 and 2, respectively, do not disclose (either expressly or
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`inherently) a light emitting diode having either a “metallized bottom major
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`surface” or a “metallized top major surface” as required in claims 1 and 2 of the
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`’486 patent. Petitioners attempt to get around this shortcoming in their
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`obviousness challenges by treating the claims as if they do not recite the term,
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`“major surface.”
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`Secondary references Kish3 and Edmond ’5894 fail to remedy the
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`shortcomings of the primary references in Grounds 1 and 2. Neither Kish nor
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`1 Ex. 1008, Japanese Patent Application Publication No. 2003-17754, English
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`translation of Japanese Patent Application Publication No. 2003-17754 and
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`Translator Declaration (“Rohm”).
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`2 Ex. 1009, Japanese Patent Application Publication No. 2001-352102 English
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`translation of Japanese Patent Application Publication No. 2001-352102 and
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`Translator Declaration (“Matsushita”).
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`3 Ex. 1010, U.S. Patent No. 5,376,580 (“Kish”).
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`4 Ex. 1011, U.S. Patent No. 5,523,589 (“Edmond ’589”).
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`-6-
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`
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`IPR2018-00333 Patent Owner’s Response
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`Edmond ’589 shows or describes a view of an LED that would permit a conclusion
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`that any metallization of the LED corresponds to a “metallized top major surface”
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`or a “metallized bottom major surface” as claimed. Petitioners also fail to set forth
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`a legitimate reason why a person of ordinary skill in the art (“POSITA”) would
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`have combined or modified the asserted references in a manner that would have
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`disclosed all claimed features as those features are arranged in the ’486 patent
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`claims. As result, each challenged claim must survive.
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`Each of these defects, and other defects in the Petition, are addressed below.
`
`II.
`
`PETITIONERS FAIL TO ACCURATELY IDENTIFY THE SCOPE
`OF THE CLAIMS BEING CHALLENGED
`A. Disputed Claims
`Elements of an exemplary system are claimed in the ’486 patent, of which
`
`claims 1-3 are at issue in this IPR proceeding. In full, challenged claims 1-3 of the
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`’486 patent recite (with the highlighting of the elements to be addressed 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;
`
`-7-
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`IPR2018-00333 Patent Owner’s Response
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`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;
`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.
`’486 patent, 12:6-39.
`
`
`Petitioners’ Proposed Claim Constructions Are Wrong
`
`B.
`The ’486 patent was filed in the United States on June 27, 2003, and issued
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`on August 14, 2007. Accordingly, the ’486 patent is not expected to expire prior to
`
`any Final Written Decision in this IPR. See 35 U.S.C. § 154(a)(2); 37 C.F.R. §
`
`-8-
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`IPR2018-00333 Patent Owner’s Response
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`42.100(b). Petitioners state that the Board applies the “broadest reasonable
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`construction in light of the specification”5 to the ’486 patent. However,
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`Petitioners’ proposed constructions for the challenged claims deviate unreasonably
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`from the BRI standard, and this flaw is fatal to the Petition under 37 C.F.R. §
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`42.104(b)(3)-(4) (the petition must identify “[h]ow the challenged claim is to be
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`construed” and “[h]ow the [correctly] construed claim is unpatentable.”).
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`Petitioners first propose to construe “metallized … surface” without noting
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`that the claimed “metallized” surfaces recited in the claims are uniformly “major
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`surfaces.” Petitioners completely write “major” out of the claims, as confirmed by
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`their conclusion presented on page 10 of the Petition, where they write:
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`Consistent with the use of the term metallized surface in
`
`the specification, therefore, Petitioners assert that the
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`broadest reasonable construction is a metal layer on at
`
`least a portion of the surface.
`
`Pet., 10 (emphasis in original).
`
`
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`This 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. These features must be read in
`
`5 This standard is commonly referred to as the broadest reasonable interpretation
`
`standard, or “BRI.”
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`-9-
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`IPR2018-00333 Patent Owner’s Response
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`concert. In particular, Petitioners fail to consider that a metallization layer,
`
`arranged on only a small fraction of a major surface, does not constitute a
`
`metallized major surface, as shown in the following example pulled from the
`
`Rohm reference:
`
`Rohm FIG. 1
`
`Rohm FIG. 3
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`
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`Petitioners point to Rohm’s LED chip 30 having electrode 30a in their
`
`analysis of the “metallized top major surface of the LED” of claim 2, and include
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`the following annotation:
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`-10-
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`IPR2018-00333 Patent Owner’s Response
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`
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`Pet., 29. In the accompanying analysis, Petitioners allege that it would have been
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`obvious to select a metal for forming electrode 30a (colored violet). Pet., 29-30.
