UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., and
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00522
`U.S. Patent No. 7,524,087
`__________________
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., and
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00522
`U.S. Patent No. 7,524,087
`__________________
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`B.
`
`I.
`II.
`A.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 1
`Patent Owner’s Response is a Misdirected Request to Reconsider the
`Institution Decision ...................................................................................... 1
`The Board Should Reject Patent Owner’s SAS Analysis as
`Procedurally and Substantively Flawed ....................................................... 3
`Patent Owner’s “Practicing the Prior Art” Argument is Misdirected .......... 4
`C.
`Second Pocket/Cavity ............................................................................... 5
`1.
`Peripheral Sidewall ................................................................................... 8
`2.
`Patent Owner’s Arguments Directed to Kyowa Are Baseless ................... 15
`D.
`Peripheral Sidewall ................................................................................. 16
`1.
`Second Pocket/Cavity ............................................................................. 19
`2.
`Lead Receiving Compartment ................................................................ 21
`3.
`Patent Owner’s Arguments Directed to Matsumura Are Baseless ............ 22
`E.
`Peripheral Sidewall ................................................................................. 22
`1.
`Second Pocket/Cavity ............................................................................. 25
`2.
`Patent Owner’s Additional Substantive Arguments Are Irrelevant .......... 26
`F.
`III. CONCLUSION .............................................................................................. 27
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Anacor Pharmaceuticals, Inc. v. Iancu,
`889 F.3d 1372 ........................................................................................... 2, 15, 23
`Ericsson Inc. v. Intellectual Ventures II LLC,
`
`2015 WL 8633525, (P.T.A.B) ............................................................................. 5
`
`Great W. Cas. Co. v. Intellectual Ventures II LLC,
`2017 WL 376834, (P.T.A.B.) .............................................................................. 5
`
`
`In re Nuvasive, Inc.,
`841 F.3d 966 (Fed. Cir. 2016) ........................................................................ 3, 23
`In re Thorpe,
`
`777 F.2d 695 (Fed. Cir. 1985) ........................................................................... 21
`
`Qualcomm Inc. v. Bandspeed, Inc.,
`
`2016 WL 5105719 (P.T.A.B.) .............................................................................. 5
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .................................................................................... 3, 22
`Statutes
`35 U.S.C. § 314 .......................................................................................................... 2
`35 U.S.C. § 316 .......................................................................................................... 2
`35 U.S.C. § 318 .......................................................................................................... 2
`Other Authorities
`37 C.F.R. § 42.5 ......................................................................................................... 4
`37 C.F.R. § 42.24 ..................................................................................................... 28
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Rather than a Response, Patent Owner’s most recent submission is more
`
`akin to a request that the Board reconsider the Institution Decision. Patent Owner’s
`
`analysis is based on the flawed belief that the Petition, rather than the full trial
`
`record, is the proper basis for the Board’s decision. In addition, the Patent Owner
`
`failed to provide evidence from a declarant to dispute the Board’s preliminary
`
`findings or the testimony of Petitioners’ declarant. Based on the evidence (rather
`
`than attorney argument) within the full record, a final decision of invalidity is
`
`warranted.
`
`II. ARGUMENT
`
`A.
`
`Patent Owner’s Response is a Misdirected Request to Reconsider
`the Institution Decision
`
`The very first sentence of its Response evidences a significant error in Patent
`
`Owner’s reasoning. Patent Owner asserts that it “files this Response to the Petition,
`
`setting forth reasons why the Board should determine that claims 1, 6-8, 15, and 17
`
`of U.S. Patent No. 7,524,087 . . . are not unpatentable, contrary to the Petition for
`
`inter partes review (‘IPR’).”1 (Paper 20 at 1; see also id. at 22, 26, 29, etc.) At this
`
`stage of the proceeding, Patent Owner’s implicit argument that the Petition should
`
`
`
`1
`
`All emphasis herein is added unless otherwise described.
