throbber
Filed on behalf of: Nichia Corporation
`
` 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
`
`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
`
`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
`
`i
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`ii.
`
`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
`
`
`
`
`
`
`
`
`
`ii
`
`EXHIBIT 2030
`
`

`

`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 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.
`
`The facts and opinions I have 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 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
`
`Patent Owner’s Response, submitted on September 18, 2018. See, e.g., Ex. 2008,
`
`Appendix A (curriculum vitae).
`
`1
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`III. MATERIALS CONSIDERED
`
`5.
`
`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 in the Petition and Dr.
`
`Shanfield’s declaration. I have also considered Petitioner’s Opposition to Patent
`
`Owner’s Motion to Amend and Dr. Shanfield’s declaration in support thereof, and
`
`the references and materials relied on therein. In addition, I have also considered
`
`the documents, data, and other information mentioned in and cited to herein, the
`
`cross-examination testimony of Dr. Shanfield, and the Exhibits accompanying
`
`Nichia’s Patent Owner Response and Nichia’s Contingent Motion to Amend.
`
`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
`
`6.
`
`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
`
`not recite any new matter not disclosed in the two priority documents. Petitioner’s
`
`
`
`2
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`arguments in its opposition and Dr. Shanfield’s testimony do not change my
`
`opinion.
`
`7.
`
`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.
`
`8.
`
`Finally, it is my opinion that the proposed substitute claims 27-34,
`
`which are set forth in the claims appendix (Ex. 2020) attached to the motion to
`
`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
`
`circuit (“IC”) reference is misplaced. As the district court found in the Everlight
`
`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
`
`integrated circuits and LEDs have vastly different functions and consequently
`
`design considerations. I note that the Federal Circuit affirmed the district court’s
`
`3
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`finding on this point. Petitioner’s arguments and Dr. Shanfield’s testimony
`
`regarding the patentability of the substitute claims do not change my opinion.
`
`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
`
`device structures of packaged LEDs, was a complicated field, involving many
`
`different competing interests, and for which even small changes in one area could
`
`have profound effects in another, making predictability of success difficult.
`
`VI. THE CLAIMS ARE SUPPORTED BY ADEQUATE §§§§ 112 WRITTEN
`DESCRIPTION
`
`10.
`
`I understand that Petitioner asserts that the proposed contingent claims
`
`27-34 lack § 112 written description support. I disagree for at least the reasons
`
`detailed below.
`
`
`
`4
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`A. Claim 27
`
`11.
`
`In my opinion, claim 27 has adequate § 112 written description
`
`support showing that the inventors were in possession of the claimed invention. I
`
`understand that Petitioner asserts that Figure 12 of the ʼ071 patent supposedly
`
`discloses a third metal structure in addition to two leads. In my opinion, that is
`
`incorrect. Petitioner’s own annotated Figure 12 supports my opinion. As seen
`
`below, Figure 12 does not show any division of the metal into three separate
`
`structures. Instead, the underlying arrangement of the leads is obscured by the
`
`resin.
`
`
`
`12. To come up with the alleged three metal structures1, Petitioner and its
`
`
`
`expert Dr. Shanfield had to rely on inventor notebooks and draft patent drawings
`
`that are not part of the specification of the ʼ071 patent. I have been informed that
`
`the written description inquiry is an objective inquiry into the four corners of the
`
`
`
`1 Petitioner’s purported metal structures include both electricity transporting leads
`
`(e.g., anode and cathode) and heat transporting thermal metal plates (e.g., heat
`
`dissipating boards such as heat sinks).
`
`
`
`5
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`specification from the perspective of a person of skill in the art and thus reliance on
`
`extrinsic evidence (i.e., evidence not part of the patent’s disclosure) is improper.
`
`With that understanding, it is my opinion that Petitioner is incorrect.
`
`13. This is reinforced by Dr. Shanfield’s own testimony.2 It is apparent
`
`from Figure 12 that the perspective view of the device illustrates the leads 422
`
`arranged on the outer side surface, but that the arrangement of the leads 422
`
`underneath the resin 425 in the interior of the resin package is obscured and not
`
`illustrated in the figure. Under cross examination, Dr. Shanfield admitted that he
`
`had not opined on the shape of the electrode structure under the resin in Figure 12,
`
`and that he was not comfortable doing so during his deposition. Ex. 2033
`
`(Shanfield Tr.) at 46:21-49:7; id. at 49:3-7 (“I’m not prepared to give that
`
`consideration because I’m not comfortable doing it on the spot.”). Because Figure
`
`12 in isolation does not clarify the internal structure of the electrodes (that is, the
`
`leads), a person of ordinary skill in the art would turn to the specification.
