`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner
`__________________
`
`Case No. IPR2018-00965
`Patent 7,919,787
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
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`

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`
`
`TABLE OF CONTENTS
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`
`Page
`Introduction ...................................................................................................... 1
`I.
`II. General Defects and Concessions in Patent Owner’s Response ..................... 2
`A.
`Patent Owner presents attorney argument, not evidence from the
`perspective of a POSITA ....................................................................... 2
`Patent Owner’s concessions .................................................................. 2
`B.
`III. Claim Construction .......................................................................................... 3
`A.
`“[top] major light emitting surface;” “an oppositely-disposed
`[bottom] major surface;” “the [bottom] major surface … is a
`bottom surface of a substrate of the die” ............................................... 4
`“formed on” ......................................................................................... 13
`B.
`IV. The Challenged Claims are Unpatentable ..................................................... 16
`A.
`Each of Weeks, Wirth, and Negley discloses the claimed “light
`emitting semiconductor die….” structure ........................................... 16
`1. Weeks ........................................................................................ 16
`2. Wirth ......................................................................................... 21
`3.
`Negley ....................................................................................... 22
`B. Grounds 1-3: Lumbard, in view of Weeks, Wirth, or Negley
`render obvious claims 1-14 ................................................................. 26
`C. Grounds 4-6: Ishidu, in view of Weeks, Wirth, or Negley render
`obvious claims 1, 5-7 .......................................................................... 26
`D. Grounds 7-9: Ogawa, in view of Weeks, Wirth, or Negley render
`obvious claims 1-14............................................................................. 27
`The Board Properly Instituted this IPR ......................................................... 28
`V.
`VI. Conclusion ..................................................................................................... 28
`
`
`
`i
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`

`

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`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`Anacor Pharms., Inc. v. Iancu,
`889 F.3d 1372 (Fed. Cir. 2018) .......................................................................... 17
`
`
`Apple, Inc. v. Evolved Wireless, LLC,
`IPR2016-00758, Paper 48 (P.T.A.B. Mar. 12, 2018) ........................................... 2
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2013-00539, Paper 33 (P.T.A.B. Mar. 3, 2015) ........................................... 14
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................ 4
`
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) ............................................................................ 2
`
`Idemitsu Kosan Co. v. SFC Co.,
`870 F.3d 1376 (Fed. Cir. 2017) .......................................................................... 17
`
`
`Itron Network Solutions, Inc. v. Acoustic Tech., Inc.,
`IPR2017-01024, Paper 49 (P.T.A.B. Aug. 21, 2018) ..................................... 2, 14
`
`
`
`In re Keller,
`642 F.2d 413 (CCPA 1981) ................................................................................ 27
`
`
`Paice LLC v. Ford Motor Co.,
`881 F.3d 894 (Fed. Cir. 2018) .............................................................................. 7
`
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001) ............................................................................ 7
`
`
`Thorner v. Sony Computer Enm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ...................................................................... 4, 14
`
`
`
`
`
`
`
`ii
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`

`

`
`
`Wasica Fin. GmbH v. Continental Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ...................................................................... 4, 14
`
`
`Regulations
`
`37 C.F.R. §42.5(b) ................................................................................................... 28
`
`
`
`iii
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`
`
`I.
`
`Introduction
`The Board correctly instituted review of claims 1-14, (see Paper 15), and
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`should finally find all claims unpatentable. The claims are directed to well-known
`
`light emitting semiconductor dies (such as those of Weeks, Wirth, and Negley) and
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`well-known substrate packaging assemblies (such as those of Lumbard, Ishidu, and
`
`Ogawa).
`
`Much like its Preliminary Response, Patent Owner’s Response does not
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`rebut (or even address) the majority of the evidence Petitioner set forth in its
`
`Petition or the expert testimony of Dr. Shealy, e.g.: (i) it would have been simple
`
`and obvious to combine the prior-art light emitting semiconductor dies with the
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`prior-art substrate packaging assemblies; (ii) Applicant’s admissions during
`
`prosecution regarding the knowledge of a POSITA and the known structural
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`makeup of the claimed light emitting semiconductor die; and (iii) Dr. Shealy’s
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`reasoned testimony explaining a POSITA’s understanding of the claimed die’s
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`structural makeup.
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`Instead, Patent Owner—through attorney argument—attempts improperly to
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`rewrite the claims by grafting baseless restrictions onto the “bottom major surface”
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`and “formed on” claim limitations. The Board, in its Institution Decision, properly
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`rejected this attorney argument, and should do so again. The argument is contrary
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`
`
`1
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`

`

`
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`to the ’787 patent and its file history, where there are no clear definitions or
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`disavowals to warrant narrowing the claims.
`
`As explained in the Petition and herein, the record evidence—including the
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`’787 patent, its file history, the prior art, and Dr. Shealy’s unrebutted expert
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`testimony—shows that each Ground renders the claims obvious.
`
`II. General Defects and Concessions in Patent Owner’s Response
`Patent Owner presents attorney argument, not evidence from the
`A.
`perspective of a POSITA
`As a threshold matter, Petitioner notes that Patent Owner’s Response suffers
`
`from a general defect: the failure to provide evidence or analysis beyond attorney
`
`argument. Such “attorney argument [is] not the kind of factual evidence that is
`
`required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465,
`
`1470 (Fed. Cir. 1997); Itron Network Solutions, Inc. v. Acoustic Tech., Inc.,
`
`IPR2017-01024, Paper 49, 26 (P.T.A.B. Aug. 21, 2018); Apple, Inc. v. Evolved
`
`Wireless, LLC, IPR2016-00758, Paper 48, 20 (P.T.A.B. Mar. 12, 2018).
`
`Here, Patent Owner’s failure to provide evidence from the perspective of a
`
`POSITA should be fatal.
`
`Patent Owner’s concessions
`B.
`Patent Owner does not address or attempt to rebut much of Petitioner’s
`
`evidence, including:
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`
`
`2
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`

`

`
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`• That it would have been simple and obvious to substitute the light emitting
`semiconductor die of Weeks, Wirth, or Negley into the substrate packaging
`assembly of Lumbard, Ishidu, or Ogawa. E.g., Pet., 26-31, 62-64, 72-74;
`Paper 15, 21, 25-26, 29; Ex. 1003, ¶¶56-88, 112-122, 213-18, 253-58; Ex.
`1002, 148; Ex. 2008, 137:2-138:16.
`
`• That Applicant admitted during prosecution that: (i) it “was known … to
`construct a light emitting semiconductor die with an anode and cathode on
`one surface of the semiconductor die and a light emitting surface on the
`opposite surface of the semiconductor die;” (ii) “it was well within the
`knowledge of [a POSITA] to construct a light emitting semiconductor die as
`claimed;” (iii) “the semiconductor arts are a well-established and predictable
`field;” and (iv) “light-emitting semiconductor dies and their behavior are
`well established and predictable.” E.g., Pet., 13-14, 19; Paper 15, 16-17, 21;
`Ex. 1003, ¶¶ 43-45, 56-77, 96-111; Ex. 1002, 146-48; Ex. 2008, 170:20-
`171:20.
`
`• Dr. Shealy’s reasoned expert testimony from the perspective of a POSITA—
`supported by his decades of experience, prior-art literature, the ’787 patent,
`and Applicant’s own admissions—regarding the structural makeup of the
`claimed “light emitting semiconductor die.” E.g., Pet., 10-14, 19-25, 36-40;
`Ex. 1003, ¶¶56-77, 96-111, 133-146; Ex. 2008, 169:2-177:7.
`
`III. Claim Construction
`The Board in its Institution Decision properly rejected Patent Owner’s
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`implicit and unsupported claim constructions. E.g., Paper 15, 6-7, 17-20. Nothing
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`has changed that warrants a different result.
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`
`
`3
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`

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`
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`A.
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`“[top] major light emitting surface;” “oppositely-disposed
`[bottom] major surface;” “the [bottom] major surface … is a
`bottom surface of a substrate of the die”
`Although Patent Owner does not offer its own construction, it appears to
`
`argue that a “major surface” must consist of a single planar, continuous, and
`
`unbroken physical material. Paper 21, 19-24.1
`
`The Board has already rejected Patent Owner’s apparent construction in its
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`Institution Decision for related U.S. Patent No. 7,256,486. See IPR2018-01166,
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`Paper 9, 10-13. The record evidence shows the same result is appropriate here.
`
`When viewed in the context of the ’787 patent, the file history, and Dr. Shealy’s
`
`testimony, it becomes clear that Patent Owner’s attorney argument seeks to
`
`improperly read in unwarranted restrictions. See Wasica Fin. GmbH v.
`
`Continental Auto. Sys., Inc., 853 F.3d 1272, 1281-82 (Fed. Cir. 2017); Thorner v.
`
`Sony Computer Enm’t Am. LLC, 669 F.3d 1362, 1366-68 (Fed. Cir. 2012); CCS
`
`
`1 For example, Patent Owner argues that “[t]reating a set of smaller surfaces
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`together to constitute a ‘major surface’ is illogical and fails to give meaning to the
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`claim term, ‘major surface,’” (Paper 21, 31 n.11), and that it is “error” to treat “the
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`many different non-contact and contact surfaces along the optoelectric [sic]
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`component’s backside, despite their geometric arrangements, as a ‘bottom major
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`surface,’” (id., 34 (emphasis in original)).
`
`
`
`4
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`

`

`
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`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`To explain the problems with Patent Owner’s implicit constructions,
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`Petitioner addresses the specification, the file history, and Dr. Shealy’s testimony,
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`in turn.
`
`The Specification
`
`The specification demonstrates that a “major surface” is a geometric
`
`construct to orient a POSITA, which surface is greater in size than the other faces.
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`It further demonstrates that a “surface” is still considered a single construct, despite
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`the existence of through holes or vias formed within.
`
`For example, the specification describes that a “major surface” can extend
`
`across through holes in which interconnects are placed. Ex. 1001, 3:63-4:18, 12:6-
`
`38; FIGs. 1B, 2B, 7B. This is seen in Figure 7B, below, which shows
`
`“substantially planar” “substrate 710” (purple) with “lower major surface 714
`
`[green] of the substrate 710” and “upper major surface 712 [red] of the substrate
`
`710”—despite the existence of “through holes 716 and 718” (yellow). Id., 12:6-
`
`38, 3:63-4:18; FIGs. 1B, 2B, 7B.
`
`
`
`5
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`

`

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`
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`As shown above and confirmed by the specification, the ’787 patent teaches
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`that “lower major surface 714” of “substrate 710” and “upper major surface 712”
`
`of “substrate 710” include not only the physical substrate material 710, but also
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`through holes 716 and 718 of substrate 710 in which interconnects 720 and 722 are
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`placed—in total, as Patent Owner would describe it, five discrete surface portions
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`that together make up a single “major surface.” Id. These portions are shown in
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`Figure 7B, with numbering (#1-5) added:
`
`#1
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`#2
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`#1
`
`#2
`
`#3
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`#3
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`#4
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`#5
`
`#4
`
`#5
`
`
`Although the specification, in this cited portion, is describing the “major
`
`surfaces” of the substrate assembly, as opposed to the “major surfaces” of the
`
`
`
`6
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`

`

`
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`LED die, the term “major surface” is used consistently throughout the specification
`
`and the claims and should be ascribed the same meaning throughout. See Rexnord
`
`Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). Patent Owner does
`
`not assert otherwise. See Paice LLC v. Ford Motor Co., 881 F.3d 894, 904 (Fed.
`
`Cir. 2018).
`
`And, while the specification treats “semiconductor die 750” as a black box
`
`(Ex. 1001, 11:65-13:67),2 it does not do so because it literally has six totally
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`smooth sides made of unitary materials, but rather because a POSITA would have
`
`understood the various ways in which the die would (or could) have been formed.
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`According to Applicant, it was both (i) “known … to construct a light emitting
`
`
`2 The specification’s only disclosure of a die’s basic structural makeup is in the
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`context of a die with an anode and a cathode on opposite die surfaces, which is not
`
`the claimed invention. Ex. 1001, 5:49-61. Even then, the specification states: “the
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`bottom major surface (not shown) of the substrate remote from the layers of
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`(indium) gallium nitride….” See id., 5:61-64 (emphasis added)). Moreover, as Dr.
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`Shealy explained, a die with the electrodes on opposite surfaces will have a
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`different structural makeup than a die with electrodes on the same surface
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`(including, e.g., the latter having an insulation layer to prevent short circuiting the
`
`device and one or more vias to enable operation). Ex. 2008, 169:2-177:7.
`
`
`
`7
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`

`

`
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`semiconductor die with an anode and cathode on one surface of the semiconductor
`
`die and a light emitting surface on the opposite surface of the semiconductor die”
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`and (ii) “well within the knowledge of [a POSITA] to construct a light emitting
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`semiconductor die as claimed.” Ex. 1002, 146; Ex. 2008, 170:11-171:20 (Dr.
`
`Shealy explaining that die 750 was treated as a “black box” because, “in defense of
`
`the patent, the inventors did say this was a well-known art….”).
`
`And, as Dr. Shealy explained, a POSITA would have understood that the
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`claimed die substrate must include a via into the substrate because otherwise the
`
`claimed device would not work. Ex. 2008, 169:2-177:7. Specifically, when
`
`responding to questions by Patent Owner’s counsel regarding “black box” die 750
`
`in Figure 7B of the ’787 patent, and the anode and cathode on the die’s bottom
`
`major surface, Dr. Shealy testified as follows:
`
`Q. … So the anode and cathode would be some part of 750 that’s in
`contact with 760 or 762 – is that right?
`A. What’s not shown here is one of those – depending on the kind of die it
`is, one of those – either 760 or 762 has to have a connection to –
`depending upon the orientation of the die, the top N or P type layer.
`So there has to be a via in here to make this function. But this patent
`is silent on the details of the die. But as it’s drawn here, you know,
`the die is just a black box. They’re not showing any detail on how to
`actually achieve getting electrodes on the bottom major surface. But,
`of course, in defense of the patent, the inventors did say this was a
`well-known art, so that’s a – why I guess they didn’t focus at all on it.
`8
`
`
`
`

`

`
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`Id., 170:20-171:20 (objection omitted); see also 169:2-177:7 (explaining structural
`
`makeup of claimed die).
`
`Even Patent Owner’s attempt to rely on the patent’s “black box” approach to
`
`the die falls flat. Patent Owner cites to the statement: “a lower major surface of the
`
`die, which is the surface that faces the substrate….,” Paper 21, 22 (emphasis in
`
`original; citing Ex. 1001, 12:35-38), a statement that is at least consistent with—if
`
`not demonstrative of—the use of “surface” as a tool for geometric orientation, as
`
`explained by Dr. Shealy. See Ex. 1003, ¶¶50-53; Ex. 2008, 139:22-145:21, 169:2-
`
`177:7; Ex. 1001, 12:6-38, FIG. 7B.
`
`And, as discussed below in §IV.A, the prior art is in accord with Dr. Shealy
`
`and totally opposite to Patent Owner’s attorney argument. For example, Weeks
`
`uses “bottom surface” purely as a matter of geometric orientation: “[a]s shown in
`
`the figures, the term ‘backside’ refers to the bottom surface of the device,” and,
`
`“[t]hus, the topside is opposite the backside of the device.” Ex. 1007, 4:19-22
`
`(emphasis added); FIG. 8 (below):
`
`topside 18
`
`backside 22
`
`
`
`
`
`9
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`

`

`
`
`
`
`Similarly, Negley discloses “a light emitting device comprising a substrate
`
`having first and second [o]pposing surfaces.” Ex. 1009, ¶0009; FIG. 2D (below):
`
`first surface 210a
`
`second surface 210b
`
`The File History
`
`
`
`The file history confirms that the apparent restrictions Patent Owner seeks to
`
`add to its claims are unjustified.
`
`During prosecution, in response to a written description rejection, Applicant
`
`argued that “[a] quick review of the semiconductor arts reveals that it was known
`
`… to construct a light emitting semiconductor die with an anode and cathode on
`
`one surface of the semiconductor die and a light emitting surface on the opposite
`
`surface of the semiconductor die.” Ex. 1002, 146 (emphasis added); Ex. 1003,
`
`¶44. Applicant provided, as “one example,” U.S. Patent No. 6,593,597 (“Sheu,”
`
`Ex. 1002, 161-73), stating that Sheu “depicts and describes the construction of a
`
`flip-chip light emitting semiconductor die that has an anode and cathode on a
`
`common surface that opposes the light-emitting surface of the semiconductor die.”
`
`Id., 146 (emphasis added; citing Sheu, FIGs. 3B, 5; 7:42-51, 10:1-31). Figure 5 of
`10
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`
`
`

`

`
`
`Sheu, below, shows both “LED anode electrode 314” (blue) and “LED cathode
`
`electrode 316” (red) “on a common surface,” even though that surface consists of
`
`different materials at different lateral heights. Id., 172 (Sheu, 10:1-31).
`
`
`
` As with its description of Sheu’s “die that has an anode and cathode on a
`
`common surface,” Applicant similarly describes its own claimed invention as
`
`having “an anode and cathode residing on a common surface of a light emitting
`
`semiconductor die.” Id., 144 (emphasis added).
`
`Thus, the ’787 patent prosecution history confirms that a “bottom major
`
`surface” is a geometric construct. See id., 111, 143-47; Ex. 1003, ¶¶44, 48-54.
`
`Dr. Shealy’s Allegedly Inconsistent Testimony
`
`As for Dr. Shealy’s declaration and deposition testimony, they are entirely
`
`consistent.
`
`
`
`11
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`

`

`
`
`Patent Owner focuses on two out-of-context and mischaracterized deposition
`
`sound bites: (i) that a “surface” can be a “mathematical plane;” and (ii) an alleged
`
`distinction between a “surface” and a “face.”
`
`With respect to Dr. Shealy’s statement that a surface can be “a mathematical
`
`plane,” that testimony is not different from his declaration that “the ’787 patent is
`
`consistent in its usage of ‘major surface’ to refer, as a matter of geometric
`
`orientation, to a face that is greater in size than the other faces of the element being
`
`described.” Ex. 1003, ¶50 (emphasis added). Consistent with the plain meaning of
`
`“surface”—as described in the ’787 patent and by Applicant during prosecution—a
`
`“surface” in the claims is a geometric construct to orient a POSITA, i.e., a face.
`
`Ex. 1002, 144-46; Ex. 1015, 10:1-31, FIG. 5; Ex. 1001, 3:63-4:18, 12:6-63, FIGs.
`
`1B, 2B, 7B; Ex. 1003, ¶¶44, 48-54.
`
`With respect to the alleged “surface”/“face” distinction, it is a straw-man.
`
`Patent Owner makes much of the alleged distinction, but fails to explain what the
`
`distinction is or how it impacts any claim construction or invalidity analysis.
`
`Indeed, at varying points, Patent Owner uses the terms “surface,” “face,” and even
`
`“side” interchangeably. E.g., Paper 21, 24 (“the alleged bottom faces (or sides) of
`
`the LEDs….” (emphasis in original).
`
`And, in any event, Dr. Shealy did not testify simply that the “terms [surface
`
`and face] aren’t equivalent”; rather, he further stated that “they can be [equivalent]
`
`
`
`12
`
`

`

`
`
`in certain cases,” such as in the context of the ’787 patent claims where the terms
`
`are used as a geometrically orienting construct to indicate a particular (top or
`
`bottom) side of the die. Ex. 2008, 139:22-145:21, 169:2-177:7; Ex. 1003, ¶¶48-54.
`
`In fact, Dr. Shealy explained at his deposition, consistent with his declaration, why
`
`“face” is the proper interpretation in the context of the ’787 patent:
`
`• An LED die can be a “rectangular box” and would have “six faces on that
`box” where “[t]wo of the faces are much, much larger than the other four,
`because semiconductor dies are very thin. And so that top major surface is
`also a face of the rectangular box,” and “then there’s a bottom major surface,
`which is… also a face of that box.” Id., 142:1-21.
`
`• “You can consider each face of a rectangular box as a separate surface….”
`Id., 142:22-143:7.
`
`• “You could talk about this rectangular box as having an outer surface which
`could encompass all six faces, but that’s not the way it was used here. It was
`– it was a – a face was – because we qualified the use of the term ‘face’ to
`be, you know, upper or lower. But, yeah, surface – you could talk about the
`outer surface of a box or a basketball or something, and that – that would be
`the outer region.” Id., 144:18-145:14.
`
`“formed on”
`B.
`The Board properly found in its Institution Decision that “formed on” should
`
`be construed, in accordance with its plain and ordinary meaning, to include both
`
`direct and indirect formation. Paper 15, 6-7. In doing so, the Board noted that
`
`
`
`13
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`

`

`
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`“Patent Owner fail[ed] to provide evidence in support of its proposed
`
`construction.” Id., 6.
`
`Patent Owner’s Response again provides no evidence to depart from the
`
`plain and ordinary meaning, much less to import into the claim the word “direct,”
`
`such that the claim would read “[directly] formed on.” See Wasica, 853 F.3d at
`
`1281-82 (“absent a clear disavowal or alternative lexicography by a patentee,” a
`
`patentee that “choos[es] a broad term [should] expect to obtain the full scope of its
`
`plain and ordinary meaning” (internal quotation and citation omitted)); Thorner,
`
`669 F.3d at 1366-68 (holding that “attached” was subject to its “plain meaning…
`
`encompass[ing] either an external or internal attachment” despite patentee only
`
`using term “when referencing an attachment to an outer surface” because such use
`
`did not rise to level of clear disavowal or lexicography).
`
`Patent Owner does not cite to any portion of the specification or file history,
`
`or offer any evidence regarding the understanding of this term from the perspective
`
`of a POSITA. See Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2013-
`
`00539, Paper 33, 24 (P.T.A.B. Mar. 3, 2015); Itron, IPR2017-01024, Paper 49, 26.
`
`Regardless, the evidence confirms the Board’s construction is correct.
`
`As the Board noted, “the specification… describes various elements being
`
`‘formed on’ another element in the context of how the element is ‘formed,’ but
`
`does not otherwise specify that the element be directly formed on another
`
`
`
`14
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`

`

`
`
`element.” Paper 15, 7 (citing Ex. 1001, 10:24-37); see also Ex. 1001, 5:30-35, 7:4-
`
`12, 9:19-21, 10:11-23, 11:11-21.
`
`Given the absence of any specific teaching in the patent itself regarding the
`
`structural makeup of the admittedly well-known semiconductor die (discussed in
`
`§III.A), Dr. Shealy further explained that a POSITA would have understood that
`
`the claim language must encompass “indirect formation” because otherwise the
`
`claimed device would not work. Ex. 2008, 169:2-177:7. Specifically, when
`
`responding to questions regarding “black box” die 750 in Figure 7B of the ’787
`
`patent, Dr. Shealy testified that there must be an insulating layer between one of
`
`the cathode and anode and the claimed die substrate to prevent a short:
`
`Q. So looking at Figure 7-B from the perspective of a person of ordinary
`skill in the art, would there be any layers between the cathode and the
`bottom major surface of the die?
`A. It depends on what – you know, where the cathode is…. You have a
`one side – one side of this has got N type layers. The other side has
`the P type layers. So one of these, either 760 or 762, has to extend
`into the die to contact whatever N or P type layer’s on top. Usually
`it’s the N type layer on top…. So in order to do that, of course, the
`metallization – this has to be a metallization in the die that extends
`either 760 of 762 to the top of the die. And that, of course -- if you’re
`putting a conductor in there, you have to surround it with an insulator
`or it will short the device out.
`Id., 171:21-172:2 (objection omitted); see also 169:2-177:7.
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`15
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`The prior art confirms that a POSITA would have understood “formed on”
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`to include both direct and indirect formation. Paper 15, 7; Ex. 1007, 4:11-15 (“It
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`should be understood that when a layer is referred to as being ‘on’ … another layer
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`or substrate, it can be directly on the layer or substrate, or an intervening layer also
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`may be present.”); Ex. 1009, ¶20 (“…when an element such as a layer, region or
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`substrate is referred to as being ‘on’ another element, it can be directly on the other
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`element or intervening elements may also be present.”).
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`IV. The Challenged Claims are Unpatentable
`Patent Owner does not address the obviousness challenges as a whole.
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`Instead, Patent Owner focuses on certain alleged shortcomings in individual
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`references based solely on its overly restrictive claim interpretation. That should
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`be the end of the matter. However, Petitioner addresses herein the alleged
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`shortcomings in the dies of Weeks, Wirth, and Negley, and explains why the
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`evidence shows that each Ground renders obvious the challenged claims.
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`A. Each of Weeks, Wirth, and Negley discloses the claimed “light
`emitting semiconductor die….” structure
`1. Weeks
`Patent Owner argues that Weeks fails to disclose the claimed semiconductor
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`die structure essentially because (i) there is a “dielectric layer 31” between
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`“backside contact 20b” and “substrate 12” (and thus the backside contact 20b is not
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`formed directly on substrate 12) and (ii) “the sides of LED 70 are substantially
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`16
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`greater in length than the four contact surfaces on the bottom of LED 70” (or,
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`alternatively, that Weeks’ “backside 22” is not a “bottom major surface”). Paper
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`21, 27-33.3 These arguments fail.
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`With respect to Patent Owner’s first argument, as explained in §III.B and
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`confirmed by the record evidence, the claims encompass both direct and
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`indirection formation. For example, when asked about the understanding of the
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`admittedly well-known structural makeup of the “black box” semiconductor die
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`from the perspective of a POSITA, Dr. Shealy explained that a POSITA would
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`have understood that there must be an insulating layer between one of the claimed
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`anode or cathode and the claimed die substrate “or it will short the device out.”
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`Ex. 2008, 169:2-172:22, 174:6-177:7; see also §III.B. Again, Patent Owner does
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`not address Applicant’s admissions or Dr. Shealy’s testimony on this point; nor
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`does Patent Owner provide any citations to the ’787 patent or its file history, or
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`argue that there was a clear disavowal or a proffered lexicography.
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`3 Patent Owner’s argument regarding Weeks’ wafer dimensions is inapposite.
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`Petitioner is relying on Weeks’ die, and not wafer, dimensions, for the claimed
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`major surfaces. Notwithstanding, it is the entire record that controls. Anacor
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`Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380-81 (Fed. Cir. 2018); Idemitsu Kosan
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`Co. v. SFC Co., 870 F.3d 1376, 1380-81 (Fed. Cir. 2017).
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`17
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`Further, Dr. Shealy’s unrebutted testimony from the perspective of a
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`POSITA is consistent with the prior art itself, including Weeks, which notes that
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`“dielectrical layer 31 isolates portions of p-type backside 20b to prevent shorting.”
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`Ex. 1007, 10:50-52; see also Ex. 1003, ¶61; Ex. 2008, 174:6-177:7.
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`With respect to Patent Owner’s second argument, Weeks specifically and
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`literally discloses that, “[a]s shown in the figures, the term ‘backside’ refers to the
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`bottom surface of the device,” and, “[t]hus, the topside is opposite the backside of
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`the device.” Ex. 1007, 4:19-22 (emphasis added). Weeks then describes and
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`depicts in Figure 8 these bottom and top surfaces, showing “backside 22” (per
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`Weeks, “the bottom surface”) opposite “topside 18,” where backside 22 extends
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`across the portions of die substrate 12 and vias 24a and 24b formed through
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`substrate 12:
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`topside 18
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`substrate 12
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`backside 22
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`backside contact 20a
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`backside contact 20b
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`
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`See also id., 10:34-52; Ex. 1003, ¶¶60-65, 97-102.
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`18
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`Weeks’ teaching that its “backside 22” is a “bottom surface” of the die’s
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`substrate is consistent with a POSITA’s understanding of the teachings of the ’787
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`patent and Applicant’s interpretation thereof, as explained in §III.A. See also Ex.
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`1003, ¶¶60-65, 97-102; Paper 15, 11-12, 17-19.
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`
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`Moreover, Week’s “backside 22” is a “major” surface, i.e., it is greater in
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`size than the vertical faces. See Ex. 1003, ¶¶60-65, 97-102; Ex. 2008, 147:5-151:1;
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`Paper 15, 11-12, 17-19. Not only is Patent Owner’s argument based on the not-to-
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`scale Figure 8, it is contradicted by the record evidence.
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`For example, Dr. Shealy explained in his deposition the relevant dimensions
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`of Weeks’ die, specifically, and a typical LED die, generally. Ex. 2008, 147:5-
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`151:1, 142:1-17. As Dr. Shealy explained, the dimension of the bottom surface of
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`a die in Weeks ranges from approximately 0.8 millimeters to 1.8 millimeters
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`obtained from an 8 inch wafer, and that known dies could be as large as about 4
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`millimeters. Id., 148:13-150:2.4 This is much greater in size than the die thickness
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`4 Dr. Shealy testified that a POSITA would obtain 10,000 to 50,000 “relatively
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`small” dies from Week’s 8 inch silicon wafer. Ex. 2008, 149:1-150:2. To do the
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`math: An 8 inch wafer is 32,429.30 mm2 in area, which—divided by 50,000—
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`gives each die an area of 0.6486 mm2 (over 0.8 mm by 0.8 mm in its lateral
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`
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`19
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`in Weeks (around 100 microns, or 0.1 mm). Ex. 1007, 4:40-50, 5:65-67, 7:50-60;
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`Ex. 2008, 142:1-17 (“semiconductor dies are very thin”); Paper 15, 12. And, to the
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`extent that Patent Owner argues that the “bottom major surface” is limited to the
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`“four contact surfaces” (highlighted in green in Figure 8, above), this is wrong
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`because (i) it misconstrues and misidentifies the actual “bottom major surface” of
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`Weeks (as explained above), (ii) it inherently is based on Patent Owner’s improper
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`claim construction, and (iii) the four contact surfaces (ranging from about 0.6 mm
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`to 3.8 mm) are still greater in size than the die height (around 100 microns).5 Ex.
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`1007, 4:40-50, 5:65-67, 7:50-60; Ex. 2008, 148:13-150:2.
`
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`dimensions) and divided by 10,000 gives each die an area of 3.243 mm2 (over 1.8
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`mm by 1.8 mm).
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`5 Again, this is simple math: the lateral die dimensions range from 0.8 mm to 4 mm
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`(as Dr. Shealy testified), whereas each of the two vias 24a and 24b is “about 100
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`microns” in its lateral dimensions. Ex. 1007, 5:65-67; see also 4:40-50, 7:50-60;
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`Ex. 2008, 148:13-150:2; Paper 15, 12. Petitioner acknowledges that this math
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`“ignores” the slight apparent gap in Figure 8 between inner portions of backside
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`contacts 20a and 20b. However, Patent Owner cannot possibly be arguing that the
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`gap would be of such a size to render the thickness greater than the lateral
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`dimensions of the contact points.
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`
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`20
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`Accordingly, Weeks discloses the claimed “light emitting semiconductor
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`die…” structure.
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`2. Wirth
`Patent Owner argues that Wirth fails to disclose the claimed semiconductor
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`die structure essentially because (i) there is an “insulation material 10a” between
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`“first connection 11” and substrate “carrier 3” (and thus first connection 11 is not
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`formed directly on the substrate) and (ii) Petitioner does not specify that Wirth ha