`
`
`
`1
`
`
`
`be treated as the complete record for decision is incorrect. See Anacor
`
`Pharmaceuticals, Inc. v. Iancu, 889 F.3d 1372, 1380-81 (Fed. Cir. 2018). Instead,
`
`once instituted, the full record for decision includes the positions taken and
`
`evidence proffered (including deposition transcripts) post-institution. Id. at 1380;
`
`see also 35 U.S.C. § 316(a)(3) (permitting the “submission of supplemental
`
`information after the petition is filed”).
`
`Patent Owner’s further argument that the Board acted improperly when
`
`allegedly departing from Petitioners’ analysis regarding “peripheral sidewall” is
`
`both procedurally and factually wrong. (Paper 20 at 4, 5.) First, the point is moot,
`
`because the institution stage is over, and therefore, the Institution Decision itself is
`
`not under review. Instead, the sole issue is whether the contested claims are invalid
`
`under the preponderance-of-the-evidence standard. Compare 35 U.S.C. § 314
`
`(providing the standard for institution) with 35 U.S.C. § 316 (setting the
`
`evidentiary standard) and § 318 (requiring “a final decision with respect to . . .
`
`patentability”). Second, the Board expressly relied on the analysis provided in the
`
`Petition and supporting declaration.2 And third, even if Patent Owner’s assertion is
`
`
`
`2
`
`The Board concluded with respect to Kyowa that “[a]lthough we agree that
`
`Petitioner does not provide extensive analysis on how Kyowa teaches a peripheral
`
`
`
`2
`
`
`
`correct, the Board is permitted to go beyond the Petition as written. See In re
`
`Nuvasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016) (“the Board is not limited to
`
`citing only portions of the prior art specifically drawn to its attention”). The
`
`relevant procedural limitation is solely that a patent owner be given an “adequate
`
`opportunity to respond.” Id. at 972. Here, Patent Owner was not only given an
`
`opportunity to respond, but was specifically requested to do so (Paper 10 at 19
`
`(suggesting “further development of the record”).)
`
`B.
`
`The Board Should Reject Patent Owner’s SAS Analysis as
`Procedurally and Substantively Flawed
`
`On August 8, 2018 Patent Owner submitted a Request for Panel Rehearing
`
`alleging a conflict between the Board current practices and the Supreme Court’s
`
`decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). (Paper 12 at 1.) In
`
`particular, Patent Owner asserted that institution may be granted only if a
`
`reasonable likelihood of unpatentability has been established for all claims under
`
`
`
`sidewall, we determine that Petitioner’s arguments and evidence are sufficient for
`
`purposes of institution.” (Paper 10 at 12-13.) Similarly, with respect to Matsumura
`
`the Board concluded that “Petitioner’s statements, arguments, and evidence
`
`concerning Matsumura’s teachings of a peripheral sidewall are sufficient for the
`
`purposes of institution.” (Id. at 18.)
`
`
`
`3
`
`
`
`all grounds. (Id. at 3.) The request was denied based on “the Supreme Court’s
`
`interpretation of the law in SAS.” (Paper 18 at 4.)
`
`The very first argument presented in Patent Owner’s Response after the
`
`Introduction is, in effect, a second request for rehearing on the same basis
`
`previously rejected. (Paper 20 at 8-12.) Patent Owner’s position, which is not
`
`directed to the specific actions taken by this panel, but instead attacks current
`
`Board practice generally, should be rejected. Moreover, even assuming Patent
`
`Owner’s interpretation of the relevant regulations is correct, “[t]he Board may
`
`waive or suspend a requirement of parts 1, 41, and 42.” 37 C.F.R. 42.5.
`
`C.
`
`Patent Owner’s “Practicing the Prior Art” Argument is
`Misdirected
`
`In a section of its Response entitled “Petitioners’ Proposed Claim
`
`Constructions are Wrong and Applied Incorrectly,” Patent Owner confusingly
`
`argues that “[t]he Petition’s defective reliance on Kyowa and Matsumura is
`
`transparently rooted in Petitioners’ effort to show that they are practicing the prior
`
`art.” (Paper 20 at 14-21.) As explained below, this argument fundamentally
`
`misunderstands Petitioners’ reliance on Patent Owner’s litigation positions, which
`
`was solely to address the proper construction of the disputed claim recitations
`
`under the standard applied in this proceeding.
