Filed on behalf of: Nichia Corporation
`
` Paper ____
`
`Date filed: September 18, 2018
`
`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
`
`UNITED STATES PATENT AND TRADEMARK
`OFFICE _______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00437
`Patent 9,537,071
`_______________
`
`DECLARATION OF DR. E. FRED SCHUBERT
`IN SUPPORT OF PATENT OWNER'S RESPONSE
`NICHIA EXHIBIT 2008
`Vizio, Inc. v. Nichia Corp.
`Case IPR2018-00437
`
`

`

`TABLE OF CONTENTS
`
`Schubert Declaration
`IPR2018-00437
`
`I.
`
`Introduction .......................................................................................................... 1
`
`II. Qualifications .................................................................................................... 1
`
`III. Materials considered ......................................................................................... 7
`
`IV. Summary of opinions ....................................................................................... 7
`
`V.
`
`Technology background ................................................................................... 8
`
`VI. Prosecution history .........................................................................................11
`
`VII.
`
`Definition of one of ordinary skill in the art ...............................................12
`
`VIII. Claim construction ......................................................................................15
`
`The term “a resin package comprising a resin part and a metal part” is
`A.
`expressly defined in the specification ...................................................................18
`
`The term “a resin package comprising a resin part and a metal part” is also
`B.
`implicitly defined in the specification through its repeated, consistent, and
`exclusive use .........................................................................................................20
`
`IX. Law .................................................................................................................25
`
`A. Anticipation .................................................................................................25
`
`B. Obviousness .................................................................................................25
`
`X.
`
`Prior art references..........................................................................................32
`
`A.
`
`Loh ...............................................................................................................32
`
`B. Mori .............................................................................................................33
`
`C. Wang ............................................................................................................33
`
`D. Oshio ............................................................................................................33
`
`XI. The claims of the ’071 patent are not unpatentable .......................................34
`
`A.
`
`Claim 1 is not anticipated by Loh (Ground 1) ............................................34
`
`Claim 1 is not obvious in view of Loh (Ground 2) .....................................36
`B.
`XII. Conclusion ......................................................................................................38
`
`i
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`

