`
` Paper ____
`
` Date filed: January 8, 2019
`
`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
`_______________
`
`SECOND DECLARATION OF DR. E. FRED SCHUBERT IN SUPPORT OF
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`NICHIA EXHIBIT 2030
`Vizio, Inc. v. Nichia Corp. Case
`IPR2018-00437
`
`
`
`TABLE OF CONTENTS
`
`Schubert Declaration
`IPR2018-00437
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`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`INTRODUCTION ..................................................................................... 1
`
`QUALIFICATIONS .................................................................................. 1
`
`MATERIALS CONSIDERED .................................................................. 2
`
`SUMMARY OF OPINIONS ..................................................................... 2
`
`TECHNOLOGY BACKGROUND .......................................................... 4
`
`THE CLAIMS ARE SUPPORTED BY ADEQUATE § 112
`WRITTEN DESCRIPTION ...................................................................... 4
`
`A.
`
`B.
`
`C.
`
`Claim 27 ................................................................................................ 5
`
`Claim 28 ..............................................................................................15
`
`Claim 31 ..............................................................................................15
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`VII.
`
`The Amendments Do Not Broaden the Claims .......................................20
`
`VIII.
`
`A.
`
`B.
`
`A.
`
`B.
`
`Claim 27 ..............................................................................................20
`
`Claim 28 ..............................................................................................22
`
`THE PROPOSED CLAIMS SATISFY § 103 AND WOULD
`NOT HAVE BEEN OBVIOUS ..............................................................23
`
`Petitioner’s Obviousness Challenge is Deficient ................................23
`
`Hsu fails to Disclose or Suggest the Claimed Resin Part and
`Coplanarity of the Resin Part and Metal at the Outer Lateral
`Surfaces of the Resin Package ............................................................25
`
`i.
`
`Grounds involving Hsu fail to meet claim limitations
`because Hsu’s encapsulant (sealing member) is not the
`claimed resin part of the resin package .....................................25
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`ii.
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`Grounds involving Hsu fail to meet claim limitations of
`claim 27 because resin package does not consist of the
`resin part and two metal leads ...................................................28
`
`iii.
`
`Secondary references do not cure these deficiencies ................29
`
`C.
`
`Glenn is Not Appropriate Art to cite against Light Emitting
`Devices such as in Claim 31 ...............................................................32
`
`IX.
`
`CONCLUSION .......................................................................................34
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`Schubert Declaration
`IPR2018-00437
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`I.
`
`INTRODUCTION
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`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 previously submitted a declaration in support of the Patent Owner’s
`
`Contingent Motion to Amend in the IPR. I understand that this second declaration
`
`will be submitted in support of the Patent Owner’s Reply to Petitioner’s
`
`Opposition to Patent Owner’s Contingent Motion to Amend.
`
`3.
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`The facts and opinions I have expressed herein are true and accurate
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`to the best of my knowledge and understanding based on the information I have
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`reviewed to date.
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`II. QUALIFICATIONS
`
`4.
`
`My qualifications are the same as detailed in my earlier declaration in
`
`support of the Patent Owner’s Contingent Motion to Amend and in support of
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`Patent Owner’s Response, submitted on September 18, 2018. See, e.g., Ex. 2008,
`
`Appendix A (curriculum vitae).
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`III. MATERIALS CONSIDERED
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`5.
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`In preparation of this declaration and the opinions set forth herein, I
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`have considered the Petition filed by VIZIO and the supporting exhibits, including
`
`Dr. Shanfield’s declaration, and the references relied on in the Petition and Dr.
`
`Shanfield’s declaration. I have also considered Petitioner’s Opposition to Patent
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`Owner’s Motion to Amend and Dr. Shanfield’s declaration in support thereof, and
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`the references and materials relied on therein. In addition, I have also considered
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`the documents, data, and other information mentioned in and cited to herein, the
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`cross-examination testimony of Dr. Shanfield, and the Exhibits accompanying
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`Nichia’s Patent Owner Response and Nichia’s Contingent Motion to Amend.