`
`
`
`4
`
`
`
`1.
`
`Second Pocket/Cavity
`
`Rather than present a substantive claim construction analysis (i.e., propose a
`
`construction and provide intrinsic and/or extrinsic evidence to support that
`
`construction), Patent Owner presents a confusing rebuttal to one piece of evidence
`
`relied upon by Petitioners – Patent Owner’s infringement contentions. (Paper 20 at
`
`14-18.) Patent Owner’s failure to address the proper legal issue – the scope and
`
`meaning of the recitation – represents a fatal flaw. Therefore, the Board’s adopted
`
`construction, “a partially enclosed space” (Paper 10 at 6), is undisputed.
`
`In addition, Patent Owner’s underlying criticism is baseless. The Petition
`
`provided a detailed claim-construction analysis. (Paper 2 at 11-14.) As part of that
`
`analysis, Petitioners asserted that an unrecited size restriction should not be
`
`imported into the claims. (Id. at 13-14.) Petitioners supported that position, in part,
`
`based on Patent Owner’s litigation positions. (Id. at 14.) Patent Owner presents no
`
`legal, procedural or even logical basis to exclude its litigation positions from
`
`consideration. Nor does Patent Owner respond to Petitioners’ legal analysis
`
`supporting the relevance of infringement contentions. (Paper 2 at 10-11 (citing
`
`Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00316, 2016 WL 5105719 (P.T.A.B.
`
`Sept. 7, 2016) (paper 39), Great W. Cas. Co. v. Intellectual Ventures II LLC,
`
`IPR2015-01707, 2017 WL 376834, at *6 (P.T.A.B. Jan. 17, 2017) (paper 30);
`
`Ericsson Inc. v. Intellectual Ventures II LLC, IPR2014-00915, 2015 WL 8633525,
`
`
`
`5
`
`
`
`at *3 (P.T.A.B. Dec. 7, 2015) (paper 37).) Plaintiff’s counter-argument, therefore,
`
`lacks merit.
`
`Equally misplaced are Patent Owner’s criticisms that the product depictions
`
`relied upon in its own infringement contentions may be inaccurate and that Dr.
`
`Pecht did not physically inspect the products or molds. (Paper 20 at 15-16). Rather
`
`than the physical characteristics of the accused products, the relevant evidence is
`
`Patent Owner’s interpretation of the claim term as reflected in the infringement
`
`contentions. In other words, Patent Owner’s own interpretations can be used
`
`against it as an admission regarding its understanding of the claim scope.3
`
`Similarly, Patent Owner’s assertion that “Petitioners have not established
`
`with any evidence that the entire [second] pocket/cavity [in the accused
`
`product] . . . is ‘an artifact from the injection molding process’” (Paper 20 at 16)
`
`misses the point. The relevant claim-construction issue is solely whether a size
`
`restriction should be imported into the claim. That issue is unrelated to the specific
`
`
`
`3
`
`Patent Owner implies that Dr. Pecht did not have access to the infringement
`
`contentions (Paper 20 at 16 n.8), but Dr. Pecht explained that he “reviewed the
`
`patent owner’s infringement contentions in the underlying litigation.” (Ex. 1003
`
`(Pecht Decl.) ¶¶33-34.) Indeed, Dr. Pecht provided reproductions of the relevant
`
`images from the contentions in his declaration. (Id.)
`
`
`
`6
`
`
`
`manufacturing steps used to create the allegedly infringing pocket, but instead
`
`focuses on the physical structure.
`
`In addition, Patent Owner seems to misunderstand Dr. Pecht’s analysis and
`
`conclusion. In particular, Dr. Pecht’s explained that “[t]he ‘second pocket’
`
`identified by the patent owner is an artifact left by the injection molding process.”