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`But Petitioners offer no explanation why electrode 30a is to be interpreted as a
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`“major surface” of LED chip 30 (colored blue). Further, there is no reason that a
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`person of ordinary skill in the art would have referred to the top major surface of
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`Rohm’s LED chip 30 as “metallized” simply because there is (in Petitioners’ own
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`words) “an electrode covering a small portion of the top surface of an LED.” Pet.,
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`29 (emphasis added).
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`By Petitioners’ own words, the electrode 30a in Rohm covers a small portion
`
`of LED chip 30, and is therefore indistinguishable from a contact pad. But the
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`claims of the ’486 patent also distinguish between a pad located on a major
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`surface, i.e., of the substrate, and a “metallized … major surface” of an LED.
`
`For a metal electrode to constitute a “metallized top major surface” of an
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`LED as recited in the claims, it must be metallized and it must constitute a top
`
`-11-
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`IPR2018-00333 Patent Owner’s Response
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`major surface of the claimed LED. Petitioners’ construction—a major surface
`
`having metal on at least a portion thereof—fails to account for the claim language
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`requiring that the surface must be a “major” surface, i.e., the greatest surface in
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`area, and this major surface must be metallized. Petitioners’ constructions and
`
`analyses of the asserted art improperly write these features out of the claims and
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`cannot be correct. The correct construction of “metallized … major surface” is “a
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`major surface (as defined above) substantially covered with metal.” See Ex. 2001,
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`12-13.
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`III. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`Petitioners have failed to establish that each of the challenged ’486 patent
`
`claims are unpatentable over the asserted art.
`
`A. Ground 1 Fails
`Claims 1-3 are challenged in Ground 1 based on Rohm alone, or in view of
`
`Kish. As explained below, Petitioners’ challenge fails.
`
`1.
`
`Petitioners’ Ground 1 Challenge Against Claim 1 Fails Because
`Rohm Does Not Disclose or Suggest a Light Emitting Diode
`Having a Metallized Bottom Major Surface, and Kish Does Not
`Remedy Rohm’s Shortcomings
`
`Claim 1 recites, in relevant part, “a light emitting diode (LED) having a
`
`metallized bottom major surface that is mounted on the electrically conductive
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`mounting pad.” (emphasis added). However, in their reliance on Rohm,
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`Petitioners cite to no depiction in Rohm showing a “metallized bottom major
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`-12-
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`IPR2018-00333 Patent Owner’s Response
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`surface.” In fact, Petitioners admit that “[t]he ‘bottom surface electrode’ of the
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`LED 30 is not shown in figure 1” of Rohm. Pet., 22. Accordingly, Petitioners
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`have failed to show that Rohm discloses or suggests a metallized bottom major
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`surface for the simple reason that Petitioners have not addressed the geometry of
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`the bottom surface of Rohm in any meaningful way.
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`Similarly, Petitioners’ attempt to show “the obviousness of implementing
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`the bottom electrode of Rohm using metal” based on Kish (Pet., 23-26) fails, at
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`minimum, to address the geometry of the bottom surface of Kish’s LED. In
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`particular, Petitioners look to Kish’s figures 7, 12, 14, and 15, for disclosure of a
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`“metallized electrodes” in their obviousness analysis. Pet., 24. But these figures
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`of Kish are described as “side” views. Kish, 5:63-6:9. There is no basis to
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`conclude from these incomplete side views that any electrodes of Kish constitute a
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`“major surface.” Indeed, Kish’s figure 7 (shown below, left) expressly illustrates
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`two separate electrodes 46 fabricated using “standard LED techniques” that occupy
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`a small portion of the LED structure. Kish, 7:48-49. These electrodes clearly do
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`not disclose a “major surface” for the same reasons discussed above in Section II.B
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`with respect to Rohm’s electrode 30a. Figure 12 of Kish (shown below, right)
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`includes a comparable structure with two separate electrodes 76 that occupy a
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`small portion of the LED structure.
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`-13-
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`IPR2018-00333 Patent Owner’s Response
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`
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`As a further defect in their argument on the alleged obviousness of
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`implementing “the electrode of Rohm using a metal” based on Kish (Pet., 23; see
`
`also Pet., 23-26), Petitioners have failed to establish that a metal electrode
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`discloses a “metallized surface.” By omitting any analysis of this topic, in essence
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`Petitioners treat a metal electrode as inherently disclosing a “metallized surface.”