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`Further, I have reviewed the Board’s Institution Decision. My opinions are also
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`based upon my knowledge, education, experience, research, and training in this
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`field that I have accumulated over the course of my career.
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`IV. SUMMARY OF OPINIONS
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`6.
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`It is my opinion that the proposed substitute claims have written
`
`description support in both U.S. Patent Application Serial No. 12/737,940 (the
`
`“ʼ940 Application”; Ex. 2023) and JP2008-225408 (the “JP ʼ408 Application”; Ex.
`
`2021). For the same reason, it is my opinion that the proposed substitute claims do
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`not recite any new matter not disclosed in the two priority documents. Petitioner’s
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`arguments in its opposition and Dr. Shanfield’s testimony do not change my
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`opinion.
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`7.
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`It is also still my opinion that the substitute claims include only
`
`narrowing amendments, contrary to Petitioner’s assertions. In other words, none
`
`of the substitute claims are broader than the original claims. In my opinion, this is
`
`how a person of skill in the art would have understood the scope of the substitute
`
`claims compared to the original claims. Petitioner’s arguments and Dr. Shanfield’s
`
`testimony to the contrary do not change my opinion.
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`8.
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`Finally, it is my opinion that the proposed substitute claims 27-34,
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`which are set forth in the claims appendix (Ex. 2020) attached to the motion to
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`amend and reproduced in my first declaration in support of the motion to amend
`
`(Ex. 2019, ¶63), are not anticipated or rendered obvious by the grounds asserted in
`
`VIZIO’s Opposition to Patent Owner’s Contingent Motion to Amend. Hsu
`
`contains a number of fatal deficiencies that defeat all of the obviousness
`
`challenges. Moreover, for claim 31, Petitioner’s attempt to rely on an integrated
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`circuit (“IC”) reference is misplaced. As the district court found in the Everlight
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`litigation, references such as Glenn would not have been considered by a person of
`
`skill in the art when considering modifications to LED technology. This is because
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`integrated circuits and LEDs have vastly different functions and consequently
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`design considerations. I note that the Federal Circuit affirmed the district court’s
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`finding on this point. Petitioner’s arguments and Dr. Shanfield’s testimony
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`regarding the patentability of the substitute claims do not change my opinion.
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`V. TECHNOLOGY BACKGROUND
`
`9.
`
`A background of the technology is set forth in my Declaration in
`
`Support of Patent Owner’s Contingent Motion to Amend. I have also provided a
`
`detailed technology background in several IPRs regarding a family member of the
`
`’071 Patent. See my declarations, for example, in IPR2017-01608 and IPR2017-
`
`01623. Exhibits 2031, 2032 (Ex. 2030 from IPR2017-01608, ¶¶21-98; Ex. 2724
`
`from IPR2017-1623, ¶¶21-98). I stand by my previous statements (which are
`
`included as exhibits to this report), which show that, at the time of the claimed
`
`invention, LED technology, including design, fabrication process sequence, and
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`device structures of packaged LEDs, was a complicated field, involving many
`
`different competing interests, and for which even small changes in one area could
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`have profound effects in another, making predictability of success difficult.
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`VI. THE CLAIMS ARE SUPPORTED BY ADEQUATE §§§§ 112 WRITTEN
`DESCRIPTION
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`10.
`
`I understand that Petitioner asserts that the proposed contingent claims
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`27-34 lack § 112 written description support. I disagree for at least the reasons
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`detailed below.
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`A. Claim 27
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`11.
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`In my opinion, claim 27 has adequate § 112 written description
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`support showing that the inventors were in possession of the claimed invention. I
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`understand that Petitioner asserts that Figure 12 of the ʼ071 patent supposedly
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`discloses a third metal structure in addition to two leads. In my opinion, that is
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`incorrect. Petitioner’s own annotated Figure 12 supports my opinion. As seen
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`below, Figure 12 does not show any division of the metal into three separate
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`structures. Instead, the underlying arrangement of the leads is obscured by the
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`resin.