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`Schubert Declaration
`IPR2018-00437
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is E. Fred Schubert, and I have been retained by counsel for
`
`Patent Owner, Nichia Corporation (“Nichia”), to serve as an expert witness in the
`
`above-captioned proceeding based on a Petition for Inter Partes Review (IPR)
`
`filed by VIZIO, Inc. (the “Vizio Petition” or the “Petition”), which challenges
`
`certain claims in Nichia’s U.S. Patent No. 9,537,071 (the “’071 Patent”).
`
`2.
`
`I understand that this declaration will be submitted in support of the
`
`Patent Owner’s Response in the IPR.
`
`3.
`
`The facts and opinions expressed herein are true and accurate to the
`
`best of my knowledge and understanding based on the information I have reviewed
`
`to date.
`
`II. QUALIFICATIONS
`
`4.
`
`My curriculum vitae (CV) detailing my educational background and
`
`professional experience is enclosed as Appendix A. My CV includes a list of all
`
`publications I have authored, including all publications from the previous ten
`
`years.
`
`5.
`
`I am currently a Full Professor in the Department of Electrical,
`
`Computer, and Systems Engineering at Rensselaer Polytechnic Institute (RPI) in
`
`Troy, New York.
`
`1
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`Schubert Declaration
`IPR2018-00437
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`6.
`
`I received a Master’s Degree in Electrical Engineering from the
`
`University of Stuttgart, Germany, in 1981. I received a Ph.D. degree in Electrical
`
`Engineering from the University of Stuttgart, Germany, in 1986. Subsequent to
`
`my education, starting in 1985, I worked in industry at AT&T Bell Laboratories in
`
`Holmdel and Murray Hill, New Jersey, for ten years. In 1995, I joined academia.
`
`My first position was at Boston University (Boston, MA), where I worked as a full
`
`professor for seven years. In 2002, I joined RPI as a distinguished professor, the
`
`Wellfleet Senior Constellation Professor and Head of the Future Chips
`
`Constellation with appointments in the Department for Electrical, Computer, and
`
`Systems Engineering and the Department for Physics, Applied Physics and
`
`Astronomy. I am the founding Director of the Smart Lighting Engineering
`
`Research Center that is funded by the U.S. National Science Foundation at a
`
`volume of $40 million over 10 years.
`
`7.
`
`I am named as co-inventor in more than 30 U.S. patents and have co-
`
`authored more than 300 publications. I authored the books “Doping in III-V
`
`Semiconductors” (1993), “Delta Doping of Semiconductors” (1996), and the first,
`
`second, and third editions of “Light-Emitting Diodes” (2003, 2006, and 2018); the
`
`latter book is known as a standard textbook in the field of LEDs, and the book has
`
`been translated into Russian, Japanese and Korean. My publications have been
`
`
`
`2
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`Schubert Declaration
`IPR2018-00437
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`well recognized by the technical community as illustrated by the more than 30,000
`
`citations that my publications have received.
`
`8.
`
`I received several awards for my technical contributions. They
`
`include: Senior Member IEEE (1993); Literature Prize of Verein Deutscher
`
`Elektrotechniker for my book “Doping in III-V Semiconductors” (1994); Fellow
`
`SPIE (1999); Alexander von Humboldt Senior Research Award (1999); Fellow
`
`IEEE (1999); Fellow OSA (2000); Boston University Provost Innovation Award
`
`(2000); Discover Magazine Award for Technological Innovation (2000); R&D 100
`
`Award for RCLED (2001); Fellow APS (2001); RPI Trustees Award for Faculty
`
`Achievement (2002 and 2008); honorary membership in Eta Kappa Nu (2004); 25
`
`Most Innovative Micro- and Nano-Products of the Year Award of R&D Magazine
`
`(2007); and Scientific American 50 Award (2007).
`
`9.
`
`My general expertise is in the field of electrical engineering and
`
`applied physics including semiconductor materials, processing, and devices. My
`
`specific expertise is in the field of light-emitting diodes (LEDs), including the
`
`structure, packaging, and manufacture of LEDs. My work has included the design,
`
`growth, fabrication, manufacturing, and testing of semiconductor devices as well
`
`as the employment of these devices in a variety of applications.
`
`10.
`
`I have been working in the field of semiconductor microelectronic and
`
`optoelectronic devices, including light-emitting diodes (LEDs), for more than 30
`
`3
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`

