Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: July 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00522
`Patent 7,524,087 B1
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
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`
`
`DECISION TO INSTITUTE
`35 U.S.C. § 314(a)
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`I. INTRODUCTION
`A. Background
`Seoul Semiconductor Co., Ltd. and Seoul Semiconductor, Inc. (“Petitioner”)
`filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1, 6–8,
`15, and 17 (the “challenged claims”) of U.S. Patent 7,524,087 B1 (Ex. 1001, the
`“’087 patent”). 35 U.S.C. § 311. Document Security Systems, Inc. (“Patent
`Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have
`authority under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the petition.”
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 5–6, 30–67):1
`Reference[s]
`
`Kyowa
`
`Matsumura
`
`Claims challenged
`1, 6–8, 15, and 17
`
`1, 6–8, 15, and 17
`
`Matsumura and Suehiro
`
`1, 6–8, 15, and 17
`
`Matsumura and Oshio
`
`1, 6–8, 15, and 17
`
`Kyowa and Okazaki
`
`1, 6–8, 15, and 17
`
`
`1 Japanese Pat. Pub. JP2001-118868, Apr. 27, 2001 (Ex. 1009) (“Kyowa”); U.S.
`Pat. Pub. 2004/0206964 A1, Oct. 21, 2004 (Ex. 1010) (“Matsumura”); U.S. Patent
`6,834,977 B2, Dec. 28, 2004 (Ex. 1011) (“Suehiro”); U.S. Pat. Pub. 2008/0054287
`A1, Mar. 6, 2008 (Ex. 1014) (“Oshio”); U.S. Patent 6,653,661 B2, Nov. 25, 2003
`(Ex. 1012) (“Okazaki”).
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`As further support, Petitioner offers the Declaration of Michael Pecht, Ph.D.
`Ex. 1003.
`For the reasons described below, we institute an inter partes review of
`claims 1, 6–8, 15, and 17 under all grounds.
`B. Related Proceedings
`The parties indicate that the’087 patent is involved in the following:
`Document Security Systems, Inc. v. Seoul Semiconductor Co. Ltd., No. 8:17-cv-
`00981 (C.D. Cal.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-
`04263 (C.D. Cal.); Document Security Systems, Inc. v. Everlight Electronics Co.,
`No. 2:17-cv-04273 (C.D. Cal.); Document Security Systems, Inc. v. OSRAM
`GmbH, No. 2:17-cv-05184 (C.D. Cal.); Document Security Systems, Inc. v. Lite-
`On, Inc., No. 2:17-cv-06050 (C.D. Cal.); and Document Security Systems, Inc. v.
`Nichia Corporation, No. 2:17-cv-08849 (C.D. Cal.). Pet. 5; Paper 5, 2.
`Patent Owner informs us that additional petitions for inter partes review of
`the ’087 patent (IPR2018-01165; IPR2018-01221; IPR2018-01226) have also been
`filed. Paper 9, 2–3. Patent Owner also indicates that there are a number of other
`related proceedings before the Patent Trial and Appeal Board involving U.S. Pat.
`6,949,771 (IPR2018-00265; IPR2018-01167; IPR2018-01222; IPR2018-01223;
`IPR2018-01244); U.S. Pat. 7,256,486 (IPR2018-00333; IPR2018-01166; IPR2018-
`01205; IPR2018-01220; IPR2018-01225); U.S. Pat. 7,919,787 (IPR2018-00965;
`IPR2018-01260); and U.S. Pat. 7,652,297 (IPR2018-00966). Id.
`C. The ’087 Patent
`The ’087 patent generally relates to an optical device with a light emitting
`diode (LED) die, such as for use in a large display panel. Ex. 1001, Abstract, 1:5–
`8, 59–61. Top and bottom perspective views of an optical device are illustrated in
`Figures 1 and 2, reproduced below. Id. at 1:25–28.
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`The top (Fig. 1) and bottom (Fig. 2) views of the optical device 10 show a
`housing 20 with a top cavity 30 and a bottom cavity 34, with LED dies 12, 14, 16
`mounted in the top cavity. Id. at 2:5–24. The housing 20 has a top face 22, a
`bottom face 24 and a peripheral wall 26 extending there between. Id. at 2:12–17.
`A lead frame 32 is provided which can include a number of leads 36, 40, 42, 44,
`46, 50. Id. at 2:35–37. Each of the leads is positioned at a lead receiving
`compartment 52 in the housing 20. Id. at 2:38–39, 64–67.
