Paper 15
`
`Trials@uspto.gov
`Entered: June 26, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent 9,490,411 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: June 26, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent 9,490,411 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2018-00386
`Patent No. 9,490,411 B2
`
`INTRODUCTION
`I.
`VIZIO, Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
`
`requesting inter partes review of claims 1–3, 5–8, 10, 13, and 15–20 of U.S.
`Patent No. 9,490,411 B2 (Ex. 1001, “the ’411 patent”). Paper 1 (“Pet.”).
`Nichia Corporation (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`Having considered Petitioner’s Petition and Patent Owner’s Preliminary
`Response, we conclude that the information presented in the Petition
`establishes a reasonable likelihood that Petitioner would prevail with respect
`to at least one of the challenged claims. Accordingly, we institute an inter
`partes review for claims 1–3, 5–8, 10, 13, and 15–20 of the ’411 patent.
`
`
`II.
`
`BACKGROUND
`
`A. Real Party-in-Interest
`Among other requirements, 35 U.S.C. § 312(a)(2) provides that a
`petition for inter partes review “may be considered only if . . . the petition
`identifies all real parties in interest.” There is no bright line test for
`determining whether an unnamed entity qualifies as a real party-in-interest,
`although a common consideration is whether the unnamed entity could have
`exercised control over a party’s participation in an inter partes review.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 58 (Aug. 14, 2012);
`
`2
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`IPR2018-00386
`Patent No. 9,490,411 B2
`see also Zoll Lifecor Corp. v. Philips Elects. N. Am. Corp., Case IPR2013-
`00609 (PTAB Mar. 20, 2014) (Paper 15) (“The non-party’s participation
`may be overt or covert, and the evidence may be direct or circumstantial, but
`the evidence as a whole must show that the non-party possessed effective
`control from a practical standpoint.”).
`Petitioner identifies VIZIO, Inc. as the sole real party-in-interest. Pet.
`5. Patent Owner contends Petitioner failed to disclose all real parties-in-
`interest based on a report that lists the same business address and phone
`number for VIZIO and AmTRAN Technology Co., Ltd. (Prelim. Resp. 29–
`30 (citing Ex. 2008)) and “[d]ocuments filed by V[IZIO] with the SEC in
`October 2015 [that] indicate that AmTran is a ‘related party’” (Prelim. Resp.
`28 (citing Ex. 2007)). Further, Patent Owner states that “publicly available
`information suggest that V[IZIO] does not itself manufacture televisions.”
`Prelim. Resp. 28.
`The evidence suggesting that VIZIO and AmTRAN may have (or
`have had in 2015) a business relationship does not establish that AmTRAN
`should have been named a real party-in-interest. Patent Owner has not
`directed us to any evidence that AmTRAN assisted in, financed, or exerted
`any control over the Petition filed in this proceeding.
`We note that Patent Owner has presented the same evidence and
`arguments in other inter partes review proceedings. See VIZIO, Inc. v.
`Nichia Corp., Case IPR2017-01623, Paper 8 at 60–61 (PTAB Oct. 13,
`2017); VIZIO, Inc. v. Nichia Corp., Case IPR2017-01623, Paper 8 at 59–61
`(PTAB Oct. 13, 2017). Consistent with previous decisions from the Board
`and based on the current record in this proceeding, we determine that the
`evidence currently of record is not sufficient to support an allegation that
`Petitioner has failed to satisfy its obligation to name all real parties-in-
`
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`IPR2018-00386
`Patent No. 9,490,411 B2
`interest. See VIZIO, Inc. v. Nichia Corp., Case IPR2017-01608, Paper 10 at
`2–4 (PTAB Jan. 11, 2018); VIZIO, Inc. v. Nichia Corp., Case IPR2017-
`01623, Paper 11 at 3–4 (PTAB Jan. 11, 2018).