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`
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`12. To come up with the alleged three metal structures1, Petitioner and its
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`
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`expert Dr. Shanfield had to rely on inventor notebooks and draft patent drawings
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`that are not part of the specification of the ʼ071 patent. I have been informed that
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`the written description inquiry is an objective inquiry into the four corners of the
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`
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`1 Petitioner’s purported metal structures include both electricity transporting leads
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`(e.g., anode and cathode) and heat transporting thermal metal plates (e.g., heat
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`dissipating boards such as heat sinks).
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`specification from the perspective of a person of skill in the art and thus reliance on
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`extrinsic evidence (i.e., evidence not part of the patent’s disclosure) is improper.
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`With that understanding, it is my opinion that Petitioner is incorrect.
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`13. This is reinforced by Dr. Shanfield’s own testimony.2 It is apparent
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`from Figure 12 that the perspective view of the device illustrates the leads 422
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`arranged on the outer side surface, but that the arrangement of the leads 422
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`underneath the resin 425 in the interior of the resin package is obscured and not
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`illustrated in the figure. Under cross examination, Dr. Shanfield admitted that he
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`had not opined on the shape of the electrode structure under the resin in Figure 12,
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`and that he was not comfortable doing so during his deposition. Ex. 2033
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`(Shanfield Tr.) at 46:21-49:7; id. at 49:3-7 (“I’m not prepared to give that
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`consideration because I’m not comfortable doing it on the spot.”). Because Figure
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`12 in isolation does not clarify the internal structure of the electrodes (that is, the
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`leads), a person of ordinary skill in the art would turn to the specification.
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`14.
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`Importantly, the ʼ071 patent expressly states in discussing the fifth
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`embodiment that “[d]escription of some configurations employing the substantially
`
`same configuration as the light emitting device according to the first embodiment
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`will be omitted where necessary.” Ex. 2023, ¶98; Ex. 2022, ¶98. I have explained
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`
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`2 I have reviewed the transcript of Dr. Shanfield’s cross examination and the
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`relevant statements identified in Nichia’s reply and referred to in this declaration.
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`in my initial declaration that the “process of cutting the lead frame and resin body
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`along notch parts during singulation, to result in a singulated device having two
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`leads” is what is “substantially the same” between first and fifth embodiments. Ex.
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`2019, ¶70. In describing the fifth embodiment, and unlike the first through third
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`embodiments, the ʼ071 patent does not include a lead frame illustration (or any
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`pre-molding illustration) that would illustrate the specific (internal) shape of the
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`leads in the fifth embodiment. Dr. Shanfield admitted that there was no “repeated
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`manufacturing structure used to make multiples illustrated for figure 12 in the
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`patent.” Ex. 2033 (Shanfield Tr.) at 25:16-26:18. That is, illustrations of the lead
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`frame or specific internal lead configuration for the fifth embodiment are not
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`included in the specification. One need only compare Figures 3, 7 and 10
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`(embodiments 1-3) with Figure 12 illustrating a light emitting package according
`
`to the fifth embodiment.
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`15. Notably, the ʼ071 patent says nothing in the description about
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`requiring three metal structures in connection with the fifth embodiment. Because
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`Figure 12 on its own does not show the internal configuration of the leads, a person
`
`of skill in the art would have considered the specification, which for the fifth
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`embodiment expressly instructs the reader to refer back to descriptions of the first
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`embodiment. Ex. 2023, ¶98; Ex. 2022, ¶98. The first embodiment clearly
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`discloses two metal leads and the resin part. Petitioner agrees. Opposition at 6.
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`This supports claim 27, and a person of skill in the art would have understood the
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`ʼ071 patent’s disclosure and the scope of the fifth embodiment in this way.