`
`(Ex. 1003 (Pecht Decl.) ¶34.) As part of his analysis, Dr. Pecht explained that the
`
`circled structure in Patent Owner’s contentions comprised two related structures:
`
`“[the] rough surface of the very central portion [that] indicates the location from
`
`which the injected resin flowed into the cavity” and “[the] larger circle [that]
`
`indicates the shape of the gate itself, which is generally a cylindrical piece of metal
`
`with a small hole in its center through which the resin (in liquid form) passes as it
`
`enters the mold.” (Id.)4 In other words, the gate (or port) leaves two separate
`
`artifacts, one due to the shape of the gate/port extending into the mold and the
`
`other due to hole in the gate/port through which liquid resin enters the mold. (Paper
`
`20 at 17.) Dr. Pecht clarified this issue in his Second Declaration, submitted
`
`herewith. (Ex. 1019 (Second Pecht Decl.) ¶10 (explaining that a person of ordinary
`
`skill would understand the inner rough area and larger circle to both result from the
`
`
`
`4
`
`This description is also consistent with Dr. Pecht’s deposition
`
`testimony. (See Ex. 2006 (Pecht Tr.) at 28:8-19.)
`
`
`
`7
`
`
`
`gate/port).) Patent Owner’s Response fails to address Dr. Pecht’s analysis, and
`
`therefore, rather than a lack of evidence, the record provides unrebutted evidence.
`
`Finally, Patent Owner asserts that Petitioners “offer no evidence to establish
`
`that any artifact resulting from the manufacture of the housing disclosed in Kyowa
`
`and Matsumura would necessarily result in the same artifact [as in the accused
`
`products].” (Paper 20 at 17; see also id. at 17-18 (“In particular, there is no
`
`showing that the manufacturing process in the asserted primary references, Kyowa
`
`and Matsumura, would yield the same geometry as that shown in the disputed
`
`images of Petitioners’ own products on page 14 of the Petition.”).) As an initial
`
`matter, Petitioners note that the relevant grounds are based on obviousness rather
`
`than anticipation. Therefore, the inherency standard (i.e., whether a feature would
`
`be necessarily present) is irrelevant. Moreover, the Board expressly stated that the
`
`claims “do not require particular dimensions or proportions.” (Paper 10 at 13.)
`
`Patent Owner did not dispute that construction or propose an alternative requiring a
`
`specific “geometry.” Therefore, its supposition that the shapes might differ is
`
`irrelevant. Instead, the issue is whether the prior art renders a second pocket/cavity
`
`as construed by the Board obvious, which Patent Owner again leaves unrebutted.
`
`2.
`
`Peripheral Sidewall
`
`Patent Owner next asserts that “Petitioners also err in failing to construe or
`
`properly evaluate the claimed ‘peripheral sidewall.’” (Paper 20 at 18.) What Patent
`
`
`
`8
`
`
`
`Owner appears to object to is Petitioners’ reliance on the claim as written rather
`
`than an express construction in the Petition.5 The point, however, is moot
`
`following the Board’s adoption of an express construction based on Patent
`
`Owner’s own proposal. (Paper 10 at 9.)
`
`In addition, it is important to note that the Board expressly instructed the
`
`parties to “further development of the record” regarding “what structure is required
`
`for the peripheral sidewall to ‘extend between end faces of the housing.’” (Paper
`
`10 at 19.) Patent Owner, however, ignored the Board’s request, which should be
`
`deemed a waiver—thus leaving the Board’s previously adopted construction
`
`undisputed. In addition, to the extent that further analysis of the “extending
`
`between end faces of housing” is deemed necessary, the specification of the ’087
`
`
`
`5
`
`Petitioners note that Patent Owner did not propose construing “peripheral
`
`sidewall” in the underlying litigation, but instead apparently intended to rely on
`
`plain and ordinary meaning. (Ex. 1020 (Claim Construction Statement) at 11.)
`
`Patent Owner’s implicit criticism of plain and ordinary meaning, therefore, is
`
`baseless.