`Of the challenged claims, claims 1 and 15 are independent, claims 6–8
`depend from claim 1, and claim 17 depends from claim 15. Claim 1, reproduced
`below, is illustrative of the claimed subject matter:
`1. An optical device comprising:
`a lead frame with a plurality of leads;
`a reflector housing formed around the lead frame, the
`reflector housing having a first end face and a second end face
`and a peripheral sidewall extending between the first end face
`and the second end face, the reflector housing having a first
`pocket with a pocket opening in the first end face and a second
`pocket with a pocket opening in the second end face;
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`at least one LED die mounted in the first pocket of the
`reflector housing;
`a light transmitting encapsulate disposed in the first
`pocket and encapsulating the at least one LED die; and
`wherein a plurality of lead receiving compartments are
`formed in the peripheral sidewall of the reflector housing.
`
`D. Claim Construction
`As a step in our analysis for determining whether to institute a trial, we
`determine the scope of the claims. The Board interprets claims in an unexpired
`patent using the “broadest reasonable construction in light of the specification of
`the patent.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016).
`1. “Pocket” and “Cavity”
`Petitioner submits a proposed construction for the terms “pocket” and
`“cavity” in claims 1 and 15. Pet. 11–14. First, Petitioner states that the
`Specification of the ’087 patent uses these terms interchangeably, with “no
`substantive difference between” them. Id. at 12 (citing Ex. 1001, 2:17–19). Then,
`Petitioner argues that these terms should be construed to mean “a partially
`enclosed space.” Id. at 13 (emphasis omitted). In support of its construction,
`Petitioner discusses the use of these terms in the Specification (id. at 12–13), a
`number of dictionary definitions (id. at 13), and Patent Owner’s positions taken in
`litigation (id. at 13–14).
`Patent Owner appears to agree that the terms “pocket” and “cavity” are
`interchangeable as they use the term “pocket/cavity” to describe the cavities 30, 34
`in the housing. Prelim. Resp. 1–2, 14. Although Patent Owner contests
`Petitioner’s claim constructions, rather than address them directly, Patent Owner’s
`argument focuses on whether an artifact from the injection molding process can be
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`considered a “pocket/cavity,” that is, what Petitioner categorizes as Patent Owner’s
`positions taken in litigation. Id. at 9–13 (emphasis omitted). In particular, Patent
`Owner argues that a protrusion is not a cavity or pocket. Id. at 12. However, this
`position does not appear to run counter to the claim construction proposed by
`Petitioner. A protrusion is not a partially enclosed space. Patent Owner
`acknowledges that Petitioner’s cited evidence of Patent Owner’s positions taken in
`litigation shows the protrusion within a “larger pocket/cavity.” Id.
`Based on the current record, we agree that the terms “pocket” and “cavity”
`are interchangeable and therefore have the same meaning. For the purposes of
`institution, we agree with Petitioner and construe “pocket” and “cavity” to mean a
`partially enclosed space.
`2. “Lead receiving compartments . . . in the peripheral sidewall . . .”
`Petitioner submits a proposed construction for the phrase “lead receiving
`compartments are formed in the peripheral sidewall of the reflector housing,” as
`recited in claim 1, and “said reflector housing further having . . . a peripheral
`sidewall . . ., said peripheral sidewall having a plurality of lead receiving
`compartments formed therein,” as similarly recited in claim 15. Pet. 14–18.
`Petitioner argues that these phrases should be construed to mean “partially
`enclosed spaces adjacent to a side surface that can receive a lead.” Id. at 18
`(emphasis omitted).
`In support of its argument, Petitioner points to the fact that the ’087 patent
`Specification in one embodiment equates a “lead receiving compartment” and a
`“cavity.” Id. at 15 (citing Ex 1001 2:64–66). Petitioner also argues that the
`Specification shows that the leads are not necessarily within their respective
`compartments, and that a compartment needs only to “be capable of receiving that
`lead.” Id. Thus, Petitioner takes the position that a “lead receiving compartment”
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`is “a partially enclosed space that can receive a lead.” Id. (emphasis omitted).
`Petitioner also points to dictionary definitions of “compartment” and “receive” in
`support of this position. Id. at 15–16.