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`16. Petitioner’s own arguments show the weakness of its § 112 written
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`description challenge. Petitioner points to the disclosure of the leads being
`
`“separated respectively, or jointed.” Opposition at 4; see also Ex. 2022, ¶99; Ex.
`
`2023, ¶99. However, due to misunderstanding what the patent teaches, Petitioner
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`attempts to argue that this support for claims 27 and 28 is somehow “ambiguous.”
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`Id. Petitioner appears to think that “the applications disclose only that the leads
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`may be jointed at the ‘outer side surface 420b’ (instead of being separated into
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`six).” Id. at 5. But what the ’071 patent actually says is this: “In the outer side
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`surface 420b of the resin package 420, the leads 422 are separated into six. The
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`leads 422 may be separated respectively, or jointed.” ’071 Patent, 17:5-6; see also
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`Ex. 2022 ¶99; Ex. 2023 ¶99. In other words, the patent says that the leads are
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`“separated into six” at the outer side surface. Additionally, in the next sentence,
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`the patent explains that the leads 422 (i.e. the “pair of positive and negative leads,”
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`’071 Patent, 9:51-53, see also Ex. 2022 ¶50; Ex. 2023 ¶50) may be respectively
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`separated or jointed; that is, although they are separated into six (as shown in FIG.
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`12) at the outer surface,3 their internal configuration can be that of separate or
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`
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`3 At the outer side surface of the package, the anode may be separated (into
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`multiple metal pieces, e.g. three metal pieces) or jointed (one contiguous metal
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`jointed anodes and cathodes. There is no ambiguity based on the statement
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`identified by Petitioner, and in my opinion the disclosure identified by Petitioner as
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`supposedly “ambiguous” supports Nichia and the proposed substitute claims.
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`17. For instance, the portion of the specification identified by Petitioner
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`states that it is the leads which are separated into six at the outer side surface: it
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`does not state that two leads and a third non-lead metal structure (e.g. a die-
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`bonding pad or heat sink) are so separated, and I see no reason why a skilled
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`person in the art would so construe the language of the patent’s disclosure to come
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`to this conclusion. Where the patent explains that the leads are separated at the
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`outer side surface, it means just that.
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`18. Moreover, as I have explained above, this passage describes a version
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`of the fifth embodiment where the leads are separated at the “outer side surface
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`420b,” but where the respective positive and negative leads are also “jointed.” Ex.
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`1001, 17:4-6; see also Ex. 2022, ¶99; Ex. 2023, ¶99. A person of skill in the art
`
`would have readily appreciated this passage as encompassing a two-lead device,
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`where each of the two leads separates into three parts at the outer surface but is
`
`internally jointed, as is set forth in claims 27 and 28. Contrary to Petitioner’s
`
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`piece). Likewise, at the outer side surface of the package, the cathode may be
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`separated (into multiple metal pieces, e.g. three metal pieces) or jointed (one
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`contiguous metal piece).
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`suggestion, such an arrangement would be operable, as having two leads poses no
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`danger of short circuiting and the ’071 patent expressly instructs that “the
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`insulating resin part is provided between a positive lead and a negative lead, so that
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`it is possible to prevent short circuiting.” ’071 Patent, 4:52-55; see also Ex. 2022,
`
`¶22; Ex. 2023, ¶22. In view of this, a person of ordinary skill in the art would not
`
`think that the ’071 patent teaches practitioners to make devices that would short
`
`circuit. Furthermore, there are advantages that the skilled person would appreciate
`
`from the disclosure that result from this particular configuration. For example,
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`advantages of separated leads include (i) larger notches allowing for easy sawing
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`of resin rather than difficult sawing of metal and (ii) greater mechanical interaction
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`between the resin part and the leads, which improves adhesion. The advantages of
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`internally jointed positive and negative leads include (i) greater mechanical
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`integrity of the metal lead frame and (ii) larger lead area (e.g. on a bottom surface)
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`allowing for easier soldering. A person of skill in the art would have understood
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`that the fifth embodiment encompasses a configuration where the leads are
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`separated into six at the outer side surface (as illustrated in Figure 12) and where
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`they are each internally jointed (as described at column 17, lines 5-6).