`
`B. Related Proceedings
`Petitioner identifies the following matters related to the ’411 patent:
`Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-1453-JRG (E.D. Tex.) (lead),
`consolidated with Nos 2:16-cv-1452-JRG, 2:16-cv-1454-JRG, 2:16-cv-
`1455-JRG, 2:16-cv-616-JRG, 2:16-cv-875-JRG, 2:16-cv-00246-JRG, 2:16-
`cv-00613-JRG, 2:16-cv-00615-JRG, 2:16-cv-00616-JRG, and 2:16-cv-
`00875-JRG. Pet. 5.
`Petitioner also states that Patent Owner has asserted U.S. Patent No.
`8,530,250, which is related to the ’411 patent, against a different party in
`Nichia Corp. v. Everlight Electrics Co., No. 2:13-cv-702-JRG (E.D. Tex.);
`Appeal No. 16-1585, 16-1618 (Fed. Cir.), and Petitioner has challenged
`claims of the’250 patent in VIZIO, Inc. v. Nichia Corp., IPR2017-01608,
`IPR2017-01623. Pet. 5–6. Petitioner has also challenged claims of U.S.
`Patent. No. 9,537,071, which is also related to the ’411 patent, in VIZIO, Inc.
`v. Nichia Corp., IPR2017-00437.
`
`C. The ’411 Patent (Ex. 1001)
`The ’411 patent “relates to a light emitting device . . . and to a method
`for manufacturing a light emitting device.” Ex. 1001, 1:18–22. The method
`of manufacturing a light emitting device described in the ’411 patent
`includes sandwiching a lead frame between two molds and transfer-molding
`a thermosetting resin into the molds to form a “resin-molded body.” The
`resin-molded body is then cut along notches in the lead frame to “singulate”
`
`4
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`IPR2018-00386
`Patent No. 9,490,411 B2
`the resin-molded body into individual “resin packages,” each resin package
`having resin molded to leads. Ex. 1001, 3:44–55.
`The ’411 patent states that similar methods in the prior art had
`problems of inadequate adhesion between the resin and the leads such that
`the resin compositions could become detached from the leads after
`singulation. Ex. 1001, 1:42–2:37. To improve adhesion between the resin
`and the leads, some embodiments described in the ’411 patent include a lead
`frame that has been etched. See Prelim. Resp. 7. According to Patent
`Owner:
`This etching may result in concavities in the side surfaces of the
`notches [of the lead frame]. Moreover, when singulated, resin
`is present in the regions below the exposed metal leads at the
`outer lateral surfaces in some embodiments. This improves
`adhesion of the resin part to the metal leads, which is one of the
`stated goals of the ’411 patent.
`Prelim. Resp. 7 (citing Ex. 1001, 2:32–37, 9:37–42, 16:51–54).
`
`D. Challenged Claims
`Petitioner challenges claims 1–3, 5–8, 10, 13, and 15–20 of the ’411
`patent. Independent claim 1 is the only independent claim challenged and is
`reproduced below.
`1. A light emitting device comprising:
`a resin package comprising a resin part and a metal part
`including at least two metal plates, said resin package having
`four outer lateral surfaces and having a concave portion having
`a bottom surface; and
`a light emitting element mounted on the bottom surface
`of the concave portion and electrically connected to the metal
`part,
`
`wherein at least a portion of an outer lateral surface of the
`resin part and at least a portion of an outer lateral surface of the
`metal part are coplanar at an outer lateral surface of the resin
`package,
`
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`IPR2018-00386
`Patent No. 9,490,411 B2
`wherein both a part of the metal part and a part of the
`resin part are disposed in a region below an upper surface of the
`metal part, on four outer lateral surfaces of the resin package,
`and
`
`wherein a notch is formed in the metal part at each of the
`four outer lateral surfaces of the resin package.