`Though Patent Owner does not address this, the ’087 patent Specification
`does not appear to be as clear on whether the leads are actually positioned within
`the lead receiving compartments as asserted by Petitioner. Id. at 15. For example,
`claim 5 of the ’087 patent states that “said plurality of lead receiving compartments
`being J-shaped” and Figure 2 would appear to show at least a portion of J-shaped
`leads 36, 40 positioned within J-shaped compartments 52.
`With respect to the “location” of the “lead receiving compartment,”
`Petitioner argues that “[t]he specification uses the terms sidewall and peripheral
`wall interchangeably” and that these terms both “indicate a location adjacent to a
`side surface.” Id. at 16.
`However, Petitioner does not cite any use of the term “peripheral sidewall”
`in the Specification or address whether this term differs from merely a “sidewall”
`or a “peripheral wall.” Further, Petitioner’s evidence does not support Petitioner’s
`construction for the “location” of the “lead receiving compartment.” For example,
`Petitioner’s definitions of “sidewall” all refer to a “wall” while there is no mention
`of a “wall” in Petitioner’s claim construction. See Pet. 17. The Petition provides
`no explanation why the claimed “sidewall” is reduced to a “side surface” or how
`the term “peripheral” modifies the “sidewall.”2 See generally, id. at 14–18.
`
`
`2 We note that the Petition does not rely on or cite to the Declaration of Michael
`Pecht (Ex. 1003) in support of any of the claim construction positions. See
`generally, Pet. 10–18.
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`Among other aspects of the claimed phrase, the Petition also does not
`address the “formed in” or “formed therein” aspects of the phrase in the proposed
`construction. Rather, Petitioner’s construction inappropriately reads this limitation
`out of the claims.
`Thus, we do not accept Petitioner’s proposed claim construction for the
`phrase “lead receiving compartments are formed in the peripheral sidewall of the
`reflector housing,” as recited in claim 1, and “said reflector housing further having
`. . . a peripheral sidewall . . ., said peripheral sidewall having a plurality of lead
`receiving compartments formed therein,” as similarly recited in claim 15 to mean
`“partially enclosed spaces adjacent to a side surface that can receive a lead.” Id. at
`14, 18 (emphasis omitted).
`Patent Owner also argues that Petitioner erred in its construction of
`“peripheral sidewall.” Prelim. Resp. 13. Patent Owner notes that
`Claims 1 and 15 recite a reflector housing with first and second end
`faces and a “peripheral sidewall extending between the first end face
`and the second end face.” (emphasis added). As the ’087 patent depicts,
`the outer surface of a peripheral sidewall of the reflector housing
`includes “lead receiving compartments.”
`Id. Patent Owner argues that implicit in the claims is that “the inner portions of the
`peripheral sidewall 26 of the reflector housing provide ‘pockets’ or ‘cavities.’” Id.
`at 14 (citing Ex. 1001 2:24–26 (“The second cavity 34 is surrounded on four sides
`by the peripheral wall 26, providing rigidity and preventing cracks due to
`flexing”), 3:17–25).
`Though the Specification informs the inquiry into the meaning of the terms
`in the claims, based on the current record, we resist Patent Owner’s suggestion to
`read features of the Specification into the claims. For the purposes of institution,
`we do not agree with Patent Owner that the “peripheral sidewall” in claims 1 and
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`15 is required to form the walls of the first or second cavities. However, we do
`agree, again for the purposes of institution, that the “peripheral sidewall” “is a
`feature having a wall-like appearance arranged at the periphery of the reflector
`housing,” as construed by Patent Owner. Id. at 15.
`
`II. ANALYSIS
`We now turn to Petitioner’s asserted grounds of unpatentability to determine
`whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
`A. Obviousness over Kyowa
`Petitioner asserts that claims 1, 6–8, 15, and 17 would have been obvious
`over Kyowa, citing record evidence. Pet. 30–44. Petitioner asserts that Kyowa
`teaches an optical device with an LED similar to the claimed optical device. Id. at
`30–31 (citing e.g., Ex. 1009 ¶ 1).3 Petitioner notes that Kyowa teaches “an
`electronic component chip . . . mounted to a lead frame and sealed in a resin
`package,” and that the lead frame has a plurality of leads. Id. at 31 (quoting Ex.
`1009 ¶ 1). Petitioner cites Figures 5(a)–(c) as showing the formation of a housing
`(resin package 11) over the lead frame. Id.