`
`14.
`
`Importantly, the ʼ071 patent expressly states in discussing the fifth
`
`embodiment that “[d]escription of some configurations employing the substantially
`
`same configuration as the light emitting device according to the first embodiment
`
`will be omitted where necessary.” Ex. 2023, ¶98; Ex. 2022, ¶98. I have explained
`
`
`
`2 I have reviewed the transcript of Dr. Shanfield’s cross examination and the
`
`relevant statements identified in Nichia’s reply and referred to in this declaration.
`
`
`
`6
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`in my initial declaration that the “process of cutting the lead frame and resin body
`
`along notch parts during singulation, to result in a singulated device having two
`
`leads” is what is “substantially the same” between first and fifth embodiments. Ex.
`
`2019, ¶70. In describing the fifth embodiment, and unlike the first through third
`
`embodiments, the ʼ071 patent does not include a lead frame illustration (or any
`
`pre-molding illustration) that would illustrate the specific (internal) shape of the
`
`leads in the fifth embodiment. Dr. Shanfield admitted that there was no “repeated
`
`manufacturing structure used to make multiples illustrated for figure 12 in the
`
`patent.” Ex. 2033 (Shanfield Tr.) at 25:16-26:18. That is, illustrations of the lead
`
`frame or specific internal lead configuration for the fifth embodiment are not
`
`included in the specification. One need only compare Figures 3, 7 and 10
`
`(embodiments 1-3) with Figure 12 illustrating a light emitting package according
`
`to the fifth embodiment.
`
`15. Notably, the ʼ071 patent says nothing in the description about
`
`requiring three metal structures in connection with the fifth embodiment. Because
`
`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
`
`embodiment expressly instructs the reader to refer back to descriptions of the first
`
`embodiment. Ex. 2023, ¶98; Ex. 2022, ¶98. The first embodiment clearly
`
`discloses two metal leads and the resin part. Petitioner agrees. Opposition at 6.
`
`
`
`7
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`This supports claim 27, and a person of skill in the art would have understood the
`
`ʼ071 patent’s disclosure and the scope of the fifth embodiment in this way.
`
`16. Petitioner’s own arguments show the weakness of its § 112 written
`
`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
`
`attempts to argue that this support for claims 27 and 28 is somehow “ambiguous.”
`
`Id. Petitioner appears to think that “the applications disclose only that the leads
`
`may be jointed at the ‘outer side surface 420b’ (instead of being separated into
`
`six).” Id. at 5. But what the ’071 patent actually says is this: “In the outer side
`
`surface 420b of the resin package 420, the leads 422 are separated into six. The
`
`leads 422 may be separated respectively, or jointed.” ’071 Patent, 17:5-6; see also
`
`Ex. 2022 ¶99; Ex. 2023 ¶99. In other words, the patent says that the leads are
`
`“separated into six” at the outer side surface. Additionally, in the next sentence,
`
`the patent explains that the leads 422 (i.e. the “pair of positive and negative leads,”
`
`’071 Patent, 9:51-53, see also Ex. 2022 ¶50; Ex. 2023 ¶50) may be respectively
`
`separated or jointed; that is, although they are separated into six (as shown in FIG.
`
`12) at the outer surface,3 their internal configuration can be that of separate or
`
`
`
`3 At the outer side surface of the package, the anode may be separated (into
`
`multiple metal pieces, e.g. three metal pieces) or jointed (one contiguous metal
`
`
`
`8
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`jointed anodes and cathodes. There is no ambiguity based on the statement
`
`identified by Petitioner, and in my opinion the disclosure identified by Petitioner as
`
`supposedly “ambiguous” supports Nichia and the proposed substitute claims.
`
`17. For instance, the portion of the specification identified by Petitioner
`
`states that it is the leads which are separated into six at the outer side surface: it
`
`does not state that two leads and a third non-lead metal structure (e.g. a die-
`
`bonding pad or heat sink) are so separated, and I see no reason why a skilled
`
`person in the art would so construe the language of the patent’s disclosure to come
`
`to this conclusion. Where the patent explains that the leads are separated at the
`
`outer side surface, it means just that.
`
`18. Moreover, as I have explained above, this passage describes a version
`
`of the fifth embodiment where the leads are separated at the “outer side surface
`
`420b,” but where the respective positive and negative leads are also “jointed.” Ex.