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds:
`Claim(s) Challenged
`Prior Art
`Basis
`Anticipation 1–3, 5–8, 13, 15, 19, 20
`Loh1
`Obviousness 1–3, 5–8, 13, 15, 19, 20
`Loh
`Obviousness 10
`Loh and Mori2
`Obviousness 16–18
`Loh and Wang3
`Loh, Wang, and Oshio4 Obviousness 16–18
`
`
`III. PATENTABILITY ANALYSIS
`
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest
`reasonable interpretation standard in inter partes review proceedings).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claims terms are given their ordinary and customary
`meaning as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
`
`
`1 U.S. Patent Publication No. 2008/0012036; publ. Jan. 17, 2008.
`2 U.S. Patent Publication No. 2005/0211991; publ. Sept. 29, 2005.
`3 U.S. Patent Publication No. 2008/0073662; publ. Mar. 27, 2008.
`4 U.S. Patent Publication No. 2005/0280017; publ. Dec. 22, 2005.
`
`6
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`Patent No. 9,490,411 B2
`1257 (Fed. Cir. 2007); see also Phillips. v. AWH Corp., 415 F.3d 1303, 1315
`(Fed. Cir. 2005) (en banc) (“Claims must always be read in light of the
`specification.”). Any special definitions for claim terms or phrases must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Although
`limitations generally are not to be read from the specification into the claims
`(Phillips, 415 F.3d at 1320; In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993)), “[t]he construction that stays true to the claim language and most
`naturally aligns with the patent’s description of the invention will be, in the
`end, the correct construction” (Phillips, 415 F.3d at 1316).
`The parties’ arguments reflect disparate interpretations of the
`following limitations of claim 1, copied below with emphasis added by
`Patent Owner:
`(1)
`“wherein both a part of the metal part and a part of the resin
`part are disposed in a region below an upper surface of the
`metal part, on four outer lateral surfaces of the resin package,”
`and
`“resin package.”
`(2)
`Prelim. Resp. 10.
`
`1. “wherein both a part of the metal part and a part of the
`resin part are disposed in a region below an upper surface
`of the metal part, on four outer lateral surfaces of the resin
`package”
`Neither party expressly advances an interpretation of this limitation,
`
`but the parties’ arguments reflect implicit interpretations. See Prelim. Resp.
`10 (noting that Petitioner did not advance an interpretation; stating “Patent
`Owner identifies this phrase only because it is missing from the cited
`references”). The fact that the parties advance conflicting interpretations is
`
`7
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`IPR2018-00386
`Patent No. 9,490,411 B2
`evidenced by the parties’ arguments regarding the structures depicted in
`Loh’s Figure 7—citing the same structures, Petitioner argues Figure 7
`discloses the disputed limitation while Patent Owner argues Figure 7 does
`not disclose the disputed limitation.
`Loh’s Figure 7 is copied below.
`
`
`Loh’s Figure 7 depicts a lighting package 260 (cited by Petitioner as the
`claimed resin package), a package body 230 (cited by Petitioner as the
`claimed resin part), and leads 206 (cited by Petitioner as the claimed metal
`part including at least two metal plates). Pet. 22 (citing Ex. 1004 ¶¶ 74–79,
`Figs. 5–7).
`The parties generally agree that Loh’s Figure 7 depicts a metal lead in
`contact with resin at the outer lateral surfaces of the resin package.
`Compare, e.g., Prelim. Resp. 16–17, 19 (“what is shown in Loh is only resin
`to the ‘left and right sides’ of a metal part on two of the four alleged outer
`lateral surfaces”), with Pet. 32 (“resin fills the gaps between the leads at the
`outer lateral surfaces”). Based on our current understanding of the parties’
`positions, Patent Owner’s arguments implicitly advance an interpretation of
`the disputed limitation that requires resin below a metal part (see Prelim.
`Resp. 2, 18–20), and Petitioner’s arguments implicitly advance an
`
`8
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`IPR2018-00386
`Patent No. 9,490,411 B2
`interpretation that includes resin between the side surfaces of metal leads.