`Petitioner provides marked-up versions of Kyowa Figures 2 and 3,
`reproduced below (id. at 32) with blue highlighting added to show the first cavity
`in the housing (id. at 33).
`
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`3 We note that Petitioner’s analysis of Kyowa’s teachings with respect to claim 15
`and its dependent claim 17 largely mirrors Petitioner’s analysis of claim 1. See
`Pet. 40–44.
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`“Figure 2 (left) is a plan view showing the light emitting side of the device.”
`Id. at 32. “Figure 3 (right) is a cross sectional view[] taken along line III-III of
`figure 2.” Id.
`Petitioner states that “a first end face is shown as the plan and top surfaces of
`the housing in figures 2 and 3 respectively,” and that “a second end face is shown
`as the bottom surface of the housing in figure 3.” Id. at 32–33. Petitioner asserts,
`but does not elaborate, that the “peripheral sidewall extend[s] between the first and
`second surfaces is shown in the cross-sectional view,” i.e., Figure 3. Id. at 33
`(citing Ex. 1003 ¶¶ 48–49 which includes the statement “The area between the
`edge of the pocket/cavity and the outer edge of the device comprises a peripheral
`sidewall.”).
`Petitioner admits that Figure 3 does not show a second pocket opening in the
`second end face (id. at 34–35), based on the irregular cut of that cross-section;4
`however, Petitioner argues that a pocket is formed during the injection molding
`process. Id. at 33–35 (citing e.g., Ex. 1009 Figs. 5(b)–(c)). In particular, Petitioner
`asserts that the resin injection hole 34 “extends into the cavity 32,” so that after
`
`4 Line III-III of Figure 2. Pet. 35; see also Ex. 1009 ¶ 13 (“FIG. 3 shows a cross
`sectional view across line III-III of FIG. 2”).
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`resin injection “a circular artifact will provide a second pocket/cavity in the bottom
`of the housing.” Id. at 34. Petitioner cites Figure 5(b), reproduced below as
`marked-up by Petitioner, as showing the resin injection hole 34 (highlighted in
`purple). Id. at 33–34.
`
`
`Kyowa Figure 5(b) shows a section view of part of a resin molding process
`with the “mold in a clamped state.” Ex. 1009 ¶ 13.
`Petitioner further argues that “[t]o the extent that it is argued that the second
`pocket/cavity somehow disappears after the injection molding process, . . . it would
`have been obvious based on Kyowa and the background knowledge of a person
`having ordinary skill.” Pet. 35–36. Petitioner asserts “[a] person having ordinary
`skill in the art would have understood that the indicated configuration of the resin
`injection hole would result in an indentation into the back surface of the resulting
`housing.” Id. at 36 (citing Ex. 1014; Ex. 1015; and Ex. 1003 ¶ 52).
`Moving on, Petitioner cites Kyowa as showing three LEDs 17a, 17b, 17c
`mounted on the lead frame encapsulated in the first pocket. Id. at 37–38 (citing
`Ex. 1009 ¶ 14, Ex. 1003 ¶ 53); see also id. at 40 (three LEDs of different colors,
`addressing claims 7 and 8). Petitioner also asserts that “Kyowa discloses a
`plurality of lead receiving compartments formed in the peripheral sidewall of the
`reflector housing (11),” as “the leads (green) form their own compartments within
`the housing during the injection molding process.” Id. at 38 (citing Ex. 1009 ¶ 22;
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`Ex. 1003 ¶ 55). Petitioner also identifies the spaces between the leads as ribs. Id.
`at 39 (addressing claim 6). Petitioner points to Figures 3 and 5(c), reproduced
`below, as showing the lead receiving compartments (outlined by Petitioner in
`orange) formed by the leads (highlighted by Petitioner in green). Id.
`
`
`Figure 3, above left, shows a cross-sectional view of the optical device. Ex.
`1009 ¶ 13. Figure 5(c), above right, illustrates resin (m) being injected into a mold.
`Id.
`
`Patent Owner argues that the Petition fails to show that Kyowa teaches or
`suggests a peripheral sidewall. Prelim. Resp. 18–22. Patent Owner’s argument
`hinges on its claim construction position, rejected above, that requires the
`peripheral sidewall to define the second pocket. See e.g., id. at 20 (asserting that
`any manufacturing “vestige” (i.e. asserted second cavity) would not be considered
`“the inner portion of a peripheral sidewall”). Further, as discussed above
`Petitioner asserts that the “peripheral sidewall extend[s] between the first and
`second surfaces is shown in the cross-sectional view” of Figure 3 (Pet. 33) and
`cites to the Pecht Declaration which states “[t]he area between the edge of the
`pocket/cavity and the outer edge of the device comprises a peripheral sidewall.”