`
`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,
`
`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
`
`
`piece). Likewise, at the outer side surface of the package, the cathode may be
`
`separated (into multiple metal pieces, e.g. three metal pieces) or jointed (one
`
`contiguous metal piece).
`
`
`
`9
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`suggestion, such an arrangement would be operable, as having two leads poses no
`
`danger of short circuiting and the ’071 patent expressly instructs that “the
`
`insulating resin part is provided between a positive lead and a negative lead, so that
`
`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,
`
`advantages of separated leads include (i) larger notches allowing for easy sawing
`
`of resin rather than difficult sawing of metal and (ii) greater mechanical interaction
`
`between the resin part and the leads, which improves adhesion. The advantages of
`
`internally jointed positive and negative leads include (i) greater mechanical
`
`integrity of the metal lead frame and (ii) larger lead area (e.g. on a bottom surface)
`
`allowing for easier soldering. A person of skill in the art would have understood
`
`that the fifth embodiment encompasses a configuration where the leads are
`
`separated into six at the outer side surface (as illustrated in Figure 12) and where
`
`they are each internally jointed (as described at column 17, lines 5-6).
`
`19. Petitioner’s opposition also incorrectly asserts that a jointed
`
`configuration would be inoperable. Opposition at 5. Dr. Shanfield makes a similar
`
`assertion. Ex. 1017 (Shanfield Dec.) at ¶51. They are incorrect. A person of skill
`
`
`
`10
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`in the art would have understood that an LED chip (light emitting diode chip) is a
`
`diode (two-terminal device) with two electrical contacts, an anode contact and
`
`cathode contact that are connected to the anode lead and cathode lead, respectively.
`
`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
`
`cathode. Indeed, as I explained above, the patent itself teaches that the positive
`
`and negative leads have insulating resin between them to prevent a short circuit.
`
`Instead, a person of skill in the art would have understood that each lead could be
`
`one contiguous piece (“jointed”) at the interior of the package, while branching
`
`into different portions at the perimeter of the package. In the alternative version of
`
`the fifth embodiment described in the ’071 patent, the separation at the outer
`
`surface may continue into the interior of the package. The ’071 patent makes clear
`
`that the number of places that the leads are exposed from the package does not
`
`dictate the number of leads within the package. For example, Figures 1 and 6
`
`show devices with two jointed leads at the interior of the package, while being
`
`separated into four portions at the perimeter of the package. Likewise, Figures 9,
`
`11, and 13 show devices with two jointed leads at the interior of the package, while
`
`being separated into two portions at the perimeter of the package. It would have
`
`been apparent to a person of skill in the art that these devices are, even if the
`
`
`
`11
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`respective positive and negative leads are jointed, fully functional devices that are
`
`not short-circuited.
`
`20.
`
`In a similar manner, a person of ordinary skill in the art would
`
`understand the description of the fifth embodiment to encompass a device that has
`
`two jointed leads at the interior of the package, while being separated into six
`
`portions at the perimeter of the package. To illustrate that such a device would be
`
`operational, I have annotated figures from the ʼ071 patent in my description below.
`
`As an initial matter, however, I do not understand that Petitioner is making an
`
`enablement argument, but for clarity I am responding to the mistaken argument
`
`that the “jointed” configuration described for the fifth embodiment would not be
`
`operational. In the first example below, I have shown the lead frame from Figure 3
`
`and the resulting device, with the exposed metal portions colored to show the
`
`portions that the leads are separated into at the outer side surface. In the second
`
`example below, I have shown a possible lead frame design for the fifth
`
`embodiment (as one of ordinary skill in the art would have understood from the
`
`description) and the resulting device, with the exposed metal portions colored to
`
`show the portions that the leads are separated into at the outer side surface. As is
`
`clear in this example, there are two leads (i.e. the positive and negative leads are
`
`respectively jointed in the interior of the resin package), and the resulting device
`
`does not suffer from a short circuit.
`
`
`
`12
`
`EXHIBIT 2030
`
`

`

`FIG. 3 (cropped and annotated)
`
`Schubert Declaration
`IPR2018-00437
`
`
`
`Two internal leads separated into
`four portions at outer side surface.
`
`(Resulting device)
`
`
`
`Two internal leads separated into
`six portions at outer side surface.