`Pet. 30–31.5
`Looking to the disputed claim language itself, claim 1 recites, with
`emphasis added, “wherein both a part of the metal part and a part of the resin
`part are disposed in a region below an upper surface of the metal part, on
`four outer lateral surfaces of the resin package.” Notably, claim 1 was
`written to recite “disposed in a region” below an upper surface, which differs
`from simply “disposed below” an upper surface, for example. See Merck &
`Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
`claim construction that gives meaning to all the terms of the claim is
`preferred over one that does not do so.”). Similarly, the claim language
`recites “below an upper surface of the metal part,” which differs from
`simply “below a metal part,” for example. See id.
`Looking to the specification, other than the claim language itself, the
`’411 patent does not use the words a “region below an upper surface of the
`metal part” to describe the invention. In fact, we find no explicit disclosures
`in the ’411 patent of resin disposed under metal leads at the outside surfaces
`of a resin package.
`Copied below is Figure 1 of the ’411 patent.
`
`
`5Our decision reflects our current understanding of the parties’ claim
`interpretations implicit from each party’s arguments. Notably, we are not
`appraised of either party’s specific interpretations, and, at this stage, we do
`not discern whether, for example, Petitioner’s arguments turn on an
`interpretation of the claimed “upper surface of the metal part” as defining a
`plane, whether Petitioner’s arguments turn on an interpretation of “disposed
`in a region” below an upper surface of the metal part, or some other
`interpretation. We are similarly unable to discern with any precision what
`Patent Owner contends “disposed in a region” means in the context of claim
`1, for example.
`
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`IPR2018-00386
`Patent No. 9,490,411 B2
`
`
`
`’411 Patent’s Figure 1
`Figure 1 of the ’411 patent depicts leads 22 at the bottom corners of the resin
`package 20 with resin 26 above, adjacent to, and filling the space between
`leads that are arranged at the bottom corners of outer edges of the resin
`package, without resin below the leads. The other relevant figures of the
`’411 patent depict similar arrangements of resin above and between leads
`that are arranged on the bottom of resin packages, without resin below the
`leads. See, e.g., Ex. 1001, Figs. 6, 9, 11–13. Similarly, the ’411 patent’s
`specification describes leads arranged at the outer, bottom surface of the
`resin package, without reference to resin below the leads. See, e.g., Ex.
`1001, 6:55–69 (“resin package 20 has the outer bottom surface 20a in which
`the leads 22 are arranged [and] outer side surfaces 20b in which part of the
`leads 22 are exposed”).
`
`In addition, the ’411 patent discloses that etching a lead frame can
`create concave and convex shapes in the leads to improve adhesion between
`the leads and the resin. Ex. 1001, 9:28–42, 16:51–54 (“In the cut surface of
`the resin-molded body, the etched leads 322 have a concavity and convexity.
`This concavity and convexity improve adhesion between the resin part and
`leads.”); see Prelim. Resp. 7 (citing Ex. 1001, 2:32–37, 9:37–42, 16:51–54)
`(“etching may result in concavities in the side surfaces of the notches [of the
`
`10
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`IPR2018-00386
`Patent No. 9,490,411 B2
`lead frame]”). Among other things, the specification states that the concave
`and convex shapes improve adhesion by “increas[ing] a bonding area
`between the lead frame and resin-molded body.” Ex. 1001, 9:38–42.
`
`At this stage, reading the claim language in light of the specification
`(including the lack of disclosures of resin below a metal part), we determine
`that the disputed limitation does not require resin below a metal part.
`Although we do not fully interpret the scope and meaning of the disputed
`limitation at this stage, the parties are encouraged to raise the issue at an
`appropriate time during the trial portion of the proceeding.
`
`2. “resin package”
`Patent Owner argues the ’411 patent “expressly defines” the term
`“resin package” as “referring to ‘a singulated light emitting device.’”
`Prelim. Res. 10 (citing Ex. 1001, 3:33–36). We disagree.
`The portion of the specification cited by Patent Owner states “[i]n this
`description, terms such as leads, a resin part, and resin package are used for
`a singulated light emitting device, and terms such as a lead frame and resin
`molded body are used in the stage prior to singulation.” Ex. 1001, 3:33–36.