`
`
`
`9
`
`
`
`patent6 confirms that a broad meaning was intended. In particular, as shown by the
`
`dotted lines added to figure 2
`
`(reproduced to the right), the
`
`corresponding structure disclosed for the
`
`preferred embodiment is irregular and
`
`discontinuous, with the relevant
`
`characteristic merely being that the
`
`peripheral sidewall contacts or intersects with both end faces (i.e., extends from
`
`one end face to the other). In fact, Patent Owner’s
`
`own preferred depiction of the housing, figure 4
`
`(reproduced to the right), also shows an irregular
`
`and discontinuous shape that contacts/intersects
`
`both end faces. Thus, under the broadest
`
`reasonable construction, the term means the peripheral sidewalls contact or
`
`intersect with the end faces.
`
`
`
`6
`
`Instead of impermissibly importing limitations from the specification into
`
`the claims, the proper analysis is to interpret the relevant term in view of the
`
`specification.
`
`
`
`10
`
`
`
`In addition to ignoring the Board’s request to develop the record to address
`
`the above-noted claim-construction issue, Patent Owner presents two conflicting
`
`conclusions regarding the scope of “peripheral sidewall” in successive paragraphs
`
`on page 19. (Paper 20 at 19.) In the second paragraph, Patent Owner expressly
`
`adopts the Board’s construction. (Id.) In the first paragraph, however, Patent
`
`Owner argues that “[as] depicted in the ’087 patent, and implicitly recited in claims
`
`1 and 15, the inner portions of the peripheral sidewall 26 of the reflector housing
`
`provide ‘pockets’ or ‘cavities.’” (Id.) Patent Owner, however, fails to acknowledge
`
`the Board’s express rejection of that proposal. (Paper 10 at 8 (“we do not agree
`
`with Patent Owner that the ‘peripheral sidewall’ in claims 1 and 15 is required to
`
`form the walls of the first or second cavities”) (italicized emphasis in original,
`
`underlined emphasis added).) Although Patent Owner could have reargued its
`
`position by presenting an analysis based on intrinsic and/or extrinsic evidence, by
`
`simply pretending the Board did not weigh in on the issue, the Board’s
`
`construction remains unrebutted.
`
`
`
`11
`
`
`
`Patent Owner’s analysis of the ’087 patent’s figure 4 is equally misplaced.
`
`According to the Patent Owner, its
`
`modified version of figure 4
`
`(reproduced in relevant part to the
`
`right) “shows a cross-section of the
`
`peripheral sidewall . . . of the ’087
`
`patent.” (Paper 20 at 20.) The
`
`intentionally oversized red shapes added by Patent Owner, however, do not explain
`
`either Patent Owner’s view of the portions of figure 4 that comprise the preferred
`
`embodiment of a peripheral sidewall, or more importantly the scope of the claim
`
`term. Instead, Patent Owner’s vague box-drawing exercise is irrelevant in view of
`
`the Board’s undisputed construction (i.e., it is the claim term as construed rather
`
`than the depictions of a preferred embodiment in the figures that control). Indeed,
`
`at best Patent Owner’s reliance on figure 4 invites an improper comparison
`
`between the prior art and disclosed embodiments.
`
`Patent Owner’s next argument with respect to “peripheral sidewall” is that
`
`“[w]hen addressing the elements in the Grounds, [Petitioners’] allegations describe
`
`the structure two-dimensionally, as ‘faces’ or ‘areas,’ and avoid the problematic
`
`reality that the blocks alluded to in the references do not have a wall-like
`
`structure.” (Paper 20 at 20; see also id. (“Petitioners’ characterizations fail to
`
`
`
`12
`
`
`
`account for the three-dimensional structure of the claimed ‘sidewall.”).) Patent
`
`Owner’s allegation is both misdirected and illogical. The prior art discloses solid
`
`physical structures rather than theoretical mathematical constructs, and therefore,
`
`are necessarily three-dimensional. (Ex. 1019 (Second Pecht Decl.) ¶¶4-5.) Snippets
`
`from the record out of context cannot change that fact.
