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Filed on behalf of: Nichia Corporation Paper ____
`
`
`
`
`By: Martin M. Zoltick, Lead Counsel
`
`Robert P. Parker, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`Michael H. Jones, Back-up Counsel
`
`Mark T. Rawls, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: mzoltick@rfem.com
`
` rparker@rfem.com
`
` ddahlgren@rfem.com
`
` mjones@rfem.com
`
` mrawls@rfem.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Date filed: January 29, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00386
`Patent 9,490,411
`_______________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2018-00386
`Patent 9,490,411
`
`TABLE OF CONTENTS ........................................................................................... i
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`Petitioner’s Construction is Inconsistent with the Intrinsic Evidence ............. 1
`
`II.
`
`Petitioner’s Extrinsic Evidence Cannot Resolve the Dispute .......................... 3
`
`III. Petitioner’s Arguments Regarding Specification Support for Patent
`
`Owner’s Construction are Wrong ..................................................................... 3
`
`IV. Petitioner’s Construction Renders the Disputed Term Superfluous ................ 4
`
`V. Conclusion ........................................................................................................ 5
`
`
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2018-00386
`Patent 9,490,411
`
`Cases
`
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ..................... 1
`
`
`
`ii
`
`

`

`Case IPR2018-00386
`Patent 9,490,411
`
`EXHIBIT LIST
`
`Description
`
`Declaration of Dr. Stanley R. Shanfield, dated June 16, 2017, in
`IPR2017-01608 (Ex. 1003 in that IPR).
`
`Declaration of Dr. Stanley R. Shanfield, dated June 16, 2017, in
`IPR2017-01623 (Ex. 1103 in that IPR).
`
`Dandan Zhu and Colin J. Humphreys, Solid-State Lighting Based
`on Light Emitting Diode Technology, Chapter 5 (2016).
`
`Sheng Liu and Xiaobing Luo, LED Packaging for Lighting
`Applications: Design, Manufacturing and Testing, Chemical
`Industry Press (2011).
`
`Exhibit
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`Petition for Inter Partes Review of U.S. Patent No. 9,537,071 in
`IPR2018-00437, dated January 12, 2018.
`
`2006
`
`U.S. Patent No. 9,537,071.
`
`2007
`
`2008
`
`2009
`
`2010
`
`Vizio Holdings, Inc.’s Amendment No. 3 to Form S-1 Registration
`Statement, filed with the Securities and Exchange Commission on
`October 22, 2015 (retrieved from
`http://secfilings.nasdaq.com/filingFrameset.asp?FilingID=1096439
`2&RcvdDate=10/22/2015&CoName=VIZIO%20HOLDINGS%2
`C%20INC.&FormType=S-
`1/A&View=html%20September%2026,%202016%20Disc\Internet
`%20articles\FetchF%20VIZIO(4).pdf).
`
`Westlaw Company Investigator Reports for Vizio, Inc., AmTran
`Logistics Company and AmTran Logistics Inc. Company.
`
`Declaration of Dr. Stanley R. Shanfield, dated January 12, 2018, in
`IPR2018-00437 (Ex. 1003 in that IPR).
`
`Transcript of Teleconference in IPR2017-01608 and IPR2017-
`01623, dated February 28, 2018 (Ex. 2029 and Ex. 2129
`respectively, in those IPRs).
`
`2011
`
`Declaration of Dr. E. Fred Schubert, dated September 18, 2018.
`
`iii
`
`

`

`Exhibit
`
`2012
`
`2013
`
`2014
`
`2015
`
`Case IPR2018-00386
`Patent 9,490,411
`
`Description
`
`Japanese Patent Publication No. JP2007-235085 (“Urasaki”) with
`Certified English Translation in IPR2017-01608 and IPR2017-
`01623 (Exs. 1007 and 1107 respectively, in those IPRs).
`
`Transcript of Stanley R. Shanfield, Ph.D. Deposition, dated May
`21, 2018, taken in IPR2017-01608, IPR2017-01623, IPR2018-
`00893, IPR2017-02011, IPR2017-02014 (Ex. 2710 in IPR2017-
`01608 and IPR2017-01623).
`
`E. Chen, “III. Wet and Dry Etching,” Harvard University Center
`for Imaging and Mesoscale Structures (2004) (retrieved from
`https://www.mrsec.harvard.edu/education/ap298r2004/Erli%20che
`n%20Fabrication%20III%20-%20Etching.pdf).
`
`Exhibit B to Complaint for Patent Infringement, Nichia Corp. v.
`Vizio, Inc., Case No. 2:16-cv-00246, Dkt. 1-2 (E.D. Tex. Mar. 21,
`2016 ) [Copy of Memorandum Opinion and Order, Nichia Corp. v.
`Everlight Elecs. Co., Case No. 2:13-cv-00702-JGR, Dkt. 193 (E.D.
`Tex. Jan. 26, 2016)].
`
`2016
`
`EXHIBIT NUMBER NOT BEING USED
`
`2017
`
`EXHIBIT NUMBER NOT BEING USED
`
`2018
`
`EXHIBIT NUMBER NOT BEING USED
`
`2019
`
`EXHIBIT NUMBER NOT BEING USED
`
`2020
`
`2021
`
`2022
`
`2023
`
`Transcript of Teleconference in IPR2018-00386 and IPR2018-
`00437, dated January 17, 2019.
`
`Transcript of Stanley R. Shanfield, Ph.D. Deposition, dated
`December 19, 2018.
`
`Exhibit S1 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`Exhibit S2 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`iv
`
`