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`19. Petitioner’s opposition also incorrectly asserts that a jointed
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`configuration would be inoperable. Opposition at 5. Dr. Shanfield makes a similar
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`assertion. Ex. 1017 (Shanfield Dec.) at ¶51. They are incorrect. A person of skill
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`in the art would have understood that an LED chip (light emitting diode chip) is a
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`diode (two-terminal device) with two electrical contacts, an anode contact and
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`cathode contact that are connected to the anode lead and cathode lead, respectively.
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`A person of skill in the art would also have understood that the patent’s reference
`
`to “separated” or “jointed” leads is not meant to short-circuit the anode and
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`cathode. Indeed, as I explained above, the patent itself teaches that the positive
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`and negative leads have insulating resin between them to prevent a short circuit.
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`Instead, a person of skill in the art would have understood that each lead could be
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`one contiguous piece (“jointed”) at the interior of the package, while branching
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`into different portions at the perimeter of the package. In the alternative version of
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`the fifth embodiment described in the ’071 patent, the separation at the outer
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`surface may continue into the interior of the package. The ’071 patent makes clear
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`that the number of places that the leads are exposed from the package does not
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`dictate the number of leads within the package. For example, Figures 1 and 6
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`show devices with two jointed leads at the interior of the package, while being
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`separated into four portions at the perimeter of the package. Likewise, Figures 9,
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`11, and 13 show devices with two jointed leads at the interior of the package, while
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`being separated into two portions at the perimeter of the package. It would have
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`been apparent to a person of skill in the art that these devices are, even if the
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`respective positive and negative leads are jointed, fully functional devices that are
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`not short-circuited.
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`20.
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`In a similar manner, a person of ordinary skill in the art would
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`understand the description of the fifth embodiment to encompass a device that has
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`two jointed leads at the interior of the package, while being separated into six
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`portions at the perimeter of the package. To illustrate that such a device would be
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`operational, I have annotated figures from the ʼ071 patent in my description below.
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`As an initial matter, however, I do not understand that Petitioner is making an
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`enablement argument, but for clarity I am responding to the mistaken argument
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`that the “jointed” configuration described for the fifth embodiment would not be
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`operational. In the first example below, I have shown the lead frame from Figure 3
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`and the resulting device, with the exposed metal portions colored to show the
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`portions that the leads are separated into at the outer side surface. In the second
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`example below, I have shown a possible lead frame design for the fifth
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`embodiment (as one of ordinary skill in the art would have understood from the
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`description) and the resulting device, with the exposed metal portions colored to
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`show the portions that the leads are separated into at the outer side surface. As is
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`clear in this example, there are two leads (i.e. the positive and negative leads are
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`respectively jointed in the interior of the resin package), and the resulting device
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`does not suffer from a short circuit.
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`FIG. 3 (cropped and annotated)
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`
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`Two internal leads separated into
`four portions at outer side surface.
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`(Resulting device)
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`
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`Two internal leads separated into
`six portions at outer side surface.
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`
`
`
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`One possible jointed lead frame for
`fifth embodiment as described4
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`The sequence of figures shown above demonstrates that a slight re-configuration of
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`(Resulting device)
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`the lead frame illustrated in FIG. 3, e.g. a re-configuration by inclusion of a metal
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`bridge, results in leads that are “separated” into six at the perimeter and internally
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`“jointed” as described in the patent for the fifth embodiment. Dr. Shanfield has
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`4 Note that to create the step that is shown, half-etching may be employed from the
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`bottom surface of the lead frame, consistent with the patent’s disclosure. This
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`feature is not visible in the view of the lead frame shown.
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`acknowledged (e.g., Ex. 2033 (Shanfield Tr.), 18:15-17) that “[t]here are many
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`lead frame designs which result in” the leads looking like they do in Figure 12.