`Just as that sentence does not define the terms “leads” and “a resin part,” the
`sentence does not define the term “resin package.” Instead, the sentence
`provides context for the specification’s discussions that include those terms,
`but we find nothing in the cited portions of the specification that could
`require reading “singulation” into the claim or to otherwise limit the scope
`of claim 1 to a “post-singulation device,” as argued by Patent Owner
`(Prelim. Resp. 10, 22–23). Beyond noting that the term “resin package”
`does not require singulation or a post-singulation device, we do not formally
`interpret “resin package” at this stage in the proceeding.
`
`11
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`IPR2018-00386
`Patent No. 9,490,411 B2
`
`B. Claim 1
`The Petition includes a limitation-by-limitation comparison of Loh’s
`disclosures to claim 1, presenting both anticipation arguments and
`obviousness arguments, and citing the Declaration of Dr. Stanley R.
`Shanfield in support. Pet. 21–34. In part, Petitioner identifies relevant
`portions of Loh’s disclosures with reference to the annotated versions of
`Loh’s Figures 5, 6, and 7, reproduced below.
`
`Loh’s Figure 5 (Pet. 23)
`(annotations by Petitioner)
`
`
`
`Loh’s Figure 6 (Pet. 23)
`(annotations by Petitioner)
`
`
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`IPR2018-00386
`Patent No. 9,490,411 B2
`
`
`
`Loh’s Figure 7 (Pet. 30)
`(annotations by Petitioner)
`Loh’s Figures 5, 6, and 7 depict a lighting package 260 (cited by Petitioner
`as the claimed resin package), a package body 230 (shaded green by
`Petitioner; cited by Petitioner as the claimed resin part), and leads 204a–6
`and 206a–6 (shaded blue by Petitioner; cited by Petitioner as the claimed
`metal part including at least two metal plates). Pet. 22 (citing Ex. 1004
`¶¶ 74–79, Figs. 5–7). Among the annotations added by Petitioner to Loh’s
`Figure 6 is a red rectangle overlayed onto Loh’s lead frame blank 200', with
`the red rectangle intended to represent lines along which the lead frame is
`cut to trim off external lead frame 201 thereby separating leads 204a–d and
`206a–6 into individual leads. See Pet. 22. Among the annotations added by
`Petitioner to Loh’s Figure 7 are blue lines drawn along the upper edges of
`the four outer lateral surfaces of Loh’s package body 230; Petitioner
`indicates that the blue lines represent the outline of the upper surface of the
`metal part. See Pet. 29–30.
`
`1. “resin package”
`Patent Owner argues “Loh fails to disclose a singulated ‘resin
`package’ as claimed.” Prelim. Resp. 22. According to Patent Owner, Loh
`
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`IPR2018-00386
`Patent No. 9,490,411 B2
`“describes only a ‘modular’ device and makes no reference to singulation or
`a singulated resin package.” Prelim. Resp. 22 (citing Ex. 1004, abstract, ¶ 7
`as “referring to a ‘modular package’ for a light emitting device”).
`As explained above, we disagree with Patent Owner’s interpretation
`of “resin package” as imparting a “singulation” limitation to claim 1.
`Petitioner cites Loh’s disclosure of a “package 260” as a disclosure of the
`claimed resin package, and, other than its singulation arguments, Patent
`Owner does not substantively address Petitioner’s arguments that Loh’s
`“package” discloses a resin package.