`Ex. 1003 ¶ 49. Although we agree that Petitioner does not provide extensive
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`analysis on how Kyowa teaches a peripheral sidewall, we determine that
`Petitioner’s arguments and evidence are sufficient for the purposes of institution.
`Patent Owner also argues that the Petition fails to show that Kyowa teaches
`or suggests a second pocket or cavity. Id. Patent Owner argues that by “rely[ing]
`on the mold shown in Fig. 5(b) and 5(c), Petitioners fall into the trap of relying on
`patent drawings to show undisclosed size, scale, and proportions.” Id. (citing
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
`2000); M.P.E.P. § 2125). Hockerson-Halberstadt deals with a relationship
`between the widths of two different features, not the mere fact that the features are
`illustrated in the drawings. Hockerson-Halberstadt, 222 F.3d at 954–956. Further,
`Hockerson-Halberstadt is distinguishable because “size, scale, and proportions”
`are not the same as the general shape of the mold as illustrated in Kyowa and relied
`upon by Petitioner. The challenged claims in the present proceeding do not require
`particular dimensions or proportions.
`Even though Kyowa does not discuss “the significance of the dimple in the
`mold of Kyowa to the end product of the housing” (Prelim. Resp. 20), Petitioner
`provides evidence that a person of ordinary skill in the art would have understood
`the resin injection hole in Kyowa to result in a cavity in the resulting housing (Pet.
`36 (citing Exs. 1014, 1015, 1003 ¶ 52)). Patent Owner states that this is hindsight,
`because Kyowa does not discuss the shape that results from the injection nozzle
`34. Patent Owner’s attorney argument is not persuasive as it is not supported by
`the record. We determine that Petitioner’s evidence on this point is sufficient for
`the purposes of institution.
`Patent Owner also states that “Kyowa’s Fig. 3 specifically illustrates the
`housing having a planar lower surface, without any vestige.” Prelim. Resp. 20.
`This argument mischaracterizes the teachings of Kyowa. Kyowa teaches that
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`“FIG. 3 shows a cross sectional view across line III-III of FIG. 2.” Ex. 1009 ¶ 13.
`Reviewing Figure 2 it can be seen that line III-III is not a straight line, nor does the
`line cross through the region where the cavity created by the nozzle 34 would be
`located.5 Thus, Patent Owner’s argument does not persuade us that Petitioner has
`failed to meet its burden at the institution stage.
`Patent Owner next focuses on the “lead receiving compartments.” Prelim.
`Resp. 22–23. Patent Owner states that Petitioner construes “lead receiving
`compartments” to mean “a partially enclosed space that can receive a lead.” Id. at
`22 (citing Pet. 15–18). Patent Owner argues that “[t]o the extent [Kyowa’s]
`injection molding process results in a housing forming around the leads, Petitioners
`fail to explain why the resulting structure constitutes a ‘compartment’ ‘receiving’ a
`‘lead.’” Id. at 23. Patent Owner’s argument seems to imply that the claim
`requires, at least under Petitioner’s claim construction, a method step of
`“receiving” a “lead” or possibly that it is a product-by-process limitation.6 As
`noted above, for the purposes of institution, we do not adopt Petitioner’s claim
`construction concerning the “lead receiving compartments” and the associated
`phrase. Accordingly, this argument is not persuasive.
`The Petition argues that in Kyowa “the leads . . . form their own
`compartments within the housing during the injection molding process,” and
`“[t]hat the resulting leads are recessed into spaces within the housing” Pet. 38
`(citing Ex. 1009 ¶ 22; Ex. 1003 ¶ 55). We determine that, for the purposes of
`
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`5 This is discussed in detail in the Petition and supported by Kyowa itself. See Pet.
`34–35; Ex. 1009 ¶ 13, Figs. 2–3.
`6 All of the claims in the ’087 patent are apparatus claims. Ex. 1001, 6:22–8:20.
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`institution, Petitioner has made a sufficient showing that Kyowa teaches the “lead
`receiving compartments.”