`
`
`
`
`
`One possible jointed lead frame for
`fifth embodiment as described4
`
`The sequence of figures shown above demonstrates that a slight re-configuration of
`
`(Resulting device)
`
`the lead frame illustrated in FIG. 3, e.g. a re-configuration by inclusion of a metal
`
`bridge, results in leads that are “separated” into six at the perimeter and internally
`
`“jointed” as described in the patent for the fifth embodiment. Dr. Shanfield has
`
`
`
`4 Note that to create the step that is shown, half-etching may be employed from the
`
`bottom surface of the lead frame, consistent with the patent’s disclosure. This
`
`feature is not visible in the view of the lead frame shown.
`
`
`
`13
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`acknowledged (e.g., Ex. 2033 (Shanfield Tr.), 18:15-17) that “[t]here are many
`
`lead frame designs which result in” the leads looking like they do in Figure 12.
`
`Some of these possible lead frame designs may include an “X” shape (as he
`
`contends), although the ’071 patent does not appear to describe this shape in detail.
`
`Notwithstanding, to the extent that the “X” shape identified by Petitioner is present
`
`in Figure 12, that does not affect my opinion that the disclosure of the patent (e.g.
`
`the disclosure relating to the leads being separated into six at the outer side surface
`
`and also either separated or jointed internally) supports the amended claims. As I
`
`have explained, the disclosure describes multiple alternative configurations for the
`
`fifth embodiment. Even if Figure 12 were to represent an “X” shape design, a
`
`person of ordinary skill in the art would still understand the fifth embodiment to
`
`encompass each of the alternative configurations described in the specification
`
`text. Accordingly, my opinion does not change even if Figure 12 includes the “X”
`
`shape design as alleged by Petitioner, and shown in various drawings not included
`
`in the ’071 patent.
`
`21. Petitioner’s arguments regarding elements [27.D]-[27.H] are premised
`
`on its incorrect interpretation of Figure 12 and specification of the ʼ071 patent and
`
`therefore also fail for the same reasons.
`
`
`
`14
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`B. Claim 28
`
`22. Petitioner’s arguments concerning claim 28, and specifically the
`
`combination of elements [28.A] and [28.D]-[28.H], are incorrect for the same
`
`reasons as its challenge to claim 27. Petitioner asserts that [28.A] is not supported
`
`by the fifth embodiment because Figure 12 allegedly discloses three distinct metal
`
`structures and that the fifth embodiment is therefore limited to three distinct metal
`
`structures. Opposition at 7-8. As noted above, that is wrong.
`
`C. Claim 31
`
`23. Petitioner’s argument against claim 31 simply incorporates by
`
`reference its arguments from a separate IPR. Opposition at 8. I understand that is
`
`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
`
`surface having an etched concave portion. As shown below, for the portion of the
`
`leads shown in yellow and red, the curved surfaces are the upper and lower
`
`surfaces of that portion of the leads. It is also uncontroverted that those curved
`
`portions are etched.
`
`
`
`15
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`24. Petitioner’s argument appears to be premised on an incorrect and
`
`
`
`convoluted interpretation of what qualifies as the upper and bottom surfaces of the
`
`leads. First, Petitioner argues that “in a related ’250 patent proceeding, PO
`
`distinguished concave portions on an inner side wall surface from a top surface of
`
`the lead frame.” IPR2018-00386, Reply to Patent Owner’s Response at 10-11
`
`(cleaned up) (citing Ex. 1025, IPR2017-02011, Pap. 12 at 7, 46-47). Petitioner
`
`draws the wrong conclusion from Lowe’s failure to appreciate what the claim
`
`language of a different claim in a different patent meant. (I understand that the
`
`PTAB denied institution as to claim 12 in the IPR2017-02011 brought by Lowe’s,
`
`that Petitioner here is making reference to.) The statement that Petitioner refers to
`
`is pointing out the deficiencies in another petition. The petitioner in that petition
`
`tried to show that method claim 12 of a related patent, U.S. 8,530,250, was
`
`obvious, where claim 12 required that “a[n] inner side wall surface of the lead
`
`frame surrounding the at least one notch comprises concave portions.” To do so,
`
`
`
`16
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`the petitioner there referred to a top view of a lead frame that had planar, step
`
`faces, but no concave portion as claimed. See IPR2017-02011, Pap. 12 at 7, 46-47
`
`(Nichia’s preliminary response). In the preliminary response, Nichia stated (and
`
`the Board apparently credited) that “[i]t is apparent from a careful reading of the
`
`claims and from Figs. 2A, 2B and 4B of Koung, that no concave portions
`
`comprised in an inner side wall surface of the lead frame as claimed are shown.”
