UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.
`Petitioners
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
`
`__________________
`
`Case No. IPR2017-00333
`U.S. Patent No. 7,256,486
`__________________
`
`
`
`PETITIONER’S REPLY
`
`
`
`

`

`TABLE OF CONTENTS
`
`C.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II.
`RELEVANT LEGAL STANDARD ............................................................... 1
`Claim Construction ...................................................................................... 1
`A.
`Burden of Proof ............................................................................................ 3
`B.
`III. CLAIM CONSTRUCTION ............................................................................ 3
`A.
`Patent Owner’s “major surface” Construction Is Baseless .......................... 3
`B.
`Patent Owner’s Importation of “substantially covered” into the Claims
`is Improper. .................................................................................................. 5
`The Board Should Reject Patent Owner’s “separate elements”
`Argument .................................................................................................... 10
`IV. THE BOARD SHOULD REJECT PATENT OWNER’S FACTUAL
`DISPUTES ..................................................................................................... 12
`Patent Owner’s Response to Ground 1 Lacks Merit .................................. 12
`Patent Owner’s Geometry Analysis of Rohm Is Flawed ........................ 12
`Patent Owner’s “small fraction”/“small portion” Argument Is
`Legally Irrelevant .................................................................................... 14
`Patent Owner’s Inherency Argument is Irrelevant ................................. 16
`Patent Owner’s Response to Petitioners’ Reasons Analysis is
`Misplaced ................................................................................................ 17
`Patent Owner’s “same structure” Argument is Incorrect ....................... 18
`Patent Owner Fails to Separately Address Claim 3 ................................ 19
`Patent Owner’s Response to Ground 2 Lacks Merit .................................. 19
`Patent Owner’s “metallized . . . major surface” Arguments Are
`Meritless .................................................................................................. 19
`
`5.
`6.
`B.
`1.
`
`A.
`1.
`2.
`
`3.
`4.
`
`
`
`

`

`2.
`3.
`
`Patent Owner’s “same structure” Argument is Incorrect ....................... 22
`Patent Owner’s Response to Petitioners’ Reasons Analysis is
`Misplaced ................................................................................................ 22
`Patent Owner Fails to Separately Address Claim 3 ................................ 23
`4.
`Patent Owner’s Constitutionality Challenge Is Baseless ........................... 23
`C.
`CONCLUSION .............................................................................................. 24
`V.
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Amax, Inc. v. ACCO Brands Corp.,
`282 F. Supp. 3d 432, 437 (D. Mass. 2017) ......................................................... 11
`Apple, Inc. v. Samsung Elecs. Co.,
`No. 12-CV-00630-LHK, 2014 WL 252045 (N.D. Cal. Jan. 21,
`2014) ................................................................................................................... 11
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010) .......................................................................... 10
`DSW, Inc. v. Shoe Pavilion, Inc.,
`537 F.3d 1342 (Fed. Cir. 2008) ............................................................................ 4
`Kolcraft Enterprises, Inc. v. Artsana USA, Inc.,
`No. 13 C 4863, 2017 WL 5418756 (N.D. Ill. Nov. 14, 2017) ........................... 11
`Lite-on Tech. Corp. v. Darfon Elect. Corp.,
`IPR2018-01062, 2018 WL 6016843 (P.T.A.B. Nov. 15, 2018) ......................... 12
`MBO Labs., Inc. v. Becton, Dickinson & Co.,
`474 F.3d 1323 (Fed. Cir. 2007) ...................................................................passim
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 14
`In re Thorpe,
`777 F.2d 695 (Fed. Cir. 1985) ............................................................................ 22
`Octane Fitness, LLC v. Icon Health & Fitness, Inc.,
`572 U.S. 545 (2014) ........................................................................................ 3, 16
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`138 S. Ct. 1365 (2018) ........................................................................................ 24
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) .............................................................................. 2
`
`
`
`1
`
`

`

`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 5, 7
`Powell v. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011) .......................................................................... 11
`Retractable Technologies., Inc. v. Becton, Dickinson & Co.,
`653 F.3d 1296 (Fed. Cir. 2011) ......................................................................... 11
`Rothschild Connected Devices Innovations, LLC v. Coca-Cola Co.,
`No. 1:16-CV-1241-TWT, 2017 WL 5410867 (N.D. Ga. Nov. 13,
`2017) ................................................................................................................... 11
`SkyHawke Techs., LLC v. Deca Int'l Corp.,
`828 F.3d 1373 (Fed. Cir. 2016) ............................................................................ 7
`Smith & Nephew, Inc. v. Rea,
`721 F.3d 1371 (Fed. Cir. 2013) ............................................................................ 5
`Springs Window Fashions LP v. Novo Indus., L.P.,
`323 F.3d 989 (Fed. Cir. 2003) .............................................................................. 7
`TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C.,
`375 F.3d 1126 (Fed. Cir. 2004) ........................................................................ 1, 3
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 2
`Yeda Research v. Mylan Pharm. Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) .......................................................................... 14
`Other Authorities
`37 C.F.R. § 316(e) ...................................................................................................... 3
`
`
`
`
`2
`
`

`

`I.
`
`INTRODUCTION
`
`The Petition laid out: (1) express claim-construction analyses for all terms
`
`reasonably in dispute; (2) an explanation of where each claim element so construed
`
`was found in the cited prior art; (3) reasons analyses supporting obviousness; and
`
`(4) citations to a supporting declaration from Michael Pecht Ph.D. for the facts and
`
`analyses provided. In its Response, Patent Owner skips over the claim-construction
`
`analysis. Instead, based solely on attorney argument, Patent Owner’s Response
`
`hinges upon a single claim interpretation argument – that the phrase
`
`“metalized . . . major surface” requires substantially the entire surface to be
`
`covered with metal. That conclusion, however, is directly contradicted by the ’486
`
`specification and Patent Owner’s infringement position in the underlying litigation.
`
`Based on the evidence and analyses provided by the parties, invalidity of the
`
`relevant claims has been established by a preponderance of the evidence.
`
`II. RELEVANT LEGAL STANDARD
`
`A. Claim Construction
`Assessing patent validity is a “two-step procedure.”1 TI Grp. Auto. Sys. (N.
`
`Am.), Inc. v. VDO N. Am., L.L.C., 375 F.3d 1126, 1139 (Fed. Cir. 2004). “The first
`
`step involves the proper interpretation of the claims. The second step involves
`
`
`
`1
`
`All emphases herein are added unless otherwise described.
`
`
`
`1
`
`

`

`determining whether the limitations of the claims as properly interpreted are met
`
`by the prior art.” Id. (citation omitted).
`
`The proper standard for claim construction in this inter partes review
`
`proceeding is “the ‘broadest reasonable construction in light of the specification of
`
`the patent.’” (Paper 9 (Decision to Institute) at 5 (citing 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).) To arrive at
`
`the proper construction, the Board must “[give the] words of the claim . . . their
`
`plain meaning, unless such meaning is inconsistent with the specification and
`
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`
`2016) (citing Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362
`
`(Fed. Cir. 2015)). That task, however, does not simply mean “[c]onstruing
`
`individual words of a claim without considering the context in which those words
`
`appear.” Id. Instead, the proper analysis requires consideration of “the claims, the
`
`specification, and the technology of the [relevant] patent.” PPC Broadband, Inc. v.
`
`Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 756 (Fed. Cir. 2016). In
`
`addition, “[a] claim interpretation that excludes a preferred embodiment from the
`
`scope of the claim is rarely, if ever, correct.” MBO Labs., Inc. v. Becton, Dickinson
`
`& Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (citation omitted).
`
`
`
`2
`
`

`

`B.
`Burden of Proof
`The ultimate burden here is the preponderance of the evidence. 37 C.F.R.
`
`§ 316(e). That legal standard “allows both parties to ‘share the risk of error in
`
`roughly equal fashion.’” Octane Fitness, LLC v. Icon Health & Fitness, Inc., 572
`
`U.S. 545, 558 (2014).
`
`III. CLAIM CONSTRUCTION
`
`A.
`Patent Owner’s “major surface” Construction Is Baseless
`Much of Patent Owner’s response is predicated on replacing the term
`
`“major” with the narrower meaning “the greatest surface in area.” (Paper 17 at 12.)
`
`Patent Owner’s “major surface” construction is baseless.
`
`First, Patent Owner fails to provide a proper claim construction analysis, but
`
`instead mixes that argument together with the application of the prior art. (See,
`
`e.g., id. at 12.) By failing to follow the proper two-step analysis, see TI Group
`
`Automotive, 375 F.3d at 1139, Patent Owner creates ambiguity and confusion.
`
`Patent Owner never links its interpretation of the term “major surface” to any
`
`aspect of the purported invention. Indeed, nothing in the specification of the ’486
`
`patent focuses on the shape of the LED, which is not the focus of the claims,
`
`specification, or prosecution history of the ’486 patent. Instead, the logic behind
`
`Patent Owner’s argument is merely that the patent’s figures depict a specific
`
`geometry. The ’486 specification, however, confirms that the applicants did not
`
`
`
`3
`
`

`

`intend to limit the claims to the depicted embodiment. (Ex. 1001 at 12:1-4 (“it is to
`
`be understood that the invention defined by the appended claims is not limited to
`
`the precise embodiments described”).)
`
`Second, Patent Owner’s assertion that a major surface must be the single
`
`“greatest” surface conflicts with the intrinsic evidence. The claims require the
`
`substrate and the LED to each have at least two major surfaces. Read in context,
`
`Patent Owner’s position appears to be that, for a planar object, the “major
`
`surfaces” are the two “largest” opposing surfaces. Although the substrate is
`
`expressly recited as “planar,” no such limitation is placed on the shape of the LED.
`
`Patent Owner’s implicit planar-LED construction, therefore, is improper.
`
`Third, the Patent Owner’s analysis suffers from over-reliance on the ’486
`
`patent’s figures. The ’486 Patent does not state that its drawings are to scale or
`
`otherwise constrain the scope of the claims. Therefore, the assertion that the top
`
`and bottom surfaces depicted in those unscaled figures appear to be the largest has
`
`little value. Instead, Patent Owner’s position amounts to improperly importing
`
`exemplary dimensions depicted in the figures into the claims. See DSW, Inc. v.
`
`Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008) (claim construction
`
`“cannot alter what the patentee has chosen to claim as his invention, [ ] limitations
`
`appearing in the specification will not be read into claims, and [ ] interpreting what
`
`is meant by a word in a claim is not to be confused with adding an extraneous
`
`
`
`4
`
`

`

`limitation appearing in the specification, which is improper”) (internal quotation
`
`marks and emphasis omitted); Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed.
`
`Cir. 2005) (en banc) (noting that under the standard applied in district court,
`
`importing limitations from the specification into the claims is a “cardinal sin[ ] of
`
`patent law”).
`
`Stated differently, Patent Owner’s construction is based on an unclaimed
`
`feature that is improperly imported into the claims based solely on its counsel’s
`
`observation of the figures. An unclaimed feature is not a proper basis for finding
`
`the ’486 Patent to be non-obvious over the prior art. Smith & Nephew, Inc. v. Rea,
`
`721 F.3d 1371, 1381 (Fed. Cir. 2013).
`
`Regardless, as explained in Sections IV.A.1. (Rohm) and IV.B.1.
`
`(Matsushita) below, the geometries of the top and bottom surfaces of Rohm and
`
`Matsushita are substantively indistinguishable from those depicted in the ’486
`
`patent. Even if correct, therefore, Patent Owner’s narrow claim construction does
`
`not detract from the invalidity grounds presented.
`
`B.
`
`Patent Owner’s Importation of “substantially covered” into the
`Claims is Improper.
`Patent Owner argues that the terms “metallized . . . major surface” as recited
`
`in claim 1 (“metallized bottom major surface”); claim 2 (“metallized top major
`
`surface”) and claim 3 (“metallized top major surface . . . [and] metallized bottom
`
`major surface”) exclude “a metallization layer [ ] arranged on only a small fraction
`
`5
`
`

`

`of a major surface.” (Paper 17 at 10.) Patent Owner presents this argument in a
`
`number of distinct formulations. (See, e.g., id. at 21 (“Petitioners offer no reason or
`
`analysis justifying why it is proper to characterize front surface electrode 30a [of
`
`Rohm] as a ‘major surface.”); id. at 13 (“There is no basis to conclude from [the]
`
`incomplete side views [of Kish] that any electrodes of Kish constitute a ‘major
`
`surface.’”); id. at 29 (“Petitioners cite no depiction in Matsushita showing that the
`
`conductive portion of the ‘bottom of semiconductor light-emitting element 4’
`
`constitutes a ‘major surface’”); id. at 30 (“[the] sectional view [of Edmond ’589]
`
`cannot be relied upon to disclose layer [ohmic contact layer] 22 as a ‘major
`
`surface’”).)
`
`Patent Owner does not provide a clear delineation based on the ’486 patent
`
`or its file history of what portion must be covered, but instead, merely concludes
`
`that “[t]he correct construction of ‘metallized . . . major surface’ is ‘a major
`
`surface . . . substantially covered with metal.’” (Id. at 12.) This mere conclusion,
`
`without support from the intrinsic record, should be rejected.
`
`Moreover, in the midst of discussing the prior art, Patent Owner cites to the
`
`parties’ First Amended Joint Claim Construction Statement (Ex. 2001) in the
`
`underlying litigation. (Paper 17 at 12.) The only potentially relevant information in
`
`that document comprises the joint defense group’s assertion that Patent Owner
`
`committed disclaimer-by-argument in this proceeding. (Ex. 2001.) Patent Owner
`
`
`
`6
`
`

`

`fails to explain how a preliminary claim construction position, based on disclaimer,
`
`and under the Phillips standard, binds Petitioners here. It does not. See SkyHawke
`
`Techs., LLC v. Deca Int'l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016); Springs
`
`Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
`
`Moreover, Patent Owner fails to identify anywhere in the figures or the
`
`written description of the ’486 patent where the top and bottom surfaces of the
`
`LED are both “substantially covered.” Instead, Patent Owner’s counsel simply
`
`concludes that substantial coverage is required. By doing so, counsel ignores the
`
`’486 patent’s contradictory disclosure of partial coverage:
`
`In the example shown [Figs. 2A-2F], 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. . . . The
`bonding pad on the top major surface of semiconductor die 250 is
`typically part of or connected to the anode electrode of the light-
`emitting diode. The metallization on the bottom major surface of
`semiconductor die 250 typically constitutes the cathode electrode of
`the light-emitting diode.
`
`(Ex. 1001 at 5:7-10; 5:18-22.)
`
`Tellingly, Patent Owner characterizes its view of the claim term as covering
`
`the “full surface.” (Paper 17 at 15.) But at the same time, Patent Owner’s counsel
`
`concedes when distinguishing the prior art that such full-surface coverage would
`
`“impede the ability of light to exit the LED chip.” (Id.; see also id. at 23 (asserting
`
`
`
`7
`
`

`

`that metallizing Rohm’s top surface “would have the effect of impeding the light’s
`
`path out from the active layer to the top surface”).) That alleged problem would
`
`apply equally to the purported ’486 invention if both top and bottom surfaces were
`
`covered with metal. For example, figure 2 of the ’486 patent (reproduced and
`
`colored below) shows that covering the LED’s top and bottom surfaces entirely
`
`with metal would (just as Patent Owner’s counsel suggests with respect to the prior
`
`art) result in light escaping only through the side surfaces. Patent Owner’s failure
`
`to provide evidence (e.g., an expert declaration) to support that strained
`
`interpretation of the “invention” necessitates rejecting its construction.
`
`Patent Owner’s implicit construction is also directly contradicted by its
`
`infringement theory in the underlying litigation. In particular, as shown in the
`
`
`
`
`
`8
`
`

`

`image reproduced below, the Patent Owner unambiguously asserts that the term
`
`“metallized” is broad enough to encompass metal contacts arranged on only a
`
`small fraction of a major surface. (Ex. 1019 (Infringement Contentions).) The
`
`Board should not permit Patent Owner to play such games, seeking an incredibly
`
`broad construction to assert infringement in district court, but then seeking a
`
`narrow and counter-textual construction here to salvage validity.
`
`And finally, Patent Owner’s argument that the metal layer relied upon in the
`
`prior art must “be interpreted as a ‘major surface’” (Paper 17 at 11), is at best
`
`9
`
`
`
`

`

`confusing. The claims use the phrase “metallized . . . major surface,” but do not
`
`require that metallization alone to be a major surface. What Patent Owner seems to
`
`imply is that the claim language itself defines the major surface as being entirely
`
`covered with metal. Patent Owner, however, cites nothing in the intrinsic record to
`
`support that view. And as discussed above, the specification, counsel’s functional
`
`argument, and Patent Owner’s infringement theory all contradict that position.
`
`C. The Board Should Reject Patent Owner’s “separate elements”
`Argument
`Claim 1 recites, in relevant part: “[a] mounting pad”; “[a] connecting pad”;
`
`and “[an] interconnecting element.” Similarly, claim 2 recites, in relevant part: “[a]
`
`bonding pad”; “[a] connecting pad”; and “an interconnecting element.” Rather than
`
`provide a claim construction analysis, Patent Owner jumps directly to the
`
`conclusion that the three recitations in each claim require “three separate
`
`elements.” (Paper 17 at 20, 26.)
`
`In support of its argument, Patent Owner cites Becton, Dickinson & Co. v.
`
`Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010), as mandating
`
`its “separate elements” construction. (Paper 17 at 20, 26). As the Federal Circuit
`
`subsequently explained, however, Becton turned on the Court’s analysis that,
`
`“based on the intrinsic record, the terms ‘hinged arm’ and ‘spring means’ were
`
`construed to require separate structures.” Powell v. Home Depot U.S.A., Inc., 663
`
`F.3d 1221, 1231 (Fed. Cir. 2011). A far more relevant decision is Retractable
`
`10
`
`

`

`Technologies., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1303 (Fed. Cir.
`
`2011), which expressly distinguished Patent Owner’s interpretation of Becton. In
`
`Retractable Technologies, the claims required “‘[a] needle holder’ and [a] ‘retainer
`
`member.’” Id. The Court rejected the argument that those structures must be
`
`separate pieces, in part, because “[t]he specifications state that the retainer member
`
`and the inner head of the needle holder can be connected by a weld.” Id.
`
`The ’486 specification’s disclosure is similar, in that it describes metal (e.g.,
`
`tungsten) interconnecting elements directly and conductively connected to metal
`
`(e.g., tungsten) pads. (Ex. 1001 at 4:29-57.) Nothing in the ’486 patent suggests the
`
`relevant parts must be “separate” as Patent Owner suggests. Indeed, Patent Owner
`
`fails to explain how the requisite level of separateness is to be determined.
`
`Moreover, a number of courts have recognized that Becton’s discussion of
`
`“distinct components” does not require physical separation. See Kolcraft
`
`Enterprises, Inc. v. Artsana USA, Inc., No. 13 C 4863, 2017 WL 5418756, at *6
`
`(N.D. Ill. Nov. 14, 2017); Rothschild Connected Devices Innovations, LLC v.
`
`Coca-Cola Co., No. 1:16-CV-1241-TWT, 2017 WL 5410867, at *4 (N.D. Ga.
`
`Nov. 13, 2017); Amax, Inc. v. ACCO Brands Corp., 282 F. Supp. 3d 432, 437 (D.
`
`Mass. 2017); Apple, Inc. v. Samsung Elecs. Co., No. 12-CV-00630-LHK, 2014
`
`WL 252045, at *8 (N.D. Cal. Jan. 21, 2014). The focus instead is on whether the
`
`relevant elements are accorded a “distinct” meaning. As discussed in Sections
`
`
`
`11
`
`

`

`IV.A.5 and B.4., Petitioners’ analyses accord each portion of the cited prior art
`
`structures distinct functional and positional meanings, rendering Patent Owner’s
`
`argument inapplicable.
`
`IV. THE BOARD SHOULD REJECT PATENT OWNER’S FACTUAL
`DISPUTES
`Before addressing the specific arguments raised by Patent Owner,
`
`Petitioners note that Patent Owner’s Response suffers from a general defect – the
`
`failure to provide evidence or analysis beyond attorney argument. As the Federal
`
`Circuit explained in In re Geisler, “attorney argument [is] not the kind of factual
`
`evidence that is required to rebut a prima facie case of obviousness.” 116 F.3d
`
`1465, 1470 (Fed. Cir. 1997) (citing cases); see also Lite-on Tech. Corp. v. Darfon
`
`Elect. Corp., IPR2018-01062, 2018 WL 6016843, at *11 (P.T.A.B. Nov. 15, 2018)
`
`(same). Here, Patent Owner’s failure to provide testimonial evidence from the
`
`perspective of a person having ordinary skill in the art significantly detracts from
`
`the merits of its positions.
`
`A.
`
`Patent Owner’s Response to Ground 1 Lacks Merit
`1.
`Patent Owner’s Geometry Analysis of Rohm Is Flawed
`As discussed in Section II.A. above, Patent Owner interprets the term “major
`
`surface” to mean “a surface that is greater in size than the other surfaces of the
`
`element being described.” Even under Patent Owner’s proposed construction,
`
`
`
`12
`
`

`

`Rohm discloses the recitation. As shown in the side view depicted in figure 1(A)
`
`and the plan view depicted in figure 1(B)
`
`(both reproduced to the right), the surface
`
`area of the top and bottom surfaces of the
`
`substrate (12) are greater than surface area
`
`of its sides. Similarly, the figures show that
`
`the surface area of the top and bottom
`
`surfaces of the LED (30) are greater than
`
`the surface area of its sides.2 In other words,
`
`for both structures, the side surfaces are
`
`wider than they are tall.
`
`Indeed, the Institution Decision
`
`expressly cited Rohm’s disclosure in
`
`concluding “the geometries of the LED in Rohm Figures 1–3 . . . appear to be
`
`
`
`2
`
`To avoid potential confusion, Petitioners note that Patent Owner’s Response
`
`also reproduced Rohm’s figure 3. (Paper 17 at 10.) Rohm’s figure 3 is described as
`
`an illustration of “conventional surface mount type semiconductor light-emitting
`
`devices.” (Ex. 1008 ¶ 2.) The depiction provided in figure 3, therefore, does not
`
`relate to Rohm’s invention as depicted in cited figures 1(A) and (b).
`
`
`
`13
`
`

`

`essentially the same as that of the LED shown in the ’486 patent Figures 2A–D.”
`
`(Paper 9 at 11.) By failing to address this affirmative analysis, Patent Owner leaves
`
`it unrebutted. Moreover, the limited analysis provided by Patent Owner’s counsel
`
`does not provide a sufficient refutation of the clear prior-art disclosure.
`
`To the extent that Patent Owner asserts at oral argument that the figures of
`
`Rohm should be deemed unreliable, that precise issue would also apply to the
`
`figures of the ’486 patent. In addition, Rohm not need be measured for its precise
`
`dimensions. Instead, it is enough to assess what is fairly disclosed. In re Mouttet,
`
`686 F.3d 1322, 1331 (Fed. Cir. 2012); see also Yeda Research v. Mylan Pharm.
`
`Inc., 906 F.3d 1031, 1046 (Fed. Cir. 2018) (explaining that obviousness is
`
`analyzed by “considering the prior art teachings as a whole”).
`
`2.
`
`Patent Owner’s “small fraction”/“small portion”
`Argument Is Legally Irrelevant
`As discussed in Sections II.C. above, Patent Owner incorrectly argues that
`
`the term “metallized” requires the “major surface” to be “substantially covered.”
`
`Patent Owner repeats this argument for both the “metallized bottom major surface”
`
`of claim 1 and the “metallized top major surface” of claim 2.
`
`Although Petitioners relied on a combination of Rohm and Kish (see Paper 2
`
`at 19-26; see also id. (citing Ex. 1003 (Pecht Decl.) ¶¶ 47-56)), the crux of Patent
`
`Owner’s Response is that a person of ordinary skill would not have interpreted the
`
`“small” metal electrodes in Rohm or Kish as sufficiently large to meet the claim
`
`14
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`language. (Paper 17 at 13-15 (addressing the bottom); see also id. at 21-23
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`(addressing the top).) For the reasons discussed in Section II.C., the claims do not
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`exclude a metal layer that covers only a portion of the surface. Moreover, Patent
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`Owner’s argument that Kish’s side views fail to clearly disclose “full” coverage
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`(see, e.g., Ex. 1010 (Kish) (bottom electrode 144 of Fig. 14, which extends across
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`the entire bottom surface)), applies equally to Patent Owner’s “small”
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`interpretation. In other words, Patent Owner cannot argue that Kish is too vague to
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`disclose substantial coverage, but necessarily disclose “small” coverage.
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`Instead, when accorded the proper claim scope, Patent Owner’s own
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`descriptions of the metal electrodes of Rohm and Kish support rather than refute
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`Petitioners’ obviousness analysis. (See, e.g., Paper 17 at 11, 13-15, 21-22, 24.)
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`Indeed, Patent Owner concedes that Kish discloses top and bottom metallized
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`electrodes, but seeks to distinguish them solely based on size. (See, e.g. id. at 24.)
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`In addition, Patent Owner’s assertion that Kish does not necessarily include
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`major surfaces under Patent Owner’s geometry-based construction (Paper 17 at 13)
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`is irrelevant. As discussed above, Rohm’s LED provides the relevant geometrical
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`disclosure under Patent Owner’s construction. Kish, in turn, is relied upon to
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`establish the obviousness of implementing the top and bottom electrodes of Rohm
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`using metallization. Patent Owner does not address the relevant disclosures in
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`those references or Petitioners’ reasons analysis, but instead attacks each reference
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`
`
`15
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`in isolation. Under the preponderance of the evidence standard, “[which] allows
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`both parties to ‘share the risk of error in roughly equal fashion,’” Octane, 572 U.S.
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`at 558, Patent Owner’s decision to rest its analysis on an incorrect construction
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`leaves the contrary analysis unrebutted, and therefore, sufficient to meet the
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`relevant burden.
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`3.
`Patent Owner’s Inherency Argument is Irrelevant
`With respect to the term “metallized surface,” Patent Owner asserts that
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`Petitioners’ burden was to establish that the disclosure of a metal electrode in the
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`prior art provided inherent disclosure. (Paper 17 at 14.) The flaw in Patent Owner’s
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`reasoning, which is repeated throughout its response, is its failure to separate out
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`claim interpretation from applying the prior art to the claims as interpreted.
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`As explained in Section II.E., the Petition reviewed the claim language,
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`specification, and extrinsic record to establish that the term “metallized surface”
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`means “a metal layer on at least a portion of the surface” under the broadest
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`reasonable construction standard. Next, the Petition provided a Graham/KSR
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`analysis, including: citing Kish’s disclosure of metallized top and bottom surfaces
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`that functioned as electrodes; and providing reasons to apply that disclosure in
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`Rohm. (Paper 2 at 22-25.) Identifying how the prior art discloses a claim term as
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`properly construed is not a matter of inherency, but instead merely an ordinary
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`issue of disclosure and obviousness.
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`
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`16
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`4.
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`Patent Owner’s Response to Petitioners’ Reasons Analysis
`is Misplaced
`Patent Owner disputes Petitioners’ “reasons” analysis, but does so based on
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`its flawed “substantially covered” construction. (Paper 17 at 12.) For example,
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`Patent Owner argues “Kish would not have taught to use a full-surface metallized
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`electrode on the lower surface of Rohm.” (Id.) The claims, however, do not require
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`a “full-surface metallized electrode.” Patent Owner’s irrelevant rebuttal, therefore,
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`should be rejected. Instead, the Board should focus on the prior art’s disclosure of
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`each claim element under the proper construction and the reasons supporting
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`obviousness (including Petitioners’ supporting testimonial evidence). (See Paper 2
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`at 19-33; see also id. (citing Ex. 1003 (Pecht Decl.) ¶¶ 45-57).) That evidence
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`stands unrebutted, and therefore, establishes invalidity.
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`Patent Owner’s counsel also posits that a person having ordinary skill would
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`not have had reason to implement a reflective metal (as disclosed in Slater (Ex.
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`1012)) on the bottom of Rohm’s LED as suggested by Petitioners’ declarant Dr.
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`Pecht because “Rohm already discloses a die bonding electrode 18, having a
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`‘slightly larger shape’ than the LED chip 30.” (Paper 17 at 16.) The implicit (but
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`unsupported) assumption by Patent Owner’s counsel is that Rohm’s die-bonding
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`electrode would necessarily present a reflective surface under the LED. (Id. at 16-
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`17.) Rohm, however, explains that a “conductive adhesive” is used to bond the
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`LED to the die bonding electrode. (Ex. 1008 (Rohm) ¶ 18.) Patent Owner’s
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`17
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`counsel does address how the potential (though undescribed) reflectivity of
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`Rohm’s die bonding electrode is relevant despite an intervening layer of
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`conductive adhesive. Counsel’s incomplete speculation, therefore, is not
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`responsive to Dr. Pecht’s explanation. (Ex. 1003 ¶¶ 49, 55, 60.)
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`5.
`Patent Owner’s “same structure” Argument is Incorrect
`Rather than a true claim construction analysis, Patent Owner asserts, as a
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`matter of fact, that Rohm fails to disclose (1) claim 1’s “mounting pad,”
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`“connecting pad” and “interconnecting element” or (2) claim 2’s “bonding pad,”
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`“connecting pad” and “interconnecting element,” because the cited structures are
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`“three different sections of the same structure.” (Paper 17 at 18; see also id. at 26.)
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`As explained in Section II.D., Patent Owner’s argument relies exclusively on an
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`unsupported interpretation of the Federal Circuit’s Becton decision. Under a proper
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`claim-construction analysis, prior art structures comprising three distinct sections
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`(as disclosed in Rohm), are sufficient.
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`Moreover, even if Patent Owner’s single-structure argument had legal merit,
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`it would still fail as a matter of fact. Patent Owner’s sole basis for asserting that the
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`three sections are a single structure is based on its counsel’s interpretation of figure
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`1. Rohm’s specification, however, separately describes each of the sections as
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`being “formed.” (Ex. 1008 at ¶¶ 14-15.) That the so-formed parts result in