`As discussed above, Petitioner provides allegations that claims 1, 6–8, 15,
`and 17 are taught or suggested by the prior art. As addressed above, Patent Owner
`provides arguments concerning independent claims 1 and 15, and thereby all of the
`dependents. However, Patent Owner does not separately argue any of the
`dependent claims. In view of the above, the Petition, the Pecht Declaration, and
`the Preliminary Response, we determine that Petitioner has shown a reasonable
`likelihood that claims 1, 6–8, 15, and 17 would have been obvious in view of
`Kyowa.
`
`B. Obviousness over Matsumura
`Petitioner asserts that claims 1, 6–8, 15, and 17 would have been obvious
`over Matsumura, citing record evidence. Pet. 44–54. Petitioner asserts that
`Matsumura teaches an optical device with an LED similar to the claimed optical
`device. Id. at 44 (citing e.g., Ex. 1010 ¶ 3).7 Petitioner notes that Matsumura
`explicitly teaches an LED lead frame with “a plurality of electrically conductive
`leads.” Id. at 44 (quoting Ex. 1010 ¶ 32). Petitioner cites Matsumura as teaching
`insert-molding to form the housing with lead frame as a package. Id. at 44–45.
`Petitioner provides marked-up versions of Matsumura Figures 1A and 1C,
`reproduced below (id. at 46) with blue highlighting added to show the first cavity
`in the housing and purple highlighting added to show the second cavity (id. at 47).
`
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`7 We note that Petitioner’s analysis of Matsumura’s teachings with respect to claim
`15 and its dependent claim 17 largely mirrors Petitioner’s analysis of claim 1. See
`Pet. 51–54.
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`Figure 1A (left) is a plan view showing the light emitting side of the device.
`Ex. 1010 ¶ 44. Figure 1C (right) is a cross sectional view taken along line II-II of
`Figure 1A. Id.
`Petitioner states that “a first end face is shown respectively as the plan . . .
`and left surfaces of the housing as depicted in figures 1A . . . and 1C,” and that a
`second end face is shown on the right side of Figure 1C. Pet. 46. Petitioner states
`that the “peripheral sidewall extend[s] between the first and second surfaces . . . in
`the cross-sectional views of figures 1B and 1C, with the sidewall comprising the
`right and left faces of figure 1B and the top and bottom faces of figure 1C.” Id. at
`46–47 (citing e.g., Ex. 1003 ¶ 74 “the body of Matsumura’s housing outside of the
`first and second pockets/cavities comprise a sidewall.”).
`Concerning the second cavity, Petitioner states that as illustrated in Figure
`1C, the cavity “is enclosed on at least three sides.” Id. at 47. Petitioner also
`explains that if the second cavity requires “lateral enclosure on all sides, that
`requirement would still have been obvious to a person having ordinary skill.” Id.
`Petitioner cites Matsumura as showing six LEDs, of three different colors,
`mounted on the lead frame encapsulated in the first pocket or cavity. Id. at 48–49;
`see also, id. at 51 (addressing claims 7 and 8). Petitioner also asserts that
`“Matsumura discloses a plurality of lead receiving compartments formed in the
`peripheral sidewall of the reflector housing (2).” Id. at 49. Petitioner identifies the
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`spaces between the leads as ribs. Id. at 50 (addressing claim 6). Petitioner points
`to Figure 1A, reproduced below, as showing the lead receiving compartments
`(outlined by Petitioner in orange) with the leads recessed therein (highlighted by
`Petitioner in green). Id. at 49–50.
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`Figure 1A shows a plan view of the optical device. Ex. 1010 ¶ 44.
`Patent Owner argues that the Petition fails to show that Matsumura teaches
`or suggests a peripheral sidewall. Prelim. Resp. 23–26. For example, Patent
`Owner argues that a peripheral sidewall is not shown based on Patent Owner’s
`claim construction that requires the peripheral sidewall to define the second
`pocket. See, e.g., id. at 24 (asserting that the “the inner portions of the sidewalls
`[must] form the claimed pockets/cavities in the end faces of the reflector
`housing”). As discussed above, we reject this claim construction. Accordingly,
`this argument is not persuasive.
`Patent Owner then asserts that “the peripheral sidewall must be on the side
`of the package along its periphery, not on the bottom of [the] package.” Id. at 24.