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`But for a theory of inherency to succeed, it is not enough that the missing
`
`disclosure could be present. Rather, the missing disclosure must necessarily be
`
`present in the cited reference. “The fact that a certain result or characteristic may
`
`occur or be present in the prior art is not sufficient to establish the inherency of that
`
`result or characteristic.” M.P.E.P. § 2112 (IV) quoting In re Rijckaert, 9 F.3d
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`1531, 1534 (Fed. Cir. 1993); see also MEHL/Biophile Int’l Corp. v. Milgraum, 192
`
`F.3d 1362, 1365 (Fed. Cir. 1999). Inherency may not be established by
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`probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981).
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`Here, Petitioners have not set forth such a theory of inherency to justify their
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`characterization of a metal electrode as a “metallized surface.”
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`-14-
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`IPR2018-00333 Patent Owner’s Response
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`Additionally, Petitioners’ obviousness argument of “implementing the
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`bottom electrode of Rohm using metal” based on Kish cannot succeed because it
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`only attempts to address the “metallized” feature of claim 1 missing from Rohm,
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`and fails to consider why a POSITA would have modified Rohm to implement a
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`metallized bottom major surface. As noted above, at least figures 7 and 12 of
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`Kish clearly implement an electrode structure that does not constitute a “major
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`surface,” as required by claim 1. Regarding Kish’s figures 14 and 15, Dr. Pecht’s
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`deposition testimony conceded that a side view of Kish’s figures 14 and 15 does
`
`not provide a full picture of Kish’s electrode arrangement. Speaking to figure 14’s
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`electrode 144, Dr. Pecht admitted that it is possible that Kish’s electrode 144 is
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`formed as a strip, similar to the electrodes of figures 7 and 12, rather than as a full-
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`surface electrode. Ex. 2003, 50:19-51:10; 66:14-19; 69:2-11. The same would be
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`true for the unlabeled bottom structure shown in Kish’s figure 15. Accordingly,
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`Petitioners have failed to show that claimed “metalized bottom major surface” is
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`disclosed, suggested, or obvious in view of Kish.
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`Moreover, Petitioners have not addressed why a POSITA would have been
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`motivated to implement Kish’s figure 14 structure or figure 15 structure in Rohm’s
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`device. Dr. Pecht confirmed that a bottom-emitting LED chip may use electrodes
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`that occupy less than the entire LED chip’s bottom surface. Ex. 2003, 58:12-59:8.
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`This is so the bottom electrode does not impede the ability of light to exit the LED
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`-15-
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`IPR2018-00333 Patent Owner’s Response
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`chip. Ex. 2003, 61:15-62:7. He also confirmed that Kish’s use of a transparent
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`substrate 42 in the light emitting diode “might be because they want to have light
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`shine out through that bottom” surface. Ex. 2003, 58:12-21. Thus, Kish would not
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`have taught to use a full-surface metallized electrode on the lower surface of
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`Rohm. Ex. 2003, 69:22-70:4. As Dr. Pecht stated clearly at deposition, “the
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`purpose is for the light to in effect leave the package.” Ex. 2003, 13:1-2. Further,
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`even if a POSITA could have implemented Kish’s figure 14 or 15 structures, this is
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`not enough for obviousness. As the Federal Circuit has held, just because a
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`POSITA could have combined two references does not mean that a POSITA
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`would have combined them. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d
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`987, 993–94 (Fed. Cir. 2017).
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`Petitioners’ reliance on Slater6 is also misplaced in Ground 1. Petitioners
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`argue that “using a metal having a reflective surface to redirect light that would
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`otherwise exit toward the mounting pad would have provided the known advantage
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`that more of the generated light would escape from the device into the region to be
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`illuminated.” Pet., 26 (citing Ex. 1003, ¶49). But Rohm already discloses a die
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`bonding electrode 18, having a “slightly larger shape” than the LED chip 30.
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`Rohm, ¶28. Further, Dr. Pecht confirmed that a metal used to form die bonding
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`6 Ex. 1012, U.S. Patent No. 6,791,119 to Slater Jr. et al. (“Slater”)
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`-16-
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`IPR2018-00333 Patent Owner’s Response
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`electrode 18 “[a]bsolutely” could be reflective. Ex. 2003, 25:20-26:15.7 The light
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`emitted from the LED chip’s active region can reflect off this existing surface,
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`rather than modifying LED chip’s bottom major surface, to emit “through th[e]
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`covering part 34 primarily from the top surface.” Rohm, ¶16. As such, a POSITA
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`would not have been motivated to make this suggested modification in Rohm in
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`view of Slater.
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`2.