`
`2. “wherein both a part of the metal part and a part of the
`resin part are disposed in a region below an upper surface
`of the metal part, on four outer lateral surfaces of the resin
`package”
`As cited by Petitioner (Pet. 22–23), Loh discloses that package body
`230 is molded onto lead frame blank 200' and that external frame 201 may
`subsequently be trimmed off of the lead frame (Ex. 1004 ¶¶ 75–80). More
`specifically, Petitioner states that “Loh teaches that ‘recesses’ between the
`leads are filled with resin (green in Figs. 5, 7), and a resin part is integrally
`molded ‘on/around’ the leadframe, from above the upper surface of the
`leadframe, extending through the leadframe (including in recesses), to the
`bottom surface of the leadframe.” Pet. 27 (citing Ex. 1003 ¶ 82; Ex. 1004
`¶¶ 10, 76, 78). Further, Petitioner states that after molding the package
`body, external leadframe 201 may be trimmed off such that leads 204a–d
`and 206a–d correspond to the claimed “metal part including at least two
`metal plates” (Pet. 22), and Petitioner states that the cut surfaces define the
`claimed four outer lateral surface of the resin package with resin and leads
`being coplanar at the outer lateral surfaces (Pet. 23, 30–31).
`
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`
`Based in part on the arrangement of resin and leads depicted in Loh’s
`Figure 7 and related descriptions, Petitioner argues Loh discloses the
`limitation “wherein both a part of the metal part and a part of the resin part
`are disposed in a region below an upper surface of the metal part, on four
`outer lateral surfaces of the resin package.” Pet. 30–32 (citing Ex. 1003
`¶¶ 85–89; Ex. 1004, Fig. 7). In response, Patent Owner presents its
`arguments that Loh does not disclose that limitation in part with reference to
`Patent Owner’s annotated version of Loh’s Figure 7, reproduced below.
`
`
`Loh’s Figure 7 (Prelim. Resp. 18)
`(truncation and annotations by Patent Owner)
`Patent Owner’s annotated version of Loh’s Figure 7 depicts Loh’s
`
`package body 230 shaded in blue and leads 206 shaded in gray, with “[t]he
`upper surfaces of the metal part [at one outer lateral surface] circled in red.”
`Prelim. Resp. 17. Patent Owner argues that Loh discloses only metal below
`the upper surface of the metal part, such that Loh does not disclose “part of
`the resin part . . . disposed in a region below an upper surface of the metal
`part, on four outer lateral surfaces of the resin package,” as claimed. Prelim.
`Resp. 18. Stated differently, Patent Owner argues “the metal leads that
`extend from the package body 230 on two sides have no resin below them.”
`
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`Prelim. Resp. 2; accord Prelim. Resp. 16 (“In Loh, there is no resin that is
`below the upper surface of the metal part on at least two of the outer lateral
`surfaces of the device.”).
`
`As explained above, we disagree with the claim interpretation implicit
`in Patent Owner’s arguments. Further, we note that Loh discloses etching a
`lead frame (see, e.g., Ex. 1004, ¶¶ 27, 76; see also Ex. 1003, ¶ 109 (noting
`Loh’s disclosures of etching)), and, as cited by Petitioner, Loh discloses
`forming a package body (resin) on and around the lead frame (Pet 23, 26–27,
`30 (citing Ex. 1003 ¶¶ 81–83; Ex. 1004 ¶¶ 75–78, 80, 103, Figs. 5–8)).
`
`Finally, Petitioner presents “alternative” arguments that this limitation
`(and the “coplanar” limitation) would have been obvious to a person of
`ordinary skill in view of Loh. Pet. 32. Patent Owner contends that the
`Petition asserts obviousness with only conclusory allegations and without
`any analysis. Prelim. Resp. 23–26 (citing numerous cases).
`
`In part, the Petition states that “a POSITA would have understood that
`Loh teaches a part of the metal part and a part of the resin part are disposed
`below an upper surface of the metal part on four lateral surfaces” (Pet. 32
`(citing Ex. 1003 ¶ 89; Ex. 1004 ¶¶ 10, 75–76, 88, 93, Figs. 5–7)) and
`“[f]urthermore, at minimum, and alternatively, as discussed (see Element
`1.C), it would have been obvious to a POSITA, that the regions between the
`leads (see Figure 7) are filled with resin” (Pet. 32 (citing Ex. 1003 ¶ 90)).