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`Schubert Declaration
`IPR2018-00437
`
`years. I have conducted and directed research in this field, conducted and directed
`
`development in this field, and have published numerous papers, patents, and books
`
`on the topic of LEDs. My research and development activities have included the
`
`packaging, reliability, life-testing, heat-flow, and encapsulation of LEDs. Specific
`
`packaging-related research topics, which I have personally worked and published
`
`on, include the following:
`
`• The encapsulation of LED chips in an LED package using a transparent
`resin, and the control of the refractive index of the transparent resin by the
`inclusion of TiO2 nanoparticles;
`
`
`• The heat flow in LED packages and the thermal management in LED
`packages;
`
`
`• The development of new approaches for the over-voltage protection of
`packaged LEDs without the use of Zener diodes;
`
`
`• The spatial distribution of phosphor in LED packages including the analysis
`of remote-phosphor distributions;
`
`
`• The reliability of LED packages including the lifetime testing under (i)
`elevated temperatures, (ii) enhanced humidity, and (iii) over-current
`conditions; and
`
`
`• Delamination effects of optical thin films under stress conditions occurring
`in optoelectronic packages.
`
`
`
`
`
`4
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`Schubert Declaration
`IPR2018-00437
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`11.
`
`I have made pioneering contributions to the following technical fields:
`
`Delta-doping, resonant cavity light-emitting diodes, enhanced spontaneous
`
`emission in Er-doped Si/SiO2 microcavities, elimination of unipolar heterojunction
`
`band discontinuities, p-type superlattice doping in AlGaN, photonic-crystal light-
`
`emitting diodes, crystallographic etching of GaN, polarization-enhanced ohmic
`
`contacts, delta-doped ohmic contacts, non-alloyed ohmic contacts, omni-
`
`directional reflectors, low-refractive index materials, anti-reflection coatings, light-
`
`emitting diodes with remote phosphors, the efficiency droop in GaInN LEDs, and
`
`solid-state lighting.
`
`12.
`
`I have extensive experience related to the packaging of LEDs. I have
`
`conducted research and published articles on the following:
`
`• the design, fabrication, and testing of LED packages with particular attention
`to the spatial phosphor distribution;
`
`• the design and testing of LED packages with particular attention to the
`thermal management of packaged LEDs; and
`
`• the occurrence of trapped optical modes inside the LED packages.
`
`13.
`
`Furthermore, I pioneered what is now known as the “remote
`
`phosphor” distribution in white LEDs; the associated research article (entitled
`
`“Strongly enhanced phosphor efficiency in GaInN white light-emitting diodes
`
`5
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`Schubert Declaration
`IPR2018-00437
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`using remote phosphor configuration and diffuse reflector cup”) has been cited
`
`more than 300 times.
`
`14.
`
`I have written three editions of a book on LEDs with the second
`
`edition published in 2006; the book contains a chapter dedicated to the packaging
`
`of LEDs.
`
`15. At RPI, I regularly teach a course on LEDs which includes extensive
`
`discussions on the packaging of LEDs. I have guided graduate students and post-
`
`doctoral researchers conducting research on the packaging of LEDs. My work in
`
`industry (AT&T Bell Laboratories) included the packaging of LEDs and lasers,
`
`including minimizing the cost of device packaging processes.
`
`16.
`
`I am the founding director of the Smart Lighting Engineering
`
`Research Center funded by the US National Science Foundation; this center
`
`concerns LEDs and the packaging of these devices to make intelligent or “smart”
`
`lighting systems.
`
`17.
`
`In a previous trial involving Nichia and Everlight, I was found by the
`
`district court to be “a qualified expert witness in the field of light-emitting diode
`
`and semiconductor technology, including packaging.” Exhibit 2024, p. 6 (FF15).
`
`18.
`
`I have trained and guided numerous junior engineers (including
`
`graduate students) in the field of LEDs and have collaborated with numerous
`
`engineers active in the field of LEDs. Accordingly, I know from personal
`
`
`
`6
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`Schubert Declaration
`IPR2018-00437
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`experience the level of ordinary skill in the art and I consider myself to have at
`
`least the same level of skill and experience as the person of ordinary skill in the art
`
`(POSITA) to which the ’071 Patent is directed, and had so as of the time of the
`
`invention (approximately 2008).
`
`III. MATERIALS CONSIDERED
`
`19.
`
`In preparation of this declaration and the opinions set forth herein, I
`
`have considered the Petition filed by VIZIO and the supporting exhibits, including
`
`Dr. Shanfield’s declaration, and the references relied on by the Petition and Dr.
`
`Shanfield. In addition, I have also considered the documents, data, and other
`
`information mentioned and cited to herein, and the Exhibits accompanying
`
`Nichia’s Response. Further, I have reviewed the Board’s Institution Decision. My
`
`opinions are also based upon my knowledge, education, experience, research, and
`
`training in this field that I have accumulated over the course of my career.
`
`IV. SUMMARY OF OPINIONS
`
`20.
`
`It is my opinion that claims 1, 2, 4-9, 11-12, 15-19, 21-23, and 25 of
`
`U.S. Patent No. 9,537,071 (“’071 Patent”) are not anticipated or rendered obvious
`
`by the references cited in VIZIO’s petition. The ’071 Patent discloses a product
`
`made by “singulation” in which multiple devices are cut to form a plurality of
`
`singulated resin packages. All devices disclosed in the ’071 Patent are such
`
`
`
`7
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`Schubert Declaration
`IPR2018-00437
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`singulated devices. The Loh reference does not disclose or suggest that its resin
`
`package is a singulated resin package. Accordingly, Loh neither anticipates nor
`
`obviates the claim because it fails to teach a singulated resin package.
`
`V. TECHNOLOGY BACKGROUND
`
`21. The ’071 Patent relates to a fabrication process sequence for the
`
`packaging of light emitting diodes (“LEDs”). LEDs used in lighting applications
`
`are semiconductor devices made from inorganic (non-carbon-based) materials that
`
`produce light when electrical current flows through them. LEDs provide superior
`
`performance and unique benefits over conventional lighting sources (such as
`
`incandescent and fluorescent lighting sources). These unique benefits include their
`
`high efficiency, compact size, long lifespan, resistance to mechanical impact, lack
`
`of ultraviolet emissions, ultra-fast response times, and the ability to control the
`
`brightness and color of the emitted light.
`
`22.
`
`I have provided a detailed technology background in several IPRs
`
`regarding a family member of the ’071 Patent. (See my declarations in, for
`
`example, IPR2017-01608 and IPR2017-01623.) I stand by my previous
`
`statements, which show that at the time of the claimed invention, the LED industry
`
`was a complicated field, involving many different competing interests, and for
`
`which even small changes in one area could have profound affects in another,
`
`
`
`8
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`

`

`Schubert Declaration
`IPR2018-00437
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`making predictability of success difficult. This is particularly true for LEDs with
`
`their inherently harsh operating conditions.1
`
`23. The challenged claims relate to novel, non-obvious singulated light
`
`emitting devices, which are made using a simple, low-cost method that is
`
`significantly more efficient than prior methods. Ex. 1001, 3:25-30 (“In view of the
`
`above problems, an object of the present invention is to provide a simple and low-
`
`cost method for manufacturing, in a short time, multiple light emitting devices
`
`which has high adhesion between a lead frame and a thermosetting resin
`
`composition.”). One reason that the devices are made significantly more efficient
`
`than prior methods is because of the use of array-based processing, where a single
`
`lead frame results in many different singulated devices. See, e.g., FIG. 5
`
`(illustrating an example of bulk-formed LEDs according to the ’071 Patent):
`
`
`1 The harsh operating conditions include high injection currents, high temperatures
`(>80C), and very high radiation intensities (exceeding the Sun’s intensity by
`hundreds of times).
`
`
`
`
`
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`Schubert Declaration
`IPR2018-00437
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`See also Ex. 1001, 3:33-36, 13:25-27 (“The resin-molded body 24 in which a
`
`plurality of concave parts 27 are formed is cut in the longitudinal direction and
`
`lateral direction….”).
`
`24. The following illustration (based on FIG. 5) shows how multiple
`
`singulated devices can result from a single molded lead frame:
`
`(cutting)
`
`
`
`25. Not only is the disclosed method more efficient, but the resultant
`
`devices do not suffer from delamination problems that existed at the time of the
`
`invention. Ex. 1001, 2:32-37. This is because of adhesion benefits that the ’071
`
`Patent describes. According to some embodiments, the lead frame used to form
`
`the devices has etched notches, which have concavities/convexities in their
`
`sidewall surfaces. See, e.g., Ex. 1001, 9:34-36. These concavities/convexities can
`
`result in improved adhesion between resin and lead frame. See Ex. 1001, 18:35-38
`
`(“The lead frame is provided with the notch parts 21a by etching. Although not
`
`illustrated, a concavity and convexity are formed in the cross-sectional surface of
`
`
`
`10
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`

`

`Schubert Declaration
`IPR2018-00437
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`the notch part 21a.”), 3:51-55 (“resin is filled in the notch parts …”), 9:25-39
`
`(describing etching the lead frame to form “concave-convex shapes” in the cross-
`
`section to improve adhesion); 13:37-41 (“[N]ot only the upper surface of the lead
`
`frame 21, but also the side surfaces corresponding to the notch parts 21a adhere to
`
`the resin-molded body 24, so that the adhesion strength between the lead frame 21
`
`and resin molded body 24 is improved”).2
`
`VI. PROSECUTION HISTORY
`
`26.
`
`I understand that the ’071 Patent was filed October 30, 2015, and
`
`issued January 3, 2017. The ’071 Patent is a continuation of application No.
`
`13/969,182, filed August 16, 2013, which is a continuation of application No.
`
`12/737,940, filed as application No. PCT/JP2009/004170 on August 27, 2009, now
`
`U.S. Patent No. 8,530,250 (the “’250 Patent”). The ’071 Patent also claims the
`
`benefit of JP 2008-2254408, filed September 3, 2008. A Notice of Allowance was
`
`issued on October 13, 2016. Ex. 1002, p. 234.
`
`
`
`
`2 I note that not all etching generates such concavities/convexities (e.g., reactive
`ion etching does not create concavities). The principles of etching, including the
`formation of concavities are taught at universities and are found in various
`teaching documents. See, e.g., “Wet and Dry Etching,” E. Chen (2004), available
`at https://www.mrsec.harvard.edu/education/ap298r2004/Erli%20chen%2
`0Fabrication% 20III%20-%20Etching.pdf > (Ex. 2010).
`
`
`
`11
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`Schubert Declaration
`IPR2018-00437
`
`VII. DEFINITION OF ONE OF ORDINARY SKILL IN THE ART
`
`27.
`
`In connection with Nichia’s lawsuit against Everlight in 2013, for a
`
`related patent, I was asked to consider the asserted claims of Nichia’s patents-in-
`
`suit through the eyes of a hypothetical person of ordinary skill in the art. I was
`
`asked by counsel for Nichia to consider factors such as the educational level and
`
`years of experience, not only of the person or persons who have developed the
`
`products that are the subject of the case, but also of others working in the pertinent
`
`art; the types of problems encountered in the art; the teachings of the prior art;
`
`patents and publications of other persons or companies; and the sophistication of
`
`the technology. I understand that one of ordinary skill in the art is not a specific or
`
`real individual, but rather a hypothetical individual having the qualities reflected
`
`by the factors discussed above. Furthermore, one skilled in the art would be
`
`familiar with the entire prior-art literature. I repeat here my opinion concerning the
`
`hypothetical person of ordinary skill in the art set forth in the Everlight lawsuit, as
`
`set forth below. My opinion in the Everlight lawsuit was with respect to U.S.
`
`Patent No. 8,530,250 (“’250 Patent); that patent is related to the ’071 Patent by a
`
`series of continuation applications.
`
`28. The field relevant to the inventions of the ’071 Patent is
`
`semiconductor and light emitting devices, packaging for such devices, and
`
`manufacturing of such devices. I have trained and guided junior engineers
`
`
`
`12
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`

`Schubert Declaration
`IPR2018-00437
`
`(including graduate students) in the field of LEDs and have collaborated with
`
`engineers active in the field of LEDs. Accordingly, I know from personal
`
`experience the level of ordinary skill in the art.
`
`29. A person of ordinary skill in the relevant field as of the September
`
`2008 priority date of the ’071 Patent would have had (i) a Ph.D. degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 3 years of practical experience in industry; (ii) a Master’s degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 5 years of practical experience in industry; or (iii) a Bachelor’s degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 10 years of practical experience in industry. These descriptions are
`
`approximate, and a higher level of education might make up for less experience,
`
`and vice versa.
`
`30. My understanding is that the Institution Decision does not specifically
`
`define the level of skill and education of a Person of Skill in the Art (“POSITA”) at
`
`the time of the invention. I also understand that Patent Owner does not challenge
`
`Petitioner’s definition for purposes of this proceeding. See Petition, p. 13.
`
`31.
`
`I stand by my previous description of a person of ordinary skill in the
`
`art. Indeed, it is the definition that was adopted by the district court for the ’250
`
`Patent. See Exhibit 2024 at 11 (FF24). I see no reason why the level of skill
`
`
`
`13
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`

`

`Schubert Declaration
`IPR2018-00437
`
`would be different between the ’250 Patent and the ’071 Patent, having reviewed
`
`the specification and claims of each. However, I understand that the definition
`
`used by Dr. Shanfield involves a lower level of skill. I also understand that Nichia
`
`does not challenge Dr. Shanfield’s definition for purposes of this proceeding. I
`
`continue to base my opinion on the nonobviousness of the ’071 Patent claims on
`
`the higher level of skill that I have identified. It is my opinion that a lower level of
`
`skill favors a determination of nonobviousness, because, although the person
`
`having a lower level of skill would have been fully aware of the complex
`
`assessments of all of the relevant factors that would be taken into account when
`
`designing an LED package (as discussed above), that person would generally be
`
`less sophisticated than a more skilled person and less capable of making those
`
`complex assessments when designing an LED package and its fabrication process
`
`sequence.
`
`32. With over 30 years of experience in the field of semiconductor and
`
`light emitting devices, packaging for such devices and manufacturing of such
`
`devices, I am well acquainted with the level of ordinary skill that would have been
`
`required to design, develop, and/or implement the subject matter of the ’071
`
`Patent. I have direct experience with the relevant subject matter and am capable of
`
`rendering an informed opinion regarding what the level of ordinary skill in the art
`
`was for the relevant field as of the relevant time period, as further discussed below.
`
`
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`14
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`Schubert Declaration
`IPR2018-00437
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`I am also capable of rendering an informed opinion regarding what one of ordinary
`
`skill in the art would have understood as of the relevant time period, including the
`
`meaning of the claim limitations discussed below from the perspective of one of
`
`ordinary skill in the art. I personally qualify as a person of at least ordinary skill in
`
`the art as of the relevant time period, whether using the lower level of skill
`
`proposed by Dr. Shanfield or the higher level of skill that I have articulated.
`
`33. Regardless of the level of skill adopted, in my opinion, the skilled
`
`person in the art, at the time of the ’071 Patent, would have been fully aware of the
`
`complexities of LED package design, and their inherent problems, that I describe
`
`above (although, as I point out, persons of different skill levels would have
`
`different capabilities to deal with these problems). Accordingly, the skilled person
`
`in the art, when viewing the references cited in the Petition, would have had to
`
`consider these oft competing and conflicting design considerations before
`
`modifying any of them.
`
`VIII. CLAIM CONSTRUCTION
`
`34.
`
`I have been asked to provide testimony regarding the claim term
`
`below. Specifically, I provide testimony regarding “a resin package comprising a
`
`resin part and a metal part,” as used in the challenged claims. This term is found in
`
`each of the independent claims (i.e., claims 1, 15, and 16):
`
`1. A light emitting device comprising:
`
`
`
`15
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`

`Schubert Declaration
`IPR2018-00437
`
`a resin package comprising a resin part and a metal part including first and
`second 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
`each of the four outer lateral surfaces of the resin package,
`
`wherein a notch is formed in the metal part at each of the four outer lateral
`surfaces of the resin package,
`
`wherein the resin part is located at left and right sides of a portion of the
`metal part at at least two of the four outer lateral surfaces of the resin
`package, and
`
`wherein each of the first and second metal plates is substantially flat.
`
`*
`
`*
`
`*
`
`15. A light emitting device comprising:
`
`a resin package comprising a resin part and a metal part including first and
`second 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
`each of the four outer lateral surfaces of the resin package,
`
`wherein a notch is formed in the metal part at each of the four outer lateral
`surfaces of the resin package,
`
`wherein the resin part is located at left and right sides of a portion of the
`metal part at at least two of the four outer lateral surfaces of the resin
`package, and
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`wherein all upper edges of the metal part are coplanar.
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`16
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`Schubert Declaration
`IPR2018-00437
`
`*
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`*
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`*
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`16. A light emitting device comprising:
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`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
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`a light emitting element mounted on the bottom surface of the concave
`portion and electrically connected to the metal part,
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`wherein at least a portion of an outer surface of the resin part and at least a
`portion of an outer surface of the metal part are coplanar at an outer bottom
`surface of the resin package,
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`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
`each of the four outer lateral surfaces of the resin package,
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`wherein a notch is formed in the metal part at each of the four outer lateral
`surfaces of the resin package,
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`wherein the resin part is located at left and right sides of a portion of the
`metal part at at least two of the four outer lateral surfaces of the resin
`package, and
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`wherein a lower surface of the metal part is exposed from the resin part in a
`region directly under the light emitting element.
`
`Id. at 19:17-35 and 20:29-21:3 (emphasis added). As I explain below, proper
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`construction of this term resolves the instituted grounds, ultimately confirming the
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`patentability of the challenged claims.
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`35. The ’071 Patent uses the terms “leads” (or metal part), “resin part”,
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`and “resin package” to refer to a singulated light emitting device. That is, it would
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`be clear to a POSITA that the ’071 Patent expressly defines these terms to refer to
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`a singulated light emitting device. Ex. 1001, 3:33-36. This is also apparent from
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`17
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`

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`Schubert Declaration
`IPR2018-00437
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`the entirety of the disclosure of the ’071 Patent, where every disclosed embodiment
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`of a light emitting device is of a singulated light emitting device, and where the
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`problems that the ’071 Patent address relate to delamination problems that occur
`
`during singulation. In other words, in addition to expressly defining this term as
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`being limited to a post-singulation device, the ’071 Patent also implicitly defines
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`the term this way through its repeated usage.
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`A. The term “a resin package comprising a resin part and a metal
`part” is expressly defined in the specification
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`36. The Detailed Description section of the ’071 Patent begins with a
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`summary of problems solved by aspects of the invention, as well as a set of set of
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`definitions for key terms used throughout the specification:
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`In view of the above problems, an object of the present invention
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`is to provide a simple and low-cost method for manufacturing, in
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`a short time, multiple light emitting devices which has high
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`adhesion between a lead frame and a thermosetting resin
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`composition.
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`The present invention is earnestly studied and as a result is finally
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`completed.
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`In this description, terms such as leads, a resin part, and resin
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`package are used for a singulated light emitting device, and terms
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`such as a lead frame and resin molded body are used in the stage
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`prior to singulation.
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`18
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`Schubert Declaration
`IPR2018-00437
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`3:26-37 (emphasis added). In my opinion, this lexicography should govern the
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`scope of the term “a resin package comprising a resin part and a metal part.” The
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`claimed metal part corresponds to the leads that are described here; thus, with
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`respect to each of the term’s sub-components—“resin package,” “resin part,” and
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`“metal part” (leads)—the ’071 Patent expressly says that these sub-components are
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`each used for singulated light emitting devices.
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`37.
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`I understand that words in a claim are generally given their ordinary
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`and customary meaning, but that a patentee may choose to be his own
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`lexicographer. In my opinion, in the entire context of the ’071 Patent, and the
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`challenged claims, the language defining the terms “resin package,” “resin part,”
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`and “metal part” (leads) as referring to a singulated (or post-singulation) device is
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`clear and deliberate. The deliberateness of it is apparent, for example, because the
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`definition occurs at the start of the Detailed Description section of the patent, and
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`the language used is unequivocal that the listed terms are used for singulated
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`devices. The terms are also used consistently throughout the specification in the
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`manner in which they are defined here.
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`38. This understanding is also consistent with the purpose of the ’071
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`Patent and the stated benefits of the challenged claims. Indeed, one of the
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`problems described in the Background Art section, with respect to Patent
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`Document 4, was that “a lead frame and thermosetting resin composition are likely
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`19
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`Schubert Declaration
`IPR2018-00437
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`to be detached upon singulation.” ’071 Patent, 2:35-37. In describing the benefits
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`of an embodiment, the patent explains that “[i]t is not necessary to apply plating
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`processing per singulated light emitting device and it is possible to simplify a
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`manufacturing method.” Id., 3:67-4:3 (emphasis added); see also id. 5:33-36. The
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`patent repeatedly discusses that manufacturing multiple light emitting devices
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`quickly and efficiently is a stated goal. E.g., id., 3:26-30, 3:58-60, 4:41-44, 5:24-
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`26, 5:64-67, 6:16-18