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`Some of these possible lead frame designs may include an “X” shape (as he
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`contends), although the ’071 patent does not appear to describe this shape in detail.
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`Notwithstanding, to the extent that the “X” shape identified by Petitioner is present
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`in Figure 12, that does not affect my opinion that the disclosure of the patent (e.g.
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`the disclosure relating to the leads being separated into six at the outer side surface
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`and also either separated or jointed internally) supports the amended claims. As I
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`have explained, the disclosure describes multiple alternative configurations for the
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`fifth embodiment. Even if Figure 12 were to represent an “X” shape design, a
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`person of ordinary skill in the art would still understand the fifth embodiment to
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`encompass each of the alternative configurations described in the specification
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`text. Accordingly, my opinion does not change even if Figure 12 includes the “X”
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`shape design as alleged by Petitioner, and shown in various drawings not included
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`in the ’071 patent.
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`21. Petitioner’s arguments regarding elements [27.D]-[27.H] are premised
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`on its incorrect interpretation of Figure 12 and specification of the ʼ071 patent and
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`therefore also fail for the same reasons.
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`B. Claim 28
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`22. Petitioner’s arguments concerning claim 28, and specifically the
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`combination of elements [28.A] and [28.D]-[28.H], are incorrect for the same
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`reasons as its challenge to claim 27. Petitioner asserts that [28.A] is not supported
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`by the fifth embodiment because Figure 12 allegedly discloses three distinct metal
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`structures and that the fifth embodiment is therefore limited to three distinct metal
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`structures. Opposition at 7-8. As noted above, that is wrong.
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`C. Claim 31
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`23. Petitioner’s argument against claim 31 simply incorporates by
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`reference its arguments from a separate IPR. Opposition at 8. I understand that is
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`improper. Setting this aside, however, Petitioner’s challenge is incorrect on the
`
`merits. In my opinion, Figure 11 indisputably shows an upper surface and bottom
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`surface having an etched concave portion. As shown below, for the portion of the
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`leads shown in yellow and red, the curved surfaces are the upper and lower
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`surfaces of that portion of the leads. It is also uncontroverted that those curved
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`portions are etched.
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`24. Petitioner’s argument appears to be premised on an incorrect and
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`convoluted interpretation of what qualifies as the upper and bottom surfaces of the
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`leads. First, Petitioner argues that “in a related ’250 patent proceeding, PO
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`distinguished concave portions on an inner side wall surface from a top surface of
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`the lead frame.” IPR2018-00386, Reply to Patent Owner’s Response at 10-11
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`(cleaned up) (citing Ex. 1025, IPR2017-02011, Pap. 12 at 7, 46-47). Petitioner
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`draws the wrong conclusion from Lowe’s failure to appreciate what the claim
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`language of a different claim in a different patent meant. (I understand that the
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`PTAB denied institution as to claim 12 in the IPR2017-02011 brought by Lowe’s,
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`that Petitioner here is making reference to.) The statement that Petitioner refers to
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`is pointing out the deficiencies in another petition. The petitioner in that petition
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`tried to show that method claim 12 of a related patent, U.S. 8,530,250, was
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`obvious, where claim 12 required that “a[n] inner side wall surface of the lead
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`frame surrounding the at least one notch comprises concave portions.” To do so,
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`the petitioner there referred to a top view of a lead frame that had planar, step
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`faces, but no concave portion as claimed. See IPR2017-02011, Pap. 12 at 7, 46-47
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`(Nichia’s preliminary response). In the preliminary response, Nichia stated (and
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`the Board apparently credited) that “[i]t is apparent from a careful reading of the
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`claims and from Figs. 2A, 2B and 4B of Koung, that no concave portions
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`comprised in an inner side wall surface of the lead frame as claimed are shown.”
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`Id. at 47.