`Petitioner’s citation “(see Element 1.C)” refers to pages 25–29 of the
`Petition that address the “coplanar” limitation. In that discussion, the
`Petition states “it would have been obvious to a POSITA that the regions
`between the leads (see Figure 7) are filled with resin” such that Loh teaches
`the “coplanar” limitation. Pet. 28–29 (citing Ex. 1003 ¶ 84). The Petition
`states that “[a] POSITA would have understood doing so improves stability
`
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`IPR2018-00386
`Patent No. 9,490,411 B2
`of the package by increasing the bonding area of the leads to the resin part
`and serves to practically hold the leads in place and keep them separated,
`after trimming off external frame 201.” Pet. 29. (citing Ex. 1003 ¶ 84; Ex.
`1004 ¶ 75). Further, the Petition contends that “[f]illing the regions between
`the leads with the same resin as the region above the leads would further
`simplify the manufacturing process, as a single molding step is used to fill
`resin in the regions between and above the leads.” Pet. 29 (citing Ex. 1003 ¶
`84). Moreover, the Petition argues that configuring a resin package to have
`resin extending to each of the outer lateral surfaces of the resin package
`coplanar with the metal part was common and well known (Pet. 29 (citing
`Ex. 1004 ¶¶ 60, 73, 76, 96, Fig. 7; Ex. 1008 ¶¶ 20–21, 24, Fig. 2C; Ex. 1010
`¶¶ 9, 25, Figs. 2a–2f, 3a, 3b, 4a–4g)) and “would have been routine and
`straightforward for a POSITA to do so” (Pet. 29 (citing Ex. 1003 ¶ 84)).
`According to the Petition, “[c]onfiguring a resin package for an LED such
`that the resin extends to each of the outer lateral surfaces of the resin
`package (and thereby is coplanar with a portion of the metal part) was
`common and well-known before the claimed priority date.” Pet. 29.
`
`As such, we understand Petitioner’s obviousness argument to also
`advance an implicit interpretation that the scope of the disputed limitation
`includes resin between the side surfaces of metal leads. We do not
`understand the Petition to advance an obviousness argument based on a
`modification of Loh beyond the “alternative” positions discussed in the
`Petition regarding configuring the resin package to have resin extending to
`each of the outer lateral surfaces of the resin package between the metal
`parts. See Pet. 28–29, 32.
`At this stage of the proceeding, we have not made a final
`determination with respect to the patentability of claim 1 or the construction
`
`17
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`IPR2018-00386
`Patent No. 9,490,411 B2
`of any claim term. However, for the foregoing reasons, we determine that
`the information presented in the Petition establishes that there is a reasonable
`likelihood that Petitioner would prevail in challenging at least claim 1.
`
`C. Claims 2, 3, 5–8, 13, 15, 19, and 20
`Each of claims 2, 3, 5–8, 13, 15, 19, and 20 depends directly or
`indirectly from independent claim 1 and recites limitations regarding the
`arrangement and/or composition of the resin parts and/or the metal parts.
`Ex. 1001 (as examples, claim 2 requires an upper portion of the resin part “is
`formed integrally with” a lower portion of the resin part; claim 3 recites
`“wherein the each of the at least two metal parts is substantially flat”; claim
`5 recites “wherein all upper edges of the metal part are coplanar”). In
`addition to the Petition’s analysis of claim 1, the Petition includes claim-by-
`claim, limitation-by-limitation comparisons of Loh’s disclosures to
`dependent claims 2, 3, 5–8, 13, 15, 19, 20, citing, among other things, Loh’s
`Figures 5 and 7 and the Declaration of Dr. Stanley R. Shanfield. See Pet.
`34–45.
`The Preliminary Response does not substantively address Petitioner’s
`citations and arguments regarding these dependent claims beyond the
`arguments advanced for claim 1. At this stage of the proceeding, we have
`not made a final determination with respect to the patentability of any of
`these claims or the construction of any claim term. However, based on our
`review of the parties’ positions, the evidence of record, and our discussion of
`claim 1 above, we determine that the information presented in the Petition
`establishes that there is a reasonable likelihood that Petitioner would prevail
`in challenging claims 2, 3, 5–8, 13, 15, 19, and 20.
`
`18
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`IPR2018-00386
`Patent No. 9,490,411 B2
`
`D. Claim 10
`Claim 10 depends from claim 1 and further recites “wherein the light
`emitting device further comprises a sealing member that contains two or
`more kinds of phosphors.” In addition to the Petition’s analysis of claim 1,
`the Petition includes a comparison of Loh and Mori to dependent claim 10,
`citing disclosures of phosphors in each reference and the Declaration of Dr.
`Stanley R. Shanfield in support. Pet. 45–49 (citing, e.g., Ex. 1003 ¶¶ 116–
`121; Ex. 1004 ¶¶ 5, 79 (describing “a wavelength conversion material, such
`as a phosphor”), Figs. 5, 7; Ex. 1005 ¶¶ 5 (describing a “conventional design
`in which any color lights are emitted by two kinds of phosphors”), 7, 10–11,
`71 (describing “phosphors 6 for performing wavelength conversion on the
`light emitted”), 84, 87–94, Figs. 1–3, 8, 9). Petitioner also argues, among
`other things, that a person of ordinary skill would have been motivated and
`found it routine and straightforward to use two or more kinds of phosphors
`as taught in Mori with Loh’s teachings to yield the claimed invention. Pet.
`47–49.
`Patent Owner states that Petitioner’s citations of Mori do not address
`the limitations discussed above with respect to claim 1, but the Preliminary
`Response does not otherwise substantively address Petitioner’s citations and
`arguments regarding Mori and claim 10. Prelim. Resp. 26 (“Petitioner
`relies on Mori only for the disclosure of the use of two kinds of phosphors in
`a sealing member”). At this stage of the proceeding, we have not made a
`final determination with respect to the patentability of claim 10 or the
`construction of any claim term. However, based on our review of the
`parties’ positions, the evidence of record, and our discussion of claim 1
`above, we determine that the information presented in the Petition
`
`19
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`IPR2018-00386
`Patent No. 9,490,411 B2
`establishes that there is a reasonable likelihood that Petitioner would prevail
`in challenging claim 10.
`
`E. Claims 16–18
`Claims 16 depends from claim 1 and recites “wherein the metal part
`includes a base portion and a metal layer disposed on each of an upper
`surface and a lower surface of the base portion, the metal layers being made
`of a material that is different from that of the base portion.” Claims 17 and
`18 depend from claim 16 and recite further limitations of the claimed metal
`part. In addition to the Petition’s analysis of claim 1, the Petition includes a
`claim-by-claim, element-by-element comparison of Loh and Wang, and
`“alternatively,” Loh, Wang, and Oshio to dependent claims 16–18, citing
`Wang’s and Oshio’s disclosures of electroplating a lead frame and the
`Declaration of Dr. Stanley R. Shanfield in support. Pet. 49–68 (citing, e.g.,
`Ex. 1003 ¶¶ 122–129; Ex. 1006 ¶¶ 40, 41 (describing “electroplating a layer
`of metal on each . . . outer surface of the lead frames”), 54; Ex. 1007 ¶ 69
`(describing coating leads with different metals and metal alloys, including
`copper, silver, nickel, palladium, and gold).
`Patent Owner states that Petitioner’s citations of Wang and Oshio do
`not address the limitations discussed above with respect to claim 1, but the
`Preliminary Response does not otherwise substantively address Petitioner’s
`citations and arguments regarding Wang, Oshio, and claims 16–18. Prelim.
`Resp. 27 (stating that Petitioner relies on Wang as allegedly teaching
`electroplating the entire lead frame and Oshio as allegedly teaching using a
`metal plating that is different than the base metal and p
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