`
`Rather than a distinction between two-dimensional and three-dimensional
`
`structures, the underlying dispute appears to be how thick a wall-like structure
`
`must be to fall within the scope of Patent Owner’s vague construction. (Ex. 1019
`
`(Second Pecht Decl.) ¶¶6-7.) As Dr. Pecht explained, “a specific thickness for the
`
`vaguely identified peripheral sidewall would be arbitrary, and not an exercise that a
`
`person having ordinary skill in the art would undertake to determine the existence
`
`or absence of a wall-like feature.” (Id. at ¶6.) As the annotated version of figure 4
`
`reproduced to the right shows, there is
`
`no basis upon which to determine
`
`how thick such a structure must be
`
`even in the preferred embodiment.
`
`(See also Ex. 2006 (Pecht Tr.) 50:20-
`
`51:4; Ex. 1019 (Second Pecht Decl.)
`
`¶¶6-7.) Indeed, as the question mark and dotted arrows in the figure show, the
`
`potential thickness may be effectively zero or the entire width of the package.
`
`
`
`13
`
`
`
`Instead, as Dr. Pecht explained, the analysis “would have been to identify a solid
`
`structure having the external appearance of a wall, which is in my view entirely
`
`consistent with my original declaration and my testimony.” (Ex. 1019 (Second
`
`Pecht Decl.) ¶6.)
`
`Moreover, the care with which the ’087 patent provides exemplary
`
`dimensions corresponding to arrows 70 through 116 (see Table 1) must be
`
`contrasted with the absence of any thickness dimension for a “wall-like” structure.
`
`There is simply no substantive basis to determine how thick a wall-like structure
`
`must be. (Ex. 1019 (Second Pecht Decl.) ¶¶6-7.) And circling back to the vague
`
`red shapes Patent Owner’s counsel added to its modified version of figure 4, other
`
`than suggesting the wall-like structures must have some thickness (as is necessary
`
`for all physical objects), Patent Owner’s counsel provides no rational basis to
`
`determine the metes and bounds of the claim recitation. Instead, Patent Owner
`
`implicitly suggests a comparison of patent figures against prior-art figures, which
`
`is not a proper basis for a validity analysis.
`
`Finally, the Board should reject Patent Owner’s focus on the Petition rather
`
`than the full trial record. In response to Patent Owner’s cross-examination, Dr.
`
`Pecht repeatedly explained the correspondence between the prior art and the
`
`disputed recitation as construed by the Board. For example, Dr. Pecht testified with
`
`respect to Kyowa, “if you look on the outside of [Kyowa’s] package, and you look
`
`
`
`14
`
`
`
`generally at the outside from the top to the bottom, and you say is it generally wall
`
`shaped, and I think you don’t look at one particular point. You look at the kind of
`
`the whole surface, and it’s – the feature is generally wall like.” (Ex. 2006 (Pecht
`
`Tr.) at 64:9-15; see also id. at 50:5-8 (discussing the Board’s construction), 51:14-
`
`52:12 (discussing the thickness of wall-like structures); Ex. 1019 (Second Pecht
`
`Decl.) ¶8.) And he testified similarly that Matsumura discloses “a surface that goes
`
`from the top to the bottom, and it has a feature that’s wall like . . . and if you,
`
`again, look at all the figures together, it goes around the periphery of the reflector
`
`housing. And it has some depth, so to speak.” (Ex. 2006 (Pecht Tr.) at 74:14-75:20;
`
`see also id. at 74:2-4 (“how far one goes in from the outside periphery is not
`
`critical in the claim language”); 76:5-19; 77:11-20; Ex. 1019 (Second Pecht Decl.)
`
`¶9.) That sworn testimony (which comprises part of the trial record (see Anacor,
`
`889 F.3d at 1380-81), must be contrasted with the mere attorney argument
`
`proffered by Patent Owner.
`
`D.
`
`Patent Owner’s Arguments Directed to Kyowa Are Baseless
`
`In Section IV.A., Patent Owner largely repeats the same flawed arguments
`
`addressed in the previous section. In particular, Patent Owner disputes whether
`
`Kyowa discloses or renders obvious three recitations: (1) a peripheral sidewall;
`
`(2) a second pocket; and (3) lead receiving compartments. The remaining
`
`
`
`15
`
`
`
`recitations are undisputed.7
`
`1.