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`25. Nothing in Nichia’s preliminary response in IPR2017-02011 can
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`plausibly be read as to somehow re-define the plain and ordinary meaning of the
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`term upper surface. Indeed, as I just stated, Nichia’s position was that a different
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`prior art reference (Koung, US 2008/0261339) showed flat, planar sides and did
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`not have a concave portion as claim 12 of the different patent at issue required (that
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`is, a concave portion of an inner side wall surface of the lead frame surrounding
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`the at least one notch). The Board apparently agreed, as it denied institution as to
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`claim 12 (but instituted on other claims).
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`26. Moreover, even crediting Petitioner’s contention, for the sake of
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`argument, Petitioner has not explained why a concave portion of an inner side wall
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`surface of a lead frame (pre-singulation) cannot result in a device (post-
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`singulation) with a lead having an upper surface with a concave portion. In fact,
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`that appears to be what the magnified version of Figure 11 above shows. The
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`concave portion of the lead’s upper surface extends to the outer periphery of the
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`device, and is visible from the outer side surface. Thus, the portion of the lead’s
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`upper surface that is concave and that intersects with the resin package’s outer
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`lateral surface, can be considered a concave portion of the outer side surface. That
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`does not mean that this concave portion is a side surface and incapable of being
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`part of an upper surface. Petitioner cannot and does not explain how Nichia’s
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`previous statements present an inconsistency, because there is none.
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`27. Additionally, Petitioner (in a paper in a different IPR that Petitioner is
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`here attempting to incorporate) has argued that creating a concavity in the upper
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`surface creates a new surface, and that new surface cannot be an upper surface.
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`IPR2018-00386, Reply to Patent Owner’s Response at 10 (“The
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`concavity/convexity shown in Figure 11 is a side surface, a different surface
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`distinct from the upper surface”). I see nothing in the patent specification that re-
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`defines the term surface, or the term upper surface, or the term bottom surface, or
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`the term side surface, and therefore the plain and ordinary meaning controls.
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`Petitioner on the one hand appears to agree, as they have not provided any claim
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`construction for those terms. However, on the other hand, Petitioner takes the odd
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`position that a concavity/convexity must create a distinct surface because when
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`describing a different feature in a LED device, the patent introduces terms first,
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`second, third, and fourth surfaces to explain the step shown in FIG. 11. Id. at 9-10.
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`This argument does not hold water, as it introduces artificial definitions of the
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`surface terms that are not clearly present in the specification or claims.
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`28.
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`Indeed, it is clear that in Figure 11, for that particular portion of the
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`lead, that the yellow portions constitute an upper surface. Drawing a line through
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`that portion of the lead along a Y-axis (vertical axis) shows that the yellow surface
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`is on the upper surface of the lead along that line.
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`This provides adequate § 112 written description support in my opinion.
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`29. This is also consistent with the disclosure of the ʼ071 patent, which
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`simply refers to those surfaces as being concavities and convexities. Ex. 2022,
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`¶97; Ex. 2023, ¶97. There is no discussion in the ʼ071 patent of the identified
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`surfaces in Figure 11 not being an upper surface of the leads. That is, in my
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`opinion there is nothing in the ʼ071 patent that supports Petitioner’s argument that
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`because a surface was formed by etching, it cannot be considered an upper surface
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`(as claimed), particularly where that surface is the top of that portion of the lead.
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`VII. THE AMENDMENTS DO NOT BROADEN THE CLAIMS
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`A. Claim 27
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`30. Petitioner argues that the change from metal plate to metal lead
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`broadens the claim. I disagree with this assertion.
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`31. First, Petitioner’s argument is premised on an elided quote from the
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`specification of the ʼ071 patent. Specifically, Petitioner argues that “‘a metal
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`plate’ is a ‘flat plate shape . . . which [may have] differences in level or concavity
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`and convexity” and asserts that a metal lead is not so limited. Opposition at 9. But
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`the full sentence reads: “[a]lthough a metal plate of a flat plate shape can be used
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`for a lead frame, a metal plate in which differences in level or concavity and
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`convexity are