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`Rohm Does Not Disclose the Claimed “Electrically Conductive
`Mounting Pad,” “First Electrically Conductive Connecting
`Pad,” and “First Electrically Conductive Interconnecting
`Element” Recited in Claim 1
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`Claim 1 of the ’486 patent also recites, in part:
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`an electrically conductive mounting pad located on one
`of the major surfaces of the substrate; …
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`a first electrically conductive connecting pad located on
`the other of the major surfaces of the substrate; and
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`a first electrically conductive interconnecting element
`extending through the substrate and electrically
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`7 Dr. Pecht stated in his declaration that mounting pads absorb light (Ex. 1003, ¶49;
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`Ex. 2003, 33:12-17). But his deposition testimony established that he did not
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`affirmatively conclude whether die bonding electrode 18 is more reflective or
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`absorptive of light. Ex. 2003, 34:21-25:3; 36:9-37:5; 39:17-39:5. Thus, the
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`alleged benefit to be gained by modifying the LED chip’s bottom major surface to
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`be reflective cannot be established on this record.
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`-17-
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`IPR2018-00333 Patent Owner’s Response
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`interconnecting the mounting pad and the first
`electrically conductive connecting pad.
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`’486 patent, col. 12:10-32 (emphasis added). In the quoted portion, the claim
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`recites three separate elements – i.e., the “electrically conductive mounting pad,”
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`the “first electrically conductive connecting pad,” and the “first electrically
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`conductive interconnecting element.” Moreover, the claim recites a specific
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`physical arrangement among those three elements – namely, that the “first
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`electrically conductive interconnecting element [is] extending through the substrate
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`and electrically interconnecting the mounting pad and the first electrically
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`conductive connecting pad.” In other words, Elements A and C are electrically
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`interconnected by Element B.
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`Petitioners identify Rohm’s die bonding electrode 18, surface mount
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`electrode 22, and first connection electrode 26 as corresponding to the “electrically
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`conductive mounting pad,” the “first electrically conductive connecting pad,” and
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`the “first electrically conductive interconnecting element,” respectively. Pet., 21,
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`26, 27. Although Rohm uses three different terms, Rohm’s Figure 1 make it clear
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`that those three terms are used to refer to three different sections of the same
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`structure.
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`-18-
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`IPR2018-00333 Patent Owner’s Response
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`
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`In the highlighted excerpt of Rohm’s Figure 1, above, Rohm shows that the die
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`bonding electrode 18, surface mount electrode 22, and first connection electrode 26
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`are three different portions of a single structure.
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`Claim 1 of the ’486 patent, however, requires that the “electrically
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`conductive mounting pad,” the “first electrically conductive connecting pad,” and
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`the “first electrically conductive interconnecting element” be three separate
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`structures. Petitioners rely on three portions of the same, single structure in an
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`attempt to align the reference to the claims. But Rohm does not disclose the
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`presence of three separate structures in which one structure serves to electrically
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`-19-
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`IPR2018-00333 Patent Owner’s Response
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`interconnect the other two structures. Further, Petitioners have not justified why
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`three portions of a single structure should be treated as three separate claim
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`elements. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d
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`1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear
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`implication of the claim language’ is that those elements are ‘distinct
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`component[s]’ of the patented invention.” (alteration in original) (quoting Gaus v.
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`Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))).
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`Thus, Rohm cannot be relied upon to disclose the “electrically conductive
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`mounting pad,” the “first electrically conductive connecting pad,” and the “first
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`electrically conductive interconnecting element” recited in claim 1. Because
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`Petitioners relied solely on Rohm for teaching these three elements in Ground 1,
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`Petitioners’ challenge to claim 1 (and its dependent claims 2-3) based on Rohm
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`must fail.
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`Further, Petitioners did not argue that the claim 1’s three separate elements
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`would have been obvious in view of Rohm’s single structure conductors. It would
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`be improper for the Board to modify the Petitioners’ alleged grounds of
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`unpatentability to make such an obviousness argument. See SAS Institute, 138 S.
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`Ct. at 1355 (“[I]t’s the petitioner, not the Director, who gets to define the contours
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`of the proceeding.”).
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`-20-
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`IPR2018-00333 Patent Owner’s Response
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`3.
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`Petitioners’ Ground 1 Challenge Against Claim 2 Fails Because
`Rohm Does Not Disclose or Suggest a Light Emitting Diode
`Having a Metallized Top Major Surface, and Kish Does Not
`Remedy Rohm’s Shortcomings
`Claim 2 depends from claim 1 and further recites, inter alia, a “bonding wire
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`extending between a metallized top major surface of the LED and the electrically
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`conductive bonding pad.”
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`As introduced in Section II.B above, Petitioners allege that Rohm’s “fron
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