`
`Id. at 47.
`
`25. Nothing in Nichia’s preliminary response in IPR2017-02011 can
`
`plausibly be read as to somehow re-define the plain and ordinary meaning of the
`
`term upper surface. Indeed, as I just stated, Nichia’s position was that a different
`
`prior art reference (Koung, US 2008/0261339) showed flat, planar sides and did
`
`not have a concave portion as claim 12 of the different patent at issue required (that
`
`is, a concave portion of an inner side wall surface of the lead frame surrounding
`
`the at least one notch). The Board apparently agreed, as it denied institution as to
`
`claim 12 (but instituted on other claims).
`
`26. Moreover, even crediting Petitioner’s contention, for the sake of
`
`argument, Petitioner has not explained why a concave portion of an inner side wall
`
`surface of a lead frame (pre-singulation) cannot result in a device (post-
`
`singulation) with a lead having an upper surface with a concave portion. In fact,
`
`that appears to be what the magnified version of Figure 11 above shows. The
`
`
`
`17
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`concave portion of the lead’s upper surface extends to the outer periphery of the
`
`device, and is visible from the outer side surface. Thus, the portion of the lead’s
`
`upper surface that is concave and that intersects with the resin package’s outer
`
`lateral surface, can be considered a concave portion of the outer side surface. That
`
`does not mean that this concave portion is a side surface and incapable of being
`
`part of an upper surface. Petitioner cannot and does not explain how Nichia’s
`
`previous statements present an inconsistency, because there is none.
`
`27. Additionally, Petitioner (in a paper in a different IPR that Petitioner is
`
`here attempting to incorporate) has argued that creating a concavity in the upper
`
`surface creates a new surface, and that new surface cannot be an upper surface.
`
`IPR2018-00386, Reply to Patent Owner’s Response at 10 (“The
`
`concavity/convexity shown in Figure 11 is a side surface, a different surface
`
`distinct from the upper surface”). I see nothing in the patent specification that re-
`
`defines the term surface, or the term upper surface, or the term bottom surface, or
`
`the term side surface, and therefore the plain and ordinary meaning controls.
`
`Petitioner on the one hand appears to agree, as they have not provided any claim
`
`construction for those terms. However, on the other hand, Petitioner takes the odd
`
`position that a concavity/convexity must create a distinct surface because when
`
`describing a different feature in a LED device, the patent introduces terms first,
`
`second, third, and fourth surfaces to explain the step shown in FIG. 11. Id. at 9-10.
`
`
`
`18
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`
`This argument does not hold water, as it introduces artificial definitions of the
`
`surface terms that are not clearly present in the specification or claims.
`
`28.
`
`Indeed, it is clear that in Figure 11, for that particular portion of the
`
`lead, that the yellow portions constitute an upper surface. Drawing a line through
`
`that portion of the lead along a Y-axis (vertical axis) shows that the yellow surface
`
`is on the upper surface of the lead along that line.
`
`
`
`This provides adequate § 112 written description support in my opinion.
`
`29. This is also consistent with the disclosure of the ʼ071 patent, which
`
`simply refers to those surfaces as being concavities and convexities. Ex. 2022,
`
`¶97; Ex. 2023, ¶97. There is no discussion in the ʼ071 patent of the identified
`
`surfaces in Figure 11 not being an upper surface of the leads. That is, in my
`
`opinion there is nothing in the ʼ071 patent that supports Petitioner’s argument that
`
`because a surface was formed by etching, it cannot be considered an upper surface
`
`(as claimed), particularly where that surface is the top of that portion of the lead.
`
`
`
`19
`
`EXHIBIT 2030
`
`

`

`Schubert Declaration
`IPR2018-00437
`VII. THE AMENDMENTS DO NOT BROADEN THE CLAIMS
`
`A. Claim 27
`
`30. Petitioner argues that the change from metal plate to metal lead
`
`broadens the claim. I disagree with this assertion.
`
`31. First, Petitioner’s argument is premised on an elided quote from the
`
`specification of the ʼ071 patent. Specifically, Petitioner argues that “‘a metal
`
`plate’ is a ‘flat plate shape . . . which [may have] differences in level or concavity
`
`and convexity” and asserts that a metal lead is not so limited. Opposition at 9. But
`
`the full sentence reads: “[a]lthough a metal plate of a flat plate shape can be used
`
`for a lead frame, a metal plate in which differences in level or concavity and
`
`convexity are

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket