`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC AND L G SOURCING, INC.,
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`Petitioners
`
`v.
`
`NICHIA CORPORATION,
`
`Patent Owner
`
`U.S. Patent No. 9,490,411
`
`DECLARATION OF DR. STANLEY R. SHANFIELD
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 9,490,411
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`LOWES Ex 1003 Page 0001
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`TABLE OF CONTENTS
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`2.
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`3.
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`Page Nos.
`INTRODUCTION ........................................................................................ 1
`I.
`BACKGROUND AND QUALIFICATIONS ............................................. 2
`II.
`III. PRIORITY DATE AND ONE OF ORDINARY SKILL .......................... 7
`IV. MATERIALS RELIED UPON ................................................................... 8
`V.
`BACKGROUND ON THE STATE OF THE ART ................................... 8
`VI. ANALYSIS OF THE ’411 PATENT ........................................................ 18
`A.
`Overview of the ’411 Patent ............................................................... 18
`B.
`Overview of the ’411 Patent Prosecution History ............................. 26
`C.
`Claim Construction of the ’411 Patent Claims .................................. 28
`VII. THE CHALLENGED CLAIMS ARE INVALID ................................... 29
`A.
`Legal Standards .................................................................................. 29
`B.
`Claims 1-3, 5-8, 10, 13, and 15-20 Are Unpatentable Under §§
`102 and/or 103 Over Loh, Mori, Wang, and/or Oshio ....................... 34
`1.
`Overview of U.S. Patent Publication No. 2008/0012036
`(“Loh”) ..................................................................................... 35
`Overview of U.S. Patent Publication No. 2005/0211991
`(“Mori”) ................................................................................... 40
`Overview of U.S. Patent Publication No. 2008/0073662
`(“Wang”) .................................................................................. 42
`Overview of U.S. Patent Publication No. 2005/0280017
`(“Oshio”) .................................................................................. 45
`Invalidity of Claim 1 Over Grounds 1 and 2 (Loh) ................. 47
`Invalidity of Claim 2 Over Grounds 1 and 2 (Loh) ................. 63
`Invalidity of Claim 3 Over Grounds 1 and 2 (Loh) ................. 66
`Invalidity of Claim 5 Over Grounds 1 and 2 (Loh) ................. 68
`Invalidity of Claim 6 Over Grounds 1 and 2 (Loh) ................. 69
`Invalidity of Claim 7 Over Grounds 1 and 2 (Loh) ................. 70
`Invalidity of Claim 8 Over Grounds 1 and 2 (Loh) ................. 71
`Invalidity of Claim 13 Over Grounds 1 and 2 (Loh) ............... 71
`Invalidity of Claim 15 Over Grounds 1 and 2 (Loh) ............... 72
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`5.
`6.
`7.
`8.
`9.
`10.
`11.
`12.
`13.
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`4.
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`LOWES Ex 1003 Page 0002
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`TABLE OF CONTENTS
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`Page Nos.
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`14.
`15.
`16.
`17.
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`Invalidity of Claim 19 Over Grounds 1 and 2 (Loh) ............... 74
`Invalidity of Claim 20 Over Grounds 1 and 2 (Loh) ............... 74
`Invalidity of Claim 10 Over Ground 3 (Loh and Mori)........... 75
`Invalidity of Claim 16 Over Ground 4 (Loh and Wang)
`and, alternatively, Ground 5 (Loh, Wang, and Oshio) ............ 80
`Invalidity of Claim 17 Over Ground 4 (Loh and Wang)
`and, alternatively, Ground 5 (Loh, Wang, and Oshio) ............ 88
`Invalidity of Claim 18 Over Ground 4 (Loh and Wang)
`and, alternatively, Ground 5 (Loh, Wang, and Oshio) ............ 97
`VIII. SECONDARY CONSIDERATIONS ..................................................... 104
`IX. CONCLUSION ......................................................................................... 104
`APPENDIX A (Curriculum Vitae)
`APPENDIX B (List of Materials Considered)
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`18.
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`19.
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`LOWES Ex 1003 Page 0003
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`I, Dr. Stanley Shanfield, hereby declare under penalty of perjury under the
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`laws of the United States of America:
`
`I.
`
`INTRODUCTION
`
`1.
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`I have been retained to provide assistance regarding U.S. Patent No.
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`9,490,411 (“the ’411 patent”). Specifically, I have been asked to consider the
`
`validity of claims 1-3, 5-8, 10, 13, and 15-20 of the ’411 patent (the “Challenged
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`Claims”). I have personal knowledge of the facts and opinions set forth in this
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`declaration, and believe them to be true. If called upon to do so, I would testify
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`competently thereto. I have been warned that willful false statements and the like
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`are punishable by fine or imprisonment, or both.
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`2.
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`I am being compensated for my time at my standard consulting rate
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`of $385 per hour. I am also being reimbursed for expenses that I incur during the
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`course of this work. My compensation is not contingent upon the results of my
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`study, the substance of my opinions, or the outcome of any proceeding involving
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`the challenged claims. I have no financial interest in the outcome of this matter or
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`on the pending litigation between Petitioner and Patent Owner.
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`3.
`
`A table of contents and a list of exhibits referenced herein are
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`included above.
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`1
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`LOWES Ex 1003 Page 0004
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`II.
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`BACKGROUND AND QUALIFICATIONS
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`4.
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`I offer statements and opinions on behalf of Petitioners Lowe’s
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`Companies, Inc., Lowe’s Home Centers, LLC and L G Sourcing, Inc (collectively,
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`“Lowe’s” or “Petitioners”), generally regarding the validity, novelty, prior art,
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`anticipation and obviousness considerations, and understanding of a person of
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`ordinary skill in the art (“POSITA”) as it relates to U.S. Patent No. 9,490,411 (“the
`
`’411 patent”). Attached hereto as Appendix A, is a true and correct copy of my
`
`Curriculum Vitae describing my background and experience.
`
`5.
`
`As set forth in my curriculum vitae, I received a B.S. degree in
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`Physics from the University of California, Irvine in 1977, and was a member of the
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`Phi Beta Kappa Society. In 1975, I received the University of California Regents
`
`Award for Outstanding Research on experimental and theoretical work on rotating
`
`relativistic electron beams. Under full Energy Research and Development
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`Administration scholarship, I received a Ph.D. in Physics from the Massachusetts
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`Institute of Technology in 1981.
`
`6.
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`Starting in 1985 at Raytheon Research Division, most of my work
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`focused on the development, packaging, and testing of semiconductor devices,
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`including devices made using GaAs, AlGaAs, InGaAs, GaN, and SiC. During the
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`late 1980s and most of the 1990s, I was directly involved in the epitaxial growth
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`and packaging of electronic devices and integrated circuits, specialized light
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`2
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`LOWES Ex 1003 Page 0005
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`emitting diode (LED) devices and optical detectors. Along with other activities, I
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`produced, packaged and tested LEDs for government and commercial applications
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`e.g. display illumination devices, fiber optic modules, and detection instruments.
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`Experimental and small lot production LEDs were placed in metal-ceramic
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`packaging and, later, in compression or transfer-molded thermoset packages
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`manufactured on leadframes.
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`7.
`
`During the time period of 1996-1999 at Raytheon Commercial
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`Electronics as Semiconductor Operations Director, I was responsible for integrated
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`circuit fabrication, device packaging, and electronic assembly manufacturing. This
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`included the operation of a large-scale, 24-hour component and integrated circuit
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`manufacturing facility with on-site and overseas (S. Korea) chip and optical device
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`packaging facilities. In addition to performing higher cost packaging efforts, these
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`facilities manufactured compression or transfer molded packaging with punched
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`and plated leadframes. I was directly involved in establishing packaging
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`operations, including equipment selection and evaluation, packaging process
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`development, final test and reliability evaluation. As part of my activities, I led
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`teams that investigated thermoset packaging issues for high power devices
`
`(including LEDs), as well as packaging yield loss and in-depth device failure
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`analysis.
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`3
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`LOWES Ex 1003 Page 0006
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`8.
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`From 1999 to 2003 I co-founded a start-up company, AXSUN
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`Technologies, and became the VP of Operations. AXSUN developed a new
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`electro-optical assembly platform and used it to build miniature optical modules
`
`for fiber optic communications systems. I was directly involved in the
`
`development and manufacturing of the company’s flagship product, and devised
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`custom packaging of a high power super-luminescent LEDs. I received a patent for
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`the key electro-optical component in this product. The company, which grew to
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`more than 100 employees by 2001, was eventually sold.
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`9.
`
`Since 2003 I have served at the Charles Stark Draper Laboratory
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`(“Draper Laboratory”) in Cambridge, Massachusetts, ultimately becoming a
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`Distinguished Member of the Technical Staff and Technical Director in the
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`Advanced Hardware Development Division. For several years, I led the Advanced
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`Hardware Development Division (consisting of approximately 80 staff members)
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`in their work on the laboratory’s high density multi-chip packaging technology.
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`This work involved the use of a multi-layer (miniature leadframe) and thermoset
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`encapsulation schemes suitable for packaging multiple chip components, including
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`LEDs and semiconductor lasers. I have led teams responsible for the design and
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`thermo-mechanical modeling of new packaging schemes and the development of
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`their manufacturing processes, and eventually received a patent for an ultra-high
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`density packaging process currently in use at Draper.
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`4
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`LOWES Ex 1003 Page 0007
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`10.
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`With respect to the manufacturing of packaged LED and other high
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`power semiconductor components, I have about 25 years of experience with most
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`of the possible manufacturing processes and materials involved, and understand the
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`relevant assembly and packaging manufacturing economics. My direct technical
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`experience includes work with plated copper leadframe assembly processes (and
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`plating processes in general, including masking and spot plating techniques),
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`thermoset molding methods and equipment (as well as other molding approaches),
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`die mounting (both eutectic and conductive epoxy), gold and aluminum
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`wirebonding techniques and equipment, molded leadframe dicing and singulation
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`methods, and a variety of package failure analyses on high power devices
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`(including an LED) in thermoset packages.
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`11.
`
`I have authored more than 25 journal and conference papers,
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`including numerous papers on topics relating to semiconductor devices, electronic
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`circuit design and packaging.
`
`12.
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`I have been invited to give professional talks at various conferences.
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`For example, in 1997, I gave an invited talk on “IC [Integrated Circuit]
`
`Technologies for Wireless Applications Beyond 2000” and received an Author’s
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`award for my work in that area.
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`13.
`
`I am a named inventor or co-inventor on the following nine U.S.
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`Patents:
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`5
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`LOWES Ex 1003 Page 0008
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`U.S. Patent No. 8,653,897, entitled “Devices, systems, and methods for con-
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`trolling the temperature of resonant elements”
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`U.S. Patent No. 8,248,173, entitled “Devices, systems, and methods for con-
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`trolling the temperature of resonant elements”
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`U.S. Patent No. 7,727,806, entitled “Systems and methods for high density
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`multi-component modules”
`
`U.S. Patent No. 6,836,366, entitled “Integrated tunable fabry-perot filter and
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`method of making same”
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`U.S. Patent No. 6,525,880, entitled “Integrated tunable fabry-perot filter and
`
`method of making same”
`
`U.S. Patent No. 5,880,483, entitled “Semiconductor devices”
`
`U.S. Patent No. 5,223,458, entitled “Method of manufacturing a III-V semi-
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`conductor device using a self-biased substrate and a plasma containing an
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`electronegative species”
`
`U.S. Patent No. 4,526,673, entitled “Coating method”
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`U.S. Patent No. 4,440,108, entitled “Ion beam coating apparatus”
`
`14.
`
`I have previously testified in a number of patent cases, many of
`
`which concerned
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`integrated circuits and components,
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`including optical
`
`components, before various District Courts, the International Trade Commission
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`6
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`LOWES Ex 1003 Page 0009
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`and the Patent Trial and Appeal Board. These engagements as well as a list of my
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`publications can be found on my curriculum vitae, attached as Appendix A.
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`15.
`
`I have been qualified in multiple courts to offer expert opinions on
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`integrated circuits, optical and electronic devices, and their packaging technology.
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`III.
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`PRIORITY DATE AND ONE OF ORDINARY SKILL
`
`16.
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`I understand that the factors considered in determining the ordinary
`
`level of skill in a field of art include the level of education and experience of
`
`persons working in the field; the types of problems encountered in the field; and
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`the sophistication of the technology at the time of the invention, which I
`
`understand is asserted to be September 3, 2008. I understand that a person of
`
`ordinary skill in the art is not a specific real individual, but rather is a hypothetical
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`individual having the qualities reflected by the factors above. I understand that a
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`person of ordinary skill in the art would also have knowledge from the teachings of
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`the prior art, including the art cited below.
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`17.
`
`In my opinion, on or before September 3, 2008, a person of ordinary
`
`skill in the art (“POSITA”) relating to the technology of the ’411 patent would
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`have a minimum of a Bachelor’s degree in Physics, Electrical Engineering,
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`Material Science, or a related field, and approximately 5 years of professional
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`experience in the field of semiconductor technology, including manufacturing and
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`packaging processes for light emitting devices. Additional graduate education
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`7
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`LOWES Ex 1003 Page 0010
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`could substitute for professional experience, or significant experience in the field
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`could substitute for formal education. A POSITA is presumed to have knowledge
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`of all relevant prior art, and would thus have been familiar with each of the
`
`references cited herein, as well as the background knowledge in the art discussed
`
`in Section V, and the full range of teachings they contain.
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`18.
`
`Well before September 3, 2008, my level of skill in the art was at
`
`least that of a POSITA. I am qualified to provide opinions concerning what a
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`POSITA would have known and understood at that time, and my analysis and
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`conclusions herein are from the perspective of a POSITA as of September 3, 2008.
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`IV. MATERIALS RELIED UPON
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`19.
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`In reaching the conclusions described in this declaration, I have
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`relied on the documents and materials cited herein as well as those identified in
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`Appendix B attached to this declaration. These materials comprise patents, related
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`documents, and printed publications. Each of these materials is a type of document
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`that experts in my field would reasonably rely upon when forming their opinions.
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`20.
`
`My opinions are also based upon my education, training, research,
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`knowledge, and personal and professional experience.
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`V.
`
`BACKGROUND ON THE STATE OF THE ART
`
`21.
`
`Before the claimed priority date of the ’411 patent, it was well-
`
`known in the art to manufacture light emitting diode (LED) packages comprising a
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`8
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`LOWES Ex 1003 Page 0011
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`resin part and a metal part (referred to in the art as a lead or leadframe), and to use
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`metal leadframes with notches on four sides. As discussed further below, each
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`element of the Challenged Claims was disclosed in the prior art and well-known
`
`before the claimed priority date.
`
`22.
`
`LEDs and methods for manufacturing LEDs were well-known in the
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`art before the claimed priority date of the ’411 patent. E.g., Ex. 1004 (Loh) ¶ 2
`
`(disclosing “packages for solid state light emitting devices and methods of forming
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`packages for solid state light emitting devices”); Ex. 1005 (Mori) ¶¶ 2, 45
`
`(disclosing “a light-emitting apparatus and illuminating apparatus for radiating out
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`light that has been emitted from a light-emitting element such as a light-emitting
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`diode” and “a method for manufacturing the light-emitting apparatus”); Ex. 1006
`
`(Wang) ¶ 2 (disclosing “a method of manufacturing high power light-emitting
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`device packages and structure thereof”); Ex. 1007 (Oshio) ¶¶ 2, 83 (disclosing “a
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`semiconductor light emitting device” and “a process of manufacturing a
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`semiconductor light emitting device”).
`
`23.
`
`It was also well-known and conventional in the art before the
`
`claimed priority date of the ’411 patent to form a resin package for an LED
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`comprising a resin part and a metal part including at least two metal plates (known
`
`in the art as leads). E.g., Ex. 1004 (Loh), Abstract, ¶¶ 60, 73, 76, 96, Figs. 5-8
`
`(disclosing a “package for a light emitting device” comprising “a leadframe ...
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`9
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`LOWES Ex 1003 Page 0012
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`includ[ing] ... a plurality of leads” formed of “copper, aluminum or another metal”
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`and “package body 230 ... formed on/around the leadframe” using “thermosets
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`such as epoxy or phenolic resin”); Ex. 1005 (Mori) ¶¶ 5-7, Figs. 1-3, 8-9
`
`(disclosing a “light-emitting apparatus” comprising “a molded lead terminal made
`
`of copper (Cu) or an iron (Fe)-nickel (Ni) alloy [that] is fixedly arranged within the
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`base bod[y]” and a “frame bod[y]” made of “a resin material such as epoxy resin”);
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`Ex. 1007 (Oshio) ¶ 49, Figs. 1-10 (disclosing a “semiconductor light emitting
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`device” that “comprises a pair of leads 20 and 30, and embedding resin 40”). And
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`it was well-known in the art before the claimed priority date to form a resin
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`package for an LED having four outer lateral surfaces and a concave portion
`
`having a bottom surface. E.g., Ex. 1004 (Loh) ¶¶ 79, 96, Figs. 5, 7 (disclosing a
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`resin package having four outer lateral surfaces and “a reflector cup above and
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`surrounding the die mounting regions”); Ex. 1007 (Oshio) ¶ 61, Figs. 1-4, 5A, 6-
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`10, 16-17 (disclosing a resin package having four outer lateral surfaces where “the
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`embedding resin 40 has a recess 40C, at the bottom of which are exposed in part
`
`the inner lead sections 20B and 30B including the recess 20C of the lead”); Ex.
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`1008 (Koung) ¶ 21, Figs. 2A-C (disclosing a resin package having four outer
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`lateral surfaces where “reflective base (230) has a recess (233)” with a bottom
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`surface).
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`LOWES Ex 1003 Page 0013
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`24.
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`It was further well-known and conventional in the art before the
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`claimed priority date of the ’411 patent to mount a light emitting element on a
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`bottom surface of a concave portion of the resin package and to electrically
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`connect the light emitting element to the metal part (known in the art as a
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`leadframe). E.g., Ex. 1004 (Loh) ¶ 81, Figs. 5, 7 (disclosing that “solid state light
`
`emitting devices 214 are mounted” on the bottom surface of a concave portion of a
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`resin package and “electrically connected to respective ones of the first electrical
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`leads 206”); Ex. 1005 (Mori) ¶¶ 5, 7-8, 13, Figs. 8-9 (disclosing that a “light-
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`emitting element” is mounted on a bottom surface of a concave portion of a resin
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`package and “electrically connected” to the leads); Ex. 1007 (Oshio) ¶¶ 61-63,
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`Figs. 1-2 (disclosing that “[t]he LED chip 10” is mounted on the bottom surface of
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`a concave portion of a resin package and “[t]he electrode of the LED chip 10 is
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`connected to the other inner lead section 30B via bonding wire 60”).
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`25.
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`It was further well-known in the art before the claimed priority date
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`of the ’411 patent to form a resin package such that at least a portion of an outer
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`lateral surface of the resin part and at least a portion of an outer lateral surface of
`
`the metal part are coplanar at an outer lateral surface of the resin package. E.g., Ex.
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`1004 (Loh) ¶¶ 60, 73, 76, 96, Fig. 7 (disclosing that a portion of an outer lateral
`
`surface of a resin part and a portion of an outer lateral surface of a metal part are
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`coplanar at an outer lateral surface of a resin package); Ex. 1008 (Koung) ¶¶ 20-21,
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`11
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`LOWES Ex 1003 Page 0014
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`24, Fig. 2C (disclosing that a portion of an outer lateral surface of a resin part and a
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`portion of an outer lateral surface of a metal part are coplanar at an outer lateral
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`surface of a resin package); Ex. 1010 (Lin) ¶¶ 9, 25, Figs. 2a-2f, 3a-3b, 4a-4g
`
`(disclosing that a portion of an outer lateral surface of a resin part and a portion of
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`an outer lateral surface of a metal part are coplanar at an outer lateral surface of a
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`resin package). And it was well-known in the art before the claimed priority date to
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`form a resin package such that both a part of the metal part (known in the art as a
`
`leadframe) and a part of the resin part are below an upper surface of the metal part,
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`on four outer lateral surfaces of the resin package. E.g., Ex. 1004 (Loh) ¶¶ 60, 73,
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`76, 96, Fig. 7 (disclosing that at four outer lateral surfaces of the resin package, a
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`part of the metal part and a part of the resin part are below an upper surface of the
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`metal part); Ex. 1008 (Koung) ¶¶ 20-21, 24, Figs. 2B-C (disclosing that at four
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`outer lateral surfaces of the resin package, a part of the metal part and a part of the
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`resin part are below an upper surface of the metal part); Ex. 1010 (Lin) ¶¶ 9, 25,
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`Figs. 2a-2f, 3a-3b, 4a-4g (disclosing that at four outer lateral surfaces of the resin
`
`package, a part of the metal part and a part of the resin part are below an upper
`
`surface of the metal part).
`
`26.
`
`Additionally, it was well-known in the art before the claimed
`
`priority date of the ’411 patent to form a notch in the metal part (known in the art
`
`as a leadframe) at each of the four outer lateral surfaces of the resin package. E.g.,
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`12
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`LOWES Ex 1003 Page 0015
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`Ex. 1004 (Loh) ¶¶ 60, 73, 76, 96, Figs. 6-7 (disclosing a notch in the leadframe at
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`four outer lateral surfaces of the resin package); Ex. 1008 (Koung) ¶¶ 20-21, 24,
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`Figs. 2B-C, 3A-B, 4B-F (disclosing a notch in the leadframe at four outer lateral
`
`surfaces of the resin package); Ex. 1010 (Lin) ¶¶ 9, 25, Figs. 2a-2f, 3a-3b, 4a-4g)
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`(disclosing a notch in the leadframe at four outer lateral surfaces of the resin
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`package).
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`27.
`
`It was further well-known in the art before the claimed priority date
`
`of the ’411 patent to form a portion of the resin part above the upper surface of the
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`metal part (known in the art as a leadframe) integrally with a portion of the resin
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`part below the upper surface of the metal part. E.g., Ex. 1004 (Loh) ¶¶ 10, 60, 73,
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`76, 96, Fig. 7 (disclosing that a portion of a resin part above an upper surface of a
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`metal part is formed integrally with a portion of the resin part below the upper
`
`surface of the metal part); Ex. 1008 (Koung) ¶¶ 20-21, 24, Fig. 2C (disclosing that
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`a portion of a resin part above an upper surface of a metal part is formed integrally
`
`with a portion of the resin part below the upper surface of the metal part).
`
`28.
`
`Using metal plates (known in the art as leadframes) that are
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`substantially flat and where all upper edges are coplanar was also well-known and
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`conventional in the art before the claimed priority date of the ’411 patent. E.g., Ex.
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`1004 (Loh) ¶ 73, Figs. 5-7 (disclosing metal plates that are substantially flat where
`
`all upper edges are coplanar); Ex. 1006 (Wang) ¶ 9, Figs. 3-5 (disclosing metal
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`13
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`LOWES Ex 1003 Page 0016
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`plates that are substantially flat where all upper edges are coplanar); Ex. 1008
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`(Koung) ¶ 20, Figs. 2A-2B, 4B (disclosing metal plates that are substantially flat
`
`where all upper edges are coplanar).
`
`29.
`
`It was further well-known in the art before the claimed priority date
`
`of the ’411 patent to use a metal part (known in the art as a leadframe) having a
`
`step portion, a concave portion, and/or a convex portion and having surfaces at two
`
`or more different levels. E.g., Ex. 1004 (Loh) ¶¶ 73, 76, Fig. 5 (disclosing a metal
`
`part having a step portion and/or concave portion and surfaces at two or more
`
`different levels); Ex. 1006 (Wang) ¶ 9, Figs. 3-5 (disclosing that the leadframe has
`
`a step portion and surfaces at two or more different levels); Ex. 1007 (Oshio) ¶¶
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`52, 61, Figs 1-3 (disclosing a metal part having a step portion and surfaces at two
`
`or more different levels); Ex. 1008 (Koung) ¶¶ 30, 32, Figs. 2A, 2D (disclosing a
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`metal part having a step portion and/or concave portion and surfaces at two or
`
`more different levels).
`
`30.
`
`Plating the metal part (known in the art as a leadframe) on each of
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`an upper surface and a lower surface of the base portion, the metal layers being
`
`made of a material that is different from that of the base portion, was further well-
`
`known and conventional in the art before the claimed priority date of the ’411
`
`patent. E.g., Ex. 1006 (Wang) ¶¶ 9, 13, 39, 41, 53-54; Figs. 2-5 (disclosing plating
`
`a metal layer made of a different material than the base portion on all surfaces of
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`the metal leads); Ex. 1007 (Oshio) ¶ 69, Figs. 1-4 (disclosing plating a metal layer
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`such as “silver (Ag), or nickel (Ni)/palladium (Pd)/gold (Au)” on all surfaces of the
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`leads made of, e.g., a “copper (Cu) based alloy”).
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`31.
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`It was also well-known in the art before the claimed priority date of
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`the ’411 patent to cut the metal part (known in the art as a leadframe) after plating,
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`such that a metal layer (of plating) is disposed at all surfaces of the metal part
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`except a portion of an outer lateral surface of the metal part. E.g., Ex. 1006 (Wang)
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`¶¶ 9, 13, 39, 41, 53-54, Figs. 2-5 (disclosing plating on all surfaces of a leadframe,
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`then molding and cutting into individual packages, such that a metal layer of
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`plating is disposed at all surfaces of the metal part except a portion of an outer
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`lateral surface of the metal part); Ex. 1007 (Oshio) ¶¶ 69, 114, Figs. 4, 18B
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`(disclosing plating on all surfaces of a leadframe, then molding and cutting into
`
`individual packages, such that a metal layer of plating is disposed at all surfaces of
`
`the metal part except a portion of an outer lateral surface of the metal part).
`
`32.
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`It was further well-known and conventional in the art before the
`
`claimed priority date of the ’411 patent to use a thermosetting resin. E.g., Ex. 1004
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`(Loh) ¶¶ 88, 96-100 (disclosing “a body formed of a thermoset on a dual-gauge
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`metal leadframe” and “thermosets such as epoxy or phenolic resin”); Ex. 1009
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`(Park ’697) ¶¶ 13, 1, 12, Abstract, Figs. 1-7 (disclosing a “thermosetting resin”).
`
`And it was well-known in the art before the claimed priority date to use a light
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`LOWES Ex 1003 Page 0018
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`reflecting material such as titanium dioxide in the resin part. E.g., Ex. 1004 (Loh)
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`¶¶ 103, 80 (disclosing that “thermoset material[]” of the package body is “loaded
`
`with filler particles, such as...irregularly-shaped TiO2 solid particles...to obtain
`
`desired...optical surface reflectance.”); Ex. 1009 (Park ’697) ¶¶ 13, 1, 12, Abstract,
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`Figs. 1-7 (disclosing that “the reflection cup 91 having a reflector on the surface is
`
`produced from a TiO2-based white thermosetting resin 9 by the transfer mold
`
`method”).
`
`33.
`
`Using a sealing member containing two or more kinds of phosphors
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`to adjust the color of light emitted from the LED package was also well-known and
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`conventional in the art before the claimed priority date of the ’411 patent. E.g., Ex.
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`1005 (Mori) ¶ 5 (disclosing “a light-emitting apparatus 111 of conventional
`
`design” that includes a “light transmitting member” containing “two kinds of
`
`phosphors” which serve to “perform wavelength conversion on the light emitted
`
`from the light-emitting element”); Ex. 1010 (Lin) ¶ 29 (disclosing “an UV (ultra-
`
`violet) LED chip 150 is buried in red, green, and blue phosphors 105”).
`
`34.
`
`It was further well-known in the art before the claimed priority date
`
`of the ’411 patent to expose a lower surface of the metal part (known in the art as a
`
`leadframe) from the resin part directly under the light emitting element. E.g., Ex.
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`1004 (Loh) ¶ 77, Figs. 5, 8 (disclosing that “[t]he package body 230 may expose
`
`the bottom surface 202b of the die mounting regions 202...of the leadframe 200”);
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`LOWES Ex 1003 Page 0019
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`Ex. 1007 (Oshio) ¶ 50, Figs. 1, 3 (disclosing that “the portion of the lead 20
`
`directly below the semiconductor light emitting chip (LED chip) 10 is not covered
`
`with the resin 40 and exposed”); Ex. 1008 (Koung) ¶ 21, Fig. 2A (disclosing “at
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`least a portion of an lower surface of the dissipating board (210) and at least a
`
`portion of an lower surface of the electrodes (220) are exposed from a lower
`
`surface of the reflective base (230)”). And it was well-known in the art before the
`
`claimed priority date to expose at least a portion of the light emitting element from
`
`the resin part. E.g., Ex. 1004 (Loh) ¶¶ 81, 96, Fig. 5 (disclosing that the solid state
`
`light emitting devices are exposed from the resin of the package body); Ex. 1005
`
`(Mori) ¶¶ 5-7, Fig. 9 (disclosing a “light-emitting element” exposed from the resin
`
`of the frame body); Ex. 1007 (Oshio) ¶ 61, Fig. 1 (disclosing that the “LED chip”
`
`is exposed from the resin part). It was also well-known in the art before the
`
`claimed priority date to dispose the resin part over a first portion of a metal layer
`
`(of plating) at the upper surface of the metal part (known in the art as a leadframe),
`
`and expose a second portion of the metal layer (of plating) at the upper surface of
`
`the metal part from the resin part. E.g., Ex. 1006 (Wang) ¶¶ 9, 41, 44, Figs. 2-5
`
`(disclosing that the encapsulant is disposed over a portion of an upper surface of a
`
`plated leadframe and a second portion of the upper surface of the plated leadframe
`
`is exposed from the encapsulant); Ex. 1007 (Oshio), ¶¶ 69, 71, Figs. 1, 4
`
`(disclosing that the resin part is disposed over a portion of an upper surface of a
`
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`LOWES Ex 1003 Page 0020
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`plated leadframe and a second portion of the upper surface of the plated leadframe
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`is exposed from the resin part); Ex. 1008 (Koung) ¶¶ 26, 20-21, Figs. 2A, 2D
`
`(disclosing that the resin part is disposed over a portion of an upper surface of a
`
`plated leadframe and a second portion of the upper surface of the plated leadframe
`
`is exposed from the resin part); Ex. 1009 (Park ’697) ¶¶ 1, 12, Figs. 1a-c
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`(disclosing that the resin part is disposed over a first portion of an upper surface of
`
`a silver-plated leadframe and a second portion of the upper surface of the silver-
`
`plated leadframe is exposed from the resin part).
`
`VI. ANALYSIS OF THE ’411 PATENT
`
`A.
`
`35.
`
`Overview of the ’411 Patent
`
`The ’411 patent, entitled “[l]ight emitting device, resin package,
`
`resin-molded body, and methods for manufacturing light emitting device, resin
`
`package and resin-molded body,” relates to semiconductor technology, including
`
`manufacturing and packaging processes for light emitting devices. E.g., Ex. 1001
`
`(’411 patent), 1:18-36. The ’411 patent states that such light emitting devices are
`
`used for, e.g., “light equipment, a display, a backlight of a mobile telephone, a
`
`movie lighting auxiliary light source, and other general consumer light sources.”
`
`Id. The ’411 patent further states that “[a] light emitting device using light emitting
`
`elements is small, provides good power efficiency, and emits light of bright color.”
`
`Id., 1:26-28. The ’411 patent states that an objective is to “improve adhesion
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`between the lead frame and the thermosetting resin” for an LED package. Id., 3:51-
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`55; see also, e.g., id., 5:17-21, 3:26-30, 3:38-4:10. However, as discussed in this
`
`Declaration, the ’411 patent merely describes the known technique of molding a
`
`thermosetting resin onto a leadframe with notches to produce an LED package
`
`having high adhesion between the leadframe and the thermosetting resin.
`
`36.
`
`The ’411 patent describes the manufacturing process for a “resin
`
`package” for an LED comprising a “resin part” (shown in green in Figure 6, item
`
`125) and a “metal part,” which is a pair of “leads” formed from “a metal plate”
`
`(shown in blue in Figure 6, item 122). E.g., Ex. 1001, 8:18-19, 9:28-29, 9:54-56,
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`13:45-62, Figs. 6-7. For example, the ’411 patent states that “[t]he resin package
`
`has and is made by integrally molding a resin part formed with a thermosetting
`
`resin and the leads.” Id., 8:18-19. “The lead frame is formed by, for example,
`
`punching or etching a metal plate of a flat plate shape.” Id., 9:28-29.
`
`37.
`
`The ’411 patent further describes that a “thermosetting resin” can be
`
`used for the “resin part.” Id., 8:62-9:3; see also id., 14:29-32.