`
`Peripheral Sidewall
`
`Patent Owner’s primary argument with respect to Kyowa’s peripheral
`
`sidewall is based on the two-dimensional/three-dimensional dispute addressed
`
`above. (Paper 20 at 23-25.) In particular, Patent Owner provides out-of-context
`
`quotations from the deposition of Dr. Pecht to suggest that his analysis was limited
`
`only to the prior art’s surfaces. (Id.) Tellingly absent from Patent Owner’s analysis,
`
`however, is Dr. Pecht’s acknowledgement that a wall-like structure (both as
`
`construed by the Board and as disclosed in the cited prior art) has an interior or
`
`thickness or depth. (See, e.g., Ex. 2006 at 61:15-21 (discussing the “the interior of
`
`the wall” in Kyowa); 79:1-4 (referring to the “depth of [Matsumura’s side wall]
`
`
`
`7
`
`In a footnote Patent Owner alleges that the Board erred in relying on Dr.
`
`Pecht’s Declaration in the Institution Decision. (Paper 20 at 23 n.12.) Although
`
`Petitioners disagree with Patent Owner’s characterization of the Petition, the
`
`declaration, the Board’s decision, and the relevant regulations, again the point is
`
`moot. The issue now before the Board is whether, based on the entire record,
`
`Petitioners have established invalidity by a preponderance of the evidence, not
`
`reconsideration of the Institution Decision.
`
`
`
`16
`
`
`
`going from the top down and the bottom up”); see also Ex. 1019 (Second Pecht
`
`Decl.) ¶¶5-6.)
`
`Rather than dispute the Board’s construction, Dr. Pecht’s testimony as cited
`
`by Patent Owner (Paper 20 at 24-26 (citing Ex. 2006)) addressed whether it is
`
`necessary (or even possible) to identify the precise thickness (i.e., distance from
`
`the outer surface to an inner surface) of the sidewalls. Indeed, Dr. Pecht correctly
`
`noted that no basis exists to define the thickness of the purported sidewalls even in
`
`the preferred embodiment of the ’087 patent. (Ex. 2006 (Pecht Tr.) at 50:20-51:4;
`
`see also Ex. 1019 (Second Pecht Decl.) ¶6.).) Consistent with that analysis, Dr.
`
`Pecht’s purportedly “notabl[e]” testimony that the middle of Kyowa’s housing is
`
`connected (Paper 20 at 25 (citing Ex. 2006, 63:2-8)) would apply equally to the
`
`’087 patent (as shown by the dotted arrow
`
`added to Fig. 4 to the right). (Ex. 1019 (Second
`
`Pecht Decl.) ¶7.) Moreover, Patent Owner’s
`
`own markup of figure 4 shows that it too was
`
`unable to identify a precise thickness for the
`
`purported sidewalls. Patent Owner’s characterization of Dr. Pecht’s testimony,
`
`therefore, is inconsistent with the record for decision, and should be rejected.
`
`In addition, to the extent that the Board deems it necessary to compare
`
`Patent Owner’s marked-up version of the ’087 patent’s figure 4 to Kyowa, other
`
`
`
`17
`
`
`
`than the specific sizes of the structures (which the Board correctly determined to be
`
`irrelevant), the structures are clearly disclosed. In particular, as Dr. Pecht
`
`explained, the mold depicted in figure 5(b) would have indicated to a person
`
`having ordinary skill in the art the cross-section of the final housing. (Ex. 2006
`
`(Pecht Tr.) 53:11-54:5; Ex. 1019 (Second Pecht Decl.) ¶8.) Thus, the countersunk
`
`area corresponding to the resin injection port in the mold would have been
`
`understood to result in a corresponding cavity on the bottom surface of the molded
`
`product. (Ex. 2006 (Pecht Tr.) at 56:13-57:1; 58:16-59:1.) To highlight this
`
`correspondence, figure 5(b) of Kyowa is rotated and colored below, with the space
`
`corresponding to the housing colored blue. (Ex. 1019 (Second Pecht Decl.) ¶8.) In
`
`addition, a pair of red shapes of the same type added by Patent Owner to its own
`
`figure are added to provide a similar indication of a “wall-like” structure. (Id.)
`
`Only by improperly
`
`reading the specific cross-
`
`section from figure 4 of
`
`the ’087 patent into the
`
`claims can a distinction
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`plausibly be drawn
`
`between the structures.
`
`
`
`18
`
`
`
`Patent Owner next posits that “a solid package might be incorrectly
`
`interpreted as having the claimed ‘sidewalls.’” (Paper 20 at 26.) As discussed
`
`above, Patent Owner has adopted the Board’s construction. Rather than abstract
`
`speculation, the proper analysis is directed solely to whether the prior art discloses
`
`or renders obvious the recitation under the undisputed construction. The record
`
`evidence on that point includes Dr. Pecht’s testimony, in which he explained how
`
`Kyowa provides that disclosure. Whether some other unknown and undefined
`
`“solid package” might be implicated by the “peripheral sidewall” recitation in
`
`isolation, therefore, is irrelevant.
`
`2.
`
`Second Pocket/Cavity
`
`Patent Owner effectively concedes that the mold depicted in Kyowa would
`
`result in an “indentation,” but asserts that “there is no evidence establishing the
`
`type or size of the indentation.” (Paper 20 at 27.) The Board’s construction,
`
`however, requires no specific “type or size,” but instead “a partially enclosed
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`space.” (Paper 10 at 6.) Indeed, the Board went even further, expressly stating that
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`“[t]he challenged claims . . . do not require particular dimensions or proportions.”
`
`(Id. at 13.) Patent Owner does not assert that the Board’s second-pocket/cavity
`
`construction is incorrect (or propose an alternative). Patent Owner also does not
`
`assert that Kyowa fails to render obvious or disclose the recited structure under the
`
`Board’s construction. Patent Owner’s size argument, therefore, is meritless.
`
`
`
`19
`
`
`
`Moreover, rather than address the pocket/cavity recitations as construed by
`
`the Board, Patent Owner seeks to link that recited structure to the separately recited
`
`“peripheral sidewall.” (Paper 20 at 28 (“Because the dimensions of any indentation
`
`. . . cannot be inferred from Kyowa’s Figure 5(b) . . ., Petitioners and Dr. Pecht
`
`cannot (and do not) establish that Kyowa’s device includes a peripheral sidewall
`
`extending between two end faces.”).) Again, however, Patent Owner fails to
`
`acknowledge that the Board expressly rejected its argument that “the peripheral
`
`sidewall [must] define the second pocket.” (Paper 10 at 12.) The presence or
`
`absence of the peripheral sidewall, therefore, cannot turn on the dimensions of the
`
`second pocket under the Board’s construction – they are simply two separately
`
`recited structures.
`
`Finally, Patent Owner’s aside regarding “access” to the book Plastic
`
`Injection Molding is at best confusing. The relevant disclosure of a countersunk
`
`injection molding port was provided in figures 5(a), (b), and (c) of Kyowa as
`
`interpreted by Dr. Pecht. (Ex. 1003 (Pecht Decl.) ¶52; Ex. 2006 (Pecht Tr.) at
`
`56:13-57:1; 58:16-59:1.) The book was cited (along with Oshio) to explain that
`
`disclosure, including the knowledge of a person of skill in the art that the molding
`
`process could leave a sunken vestige corresponding to the port/gate. (Ex. 1003
`
`(Pecht Decl.) ¶52.) Patent Owner failed to properly dispute that knowledge (e.g.,
`
`by submitting its own declaration), which again remains undisputed.
`
`
`
`20
`
`
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`3.
`
`Lead Receiving Compartment
`
`In Section IV.A.2., Patent Owner presents a chicken-and-egg argument
`
`regarding the “lead receiving compartments . . . formed in the peripheral sidewall.”
`
`(Paper 20 at 32.) In particular, Patent Owner concedes that partially enclosed
`
`spaces exist, but asserts “that space is wholly defined by the lead occupying the
`
`space.” (Id.) This s
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