`

`Case IPR2018-00386
`Patent 9,490,411
`
`Description
`
`Exhibit S3 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`Exhibit S4 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`Exhibit S5 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`Exhibit S6 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`Exhibit S7 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`
`Exhibit
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`
`
`v
`
`

`

`Case IPR2018-00386
`Patent 9,490,411
`
`Petitioner contends that the claimed “region below an upper surface of the
`
`metal part” is not bounded by the upper surface of the metal part, but can instead
`
`extend to portions of the resin package with no metal above it. Patent Owner
`
`submits that such a construction fails to give weight to the words of the claim.
`
`Because “the upper surface of the metal part” provides context for “a region
`
`below,” the upper surface should provide the boundaries of the region.
`
`I. Petitioner’s Construction is Inconsistent with the Intrinsic Evidence
`
`Petitioner’s construction disassociates the claimed region from the upper
`
`surface, and instead defines a plane that extends at a level of the upper surface.
`
`Because claim 1 is not limited to metal parts having an upper surface at only one
`
`level, Petitioner’s construction is inconsistent with the specification and claims.
`
`The specification describes a metal plate having “differences in level” being
`
`used for the leads. E.g., Ex. 1001 9:25-27. Further, claim 4 requires that the metal
`
`part has one or more upper surfaces that are coplanar. By implication (applying
`
`claim differentiation), claim 1 encompasses embodiments where one or more upper
`
`surfaces are not coplanar (i.e., at different levels or different thicknesses). See
`
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).
`
`Similarly, claim 3 requires that each of the at least two metal plates is substantially
`
`flat, meaning that claim 1 encompasses embodiments where one or more of the
`
`metal plates is not. Petitioner’s construction fails to account for these
`
`1
`
`

`

`embodiments (and claim 1), which can lead to absurd results, such as resin above
`
`the upper surface of the metal part being considered below the upper surface:
`
`Case IPR2018-00386
`Patent 9,490,411
`
`
`
`
`
`Outer side surface showing one lead with a difference in level, or two
`leads having a different thickness. The resin (blue) is at a lower level
`(red)1 than the metal part (grey). Leads electrically separated (white).
`
`That is, even if the resin part is located entirely above the upper surface of the
`
`
`
`metal part at a given location, Petitioner’s construction means a part of it would
`
`still be “in a region below an upper surface of the metal part.” This is wrong.
`
`Even the definition “at a lower level than” does not resolve whether the
`
`claimed region is bounded by the upper surface of the metal part. Petitioner has
`
`had to take the position that a region can be “at a lower level than” an upper
`
`surface even if it is not underneath the upper surface, i.e. the upper surface does
`
`not bound the claimed region. Ex. 2021, 31:9-32:5 (“upper surface” in places
`
`where there is no metal); S1-S3; Reply, 5 (“no requirement … that the region be
`
`
`1 Another problem applying Petitioner’s construction to upper surfaces having
`
`more than one level, is that one must arbitrarily select a level. During cross, Dr.
`
`Shanfield was uncomfortable applying Petitioner’s construction to an example like
`
`this. Ex. 2021 68:15-69:4, 86:2-6, 87:16-88:13; Exs. 2022-2028 (S4-S7).
`
`2
`
`

`

`Case IPR2018-00386
`Patent 9,490,411
`
`bounded by ... the metal plate….”), 12-13. In effect, Petitioner’s construction is
`
`that metal and resin are at a lower level than an upper surface of the metal part,
`
`anywhere on the outer lateral surface, irrespective of where the upper surface
`
`stops. Ex. 2021, 18:4-19, 23:11-18, 27:13-18, 35:4-14. The term “region” has no
`
`force in Petitioner’s construction and could equally be omitted.
`
`II. Petitioner’s Extrinsic Evidence Cannot Resolve the Dispute
`
`Petitioner offers definitions from two dictionaries to support its preferred
`
`meaning. However, the dictionaries Petitioner provides also define below as
`
`meaning underneath. See Ex. 1026 (below means “beneath” or “at the bottom of :
`
`directly underneath”); Ex. 1027 (“directly beneath; covered by, underneath; deeper
`
`than”). Thus, the extrinsic evidence equally supports Patent Owner.
`
`III. Petitioner’s Arguments Regarding Specification Support for Patent
`Owner’s Construction are Wrong
`
`Petitioner incorrectly argues that none of the preferred embodiments support
`
`Patent Owner’s construction. See POR, 14-22. Specifically, Petitioner improperly
`
`dismisses the specification’s description of resin under metal due to concavities
`
`and convexities. As Dr. Schubert explained, the specification expressly supports
`
`the claim element even if no single figure expressly shows it. Ex. 2011, ¶¶44-56.
`
`Even Dr. Shanfield acknowledged that there is resin underneath the concavities of
`
`the metal part. Ex. 2021, 89:15-90:8; 93:17-96:2; Ex. 1017, ¶26.
`
`Instead, Petitioner contends that because the upper surface of the metal part
`
`3
`
`

`

`Case IPR2018-00386
`Patent 9,490,411
`
`is formed by etching, it cannot be the upper surface. Ex. 1017, ¶ 27. This is based
`
`on the assertion that the description of another feature (step) redefines the ordinary
`
`meaning of what a surface is, such that the top of the metal part is not an upper
`
`surface because it has a concave/convex shape. Reply, 9-11. Such a redefinition is
`
`not supported – there is no rule that concave top surfaces cannot be upper surfaces.
`
`Also, contrary to Petitioner’s allegation that the specification does not
`
`describe where etching occurs (see Reply, 11), the specification explains that
`
`“etching can form concave-convex shapes in the entire sectional (etched part)
`
`part of the lead frame….” Ex. 1001, 9:37-42; see also Ex. 2011, ¶51. Further,
`
`Petitioner’s admonition against excluding preferred embodiments carries little if
`
`any weight. First, second, and fifth embodiments are covered by claim 1. This is a
`
`continuation, and one claim is not required to cover all embodiments.
`
`Finally, claim 6 is directed to a different feature (and different portion of the
`
`device), uses different words, and does not modify the disputed claim term. The
`
`features also have different purposes. Compare Ex. 2021. at 97:15-98:18 with Ex.
`
`2011, ¶47. Claim differentiation therefore does not inform the dispute.
`
`IV. Petitioner’s Construction Renders the Disputed Term Superfluous
`
`Claim 1 requires that “a notch is formed in the metal part at each of the four
`
`outer lateral surfaces of the resin package.” A notch in a singulated device results
`
`from cutting a resin-filled notch part in a lead frame. E.g., Ex. 2011, ¶50; Ex.
`
`4
`
`

`

`1001, 4:11-15 (“resin is filled in the notch parts”); see also id., 3:51-55, 6:49-52,
`
`13:31-41, 19:7-8. This is illustrated below:
`
`Case IPR2018-00386
`Patent 9,490,411
`
`singulation
`
`
`
`
`
`
`
`
`
`Thus, a notch formed in the metal part at each of the four outer lateral surfaces of
`
`the resin package means that there is resin that is necessarily at a lower level than
`
`an upper surface of the metal part (because the notch was formed in the metal
`
`part). That is, Petitioner’s construction renders the claim term superfluous, a result
`
`which is highly disfavored as Petitioner’s case cites make clear. Reply, 11.
`
`V. Conclusion
`
`Petitioner’s reply fails to rebut Patent Owner’s construction, instead
`
`focusing on a straw man. Petitioner contends (without support) that Patent Owner
`
`has struck “in a region” and “below an upper surface of” from the claim, and
`
`replaced these by “directly under.” E.g., Reply, 3. This misconstrues Patent
`
`Owner’s position; nowhere in Patent Owner’s reply does the term “directly under”
`
`appear. Moreover, Patent Owner’s construction is the one that gives meaning to
`
`region and upper surface (unlike Petitioner’s). In assessing whether Patent
`
`Owner’s construction is right, Patent Owner asks the Board to focus on what
`
`Patent Owner has said, and not the straw man that Petitioner chose to respond to.
`
`5
`
`

`

`
`Date: January 29, 2019
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00386
`Patent 9,490,411
`
`Respectfully submitted,
`
`
`
`
`
`/ Martin M. Zoltick /
`Martin M. Zoltick, Reg. No. 35,745
`ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: mzoltick@rfem.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
`6
`
`

`

`Case IPR2018-00386
`Patent 9,490,411
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 29th day of January, 2019, a true and correct
`
`copy of the foregoing PATENT OWNER’S SUR-REPLY, along with
`
`EXHIBITS 2021-2028, were served, via electronic mail, upon the following
`
`counsel of record for Petitioner Vizio, Inc.:
`
`Gabrielle E. Higgins
`James L. Davis, Jr.
`Christopher M. Bonny
`James F. Mack
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: 650-617-4000 | Facsimile: 650-566-4090
`Emails: Gabrielle.Higgins@ropesgray.com
`James.L.Davis@ropesgray.com
`Christopher.Bonny@ropesgray.com
`James.Mack@ropesgray.com
`VIZIO2NichiaIPRs@ropesgray.com
`
`Scott McKeown
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006-6807
`Phone: 202-508-4740 | Facsimile: 617-235-9492
`Email: Scott.McKeown@ropesgray.com
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`
`
`
`
`
`
`

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