`As none of the claims of the ’087 patent appear to identify the top or bottom of the
`device, it would appear that this argument is based on the term “sidewall.” The
`claims, however, identify the sidewall with respect to the end faces. For example,
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`claim 1 states “a peripheral sidewall extending between the first end face and the
`second end face, the reflector housing having a first pocket with a pocket opening
`in the first end face and a second pocket with a pocket opening in the second end
`face.” Ex. 1001 6:26–31. The claims do not appear to require a particular
`orientation, such as the first end face pointing upwards as argued by Patent Owner.
`Rather, the peripheral sidewall is claimed as being on the periphery of the end
`faces without respect to an up or down orientation. Further, we note that the ’087
`patent teaches that the disclosed optical devices can be used in stadium displays,
`which would likely result in their being oriented such that the peripheral sidewall is
`at the top and/or bottom of the device. Ex. 1001, 1:5–21, Figs. 9–10.
`Patent Owner then argues that Petitioner’s discussion of the peripheral
`sidewall is insufficient. Prelim. Resp. 24–25. We disagree and determine that
`Petitioner’s statements, arguments, and evidence concerning Matsumura’s
`teachings of the peripheral sidewall are sufficient for the purposes of institution.
`For example, Patent Owner argues that the claim “requires ‘a plurality of lead
`receiving compartments’ ‘formed in the peripheral sidewall’ and thus any wall
`without leads cannot be part of the peripheral sidewall. Id. at 25. Claim 1 is not so
`limited. Though the lead receiving compartments are formed in the peripheral
`sidewall, this does not mean that portions of the sidewall without lead receiving
`compartments are not part of the peripheral sidewall.
`Patent Owner argues that Matsumura does not disclose a peripheral sidewall
`because “the lower-left wall-like portion [of Figure 1C] corresponding to the first
`pocket/cavity ends at the lead frame and does not continue” on the right side of the
`figure which “is depicted as a substantially solid block with an undescribed,
`irregular shape annotated (in purple) by the Petitioners.” Id. at 26. Thus, Patent
`Owner argues it is not clear how Petitioner supports Matsumura showing a
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`peripheral sidewall that ‘“extend[s] between end faces of the housing.” Id.
`Matsumura Figure 1C as marked-up by Petitioner is reproduced below. Pet. 46.
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`
`Figure 1C is a cross sectional view of the optical device with blue
`highlighting to show the first cavity in the housing and purple highlighting to show
`the second cavity. Id. at 47.
`Patent Owner raises an important issue that warrants further development of
`the record. Namely, the issue of what structure is required for the peripheral
`sidewall to ‘“extend between end faces of the housing.” Looking to the Figure 4 of
`the ’087 patent as annotated by Patent Owner (reproduced below), it can be seen
`that the illustrated section of the optical device has a generally “H” shaped cross-
`section. Prelim. Resp. 3.
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`
`Figure 4 of the ’087 patent shows a cross-section of the optical device.
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`Patent Owner has circled the regions it considers read on the peripheral
`sidewalls. Id. at 2. Though Matsumura Figure 1C is rotated 90 degrees with
`respect to Figure 4 of the’087 patent, it has a cross-section that is similar to Figure
`4 of the ’087 patent in some respects. We determine that those similarities are
`sufficient for the purposes of institution.
`Patent Owner also argues that the Petition fails to show that Matsumura
`teaches or suggests a second pocket or cavity. Prelim. Resp. 26–28. Patent Owner
`states that Matsumura does not describe the region considered by Petitioner to be
`the second cavity, and that this omission casts doubt on its existence and purpose.
`Id. at 27. Patent Owner also states that this region is not shown in Figure 1B even
`though “the cross-section shown in FIG. 1B is taken along the plane intersecting
`FIG. 1C’s purple region.” Id.
`However, the fact that a feature is shown but not described in a reference
`does not mean that it does not exist. Petitioner has provided a reasonable
`explanation with supporting evidence of how one skilled in the art would
`understand the “purple region” of Figure 1C. See e.g., Pet. 47–48, Ex. 1003 ¶¶ 73–
`74; Ex. 1015.
`As discussed above, Petitioner provides allegations that claims 1, 6–8, 15,
`and 17 are taught or suggested by the prior art. As addressed above, Patent Owner
`provides arguments concerning independent claims 1 and 15, and thereby all of the
`dependents. However, Patent Owner does not separately argue any of the
`dependent claims. In view of the above, the Petition, the Pecht Declaration, and
`the Preliminary Response, we determine that Petitioner has shown a reasonable
`likelihood that claims 1, 6–8, 15, and