`
`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. IPR2018-01165
`Patent 7,524,087
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`Page
`Introduction ...................................................................................................... 1
`The Challenged Claims are Unpatentable ....................................................... 3
`A. Grounds 1-3: Okazaki and Critelli, Kamada, or Kyowa render
`obvious claims 1, 6, and 9-19 ................................................................ 3
`1.
`Okazaki discloses the claimed pockets/cavities (claims 1, 9-
`10, 15) ......................................................................................... 3
`Critelli, Kamada, and Kyowa each discloses the lead
`receiving compartments formed in the peripheral sidewall
`extending between the first and second end faces (claims 1,
`9, 15) ........................................................................................... 8
`It would have been obvious to combine the teachings of the
`prior art (claims 1, 6, 9-19) ....................................................... 17
`The “stadium” qualifier is peripheral and adds little, if
`anything, to claims 14 and 19 ................................................... 19
`J-shaped leads (claims 12, 16), inward deflection (claim 13)
`and arrays (claim 18) were obvious .......................................... 21
`B. Grounds 4-5 (Okazaki and Critelli or Kamada, in further view of
`Cheong, render obvious claims 7-8); Ground 6 (Okazaki and
`Kyowa render obvious claims 7-8) ..................................................... 25
`C. Grounds 7-9: Takenaka and Critelli, Kamada, or Kyowa render
`obvious claims 1-3, 5-6, and 9-19 ....................................................... 25
`D. Grounds 10-11 (Takenaka and Critelli or Kamada, in further view
`of Cheong, render obvious claims 4 and 7-8); Ground 12
`(Takenaka and Kyowa, in further view of Cheong, render obvious
`claim 4); Ground 13 (Takenaka and Kyowa render obvious claims
`7-8) ...................................................................................................... 28
`Ground 14: Kamada renders obvious claims 1, 6, and 9-19 ............... 28
`
`I.
`II.
`
`2.
`
`3.
`
`4.
`
`5.
`
`E.
`
`
`
`i
`
`

`

`
`
`F.
`
`Grounds 15-16: Kamada and Cheong or Kyowa render obvious
`claims 7-8 ............................................................................................ 30
`III. The Board Properly Instituted this IPR ......................................................... 30
`IV. Patent Owner’s Constitutionality Argument is Both Conclusory and
`Wrong ............................................................................................................ 30
`Conclusion ..................................................................................................... 31
`
`V.
`
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`Apple, Inc. v. Evolved Wireless, LLC,
`IPR2016-00758, Paper 48 (P.T.A.B. Mar. 12, 2018) ................................... 17, 26
`
`
`Baldwin Graphics Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) ............................................................................ 5
`
`
`C&D Zodiac, Inc. v. B/E Aerospace, Inc.,
`IPR2017-01276, Paper 48 (P.T.A.B. Mar. 29, 2019) ............................. 20, 22, 25
`
`
`CRFD Research Inc. v. Matal,
`876 F.3d 1330 (Fed. Cir. 2017) .......................................................................... 22
`
`
`Fitbit, Inc. v. Blackbird Tech, LLC,
`IPR2017-02012, Paper 28 (P.T.A.B. Mar. 11, 2019) ......................................... 31
`
`
`Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc.,
`825 F.3d 1360 (Fed. Cir. 2016) .............................................................. 20, 22, 25
`
`
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985) (en banc) ............................................................ 18
`
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) ............................................................................ 1
`
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 18
`
`
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997) .......................................................................... 19
`
`
`In re Thorpe,
`777 F.2d 695 (Fed. Cir. 1985) .............................................................................. 6
`
`
`Itron Network Solutions, Inc. v. Acoustic Tech., Inc.,
`IPR2017-01024, Paper 49 (P.T.A.B. Aug. 21, 2018) ................................... 17, 26
`
`iii
`
`
`
`

`

`
`
`
`Joy Techs., Inc. v. Manbeck,
`959 F.2d 226 (Fed. Cir. 1992) ............................................................................ 30
`
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 22
`
`
`Leapfrog Enterprises, Inc. v. Fisher Price, Inc.,
`485 F.3d 115 (Fed. Cir. 2017) ............................................................................ 22
`
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .......................................................................... 18
`
`
`NTP, Inc. v. Research in Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005) ............................................................................ 6
`
`
`Retractable Techs., Inc. v. Becton, Dickson and Co.,
`653 F.3d 1296 (Fed. Cir. 2011) ............................................................................ 6
`
`
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ........................................................................ 3, 4
`
`
`Taiwan Semiconductor Mfg. Co. v. Godo Kaisha IP Bridge I,
`IPR2016-01246, Paper 48 (P.T.A.B. Jan. 3, 2018) ................................ 20, 22, 25
`
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 5
`
`
`Wasica Fin. GmbH v. Continental Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 5
`
`Yeda Research v. Mylan Pharms., Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) .............................................................. 20, 22, 25
`
`
`
`Statutes
`
`35 U.S.C. §311(b) .................................................................................................... 20
`
`
`
`
`
`
`iv
`
`

`

`
`
`Regulations
`Regulations
`
`37 C.F.R. §42.5(b) ................................................................................................... 30
`37 CPR. §42.5(b) ................................................................................................... 30
`
`
`
`v
`
`

`

`
`
`I.
`
`Introduction
`The Board correctly instituted review of claims 1-19, (see Paper 11), and
`
`should find all claims unpatentable.
`
`With only minor exceptions (relating to Okazaki’s disclosure of the claimed
`
`pockets/cavities), Patent Owner’s Response is based on its counsel’s unsupported
`
`interpretation of the prior art. 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).
`
`For example, Patent Owner relies solely on its counsel’s (incorrect)
`
`interpretation of Kamada to argue that Kamada lacks lead receiving compartments
`
`formed in the peripheral sidewall extending between the first end face and the
`
`second end face. In doing so, Patent Owner’s counsel confuses Kamada’s various
`
`perspective views. As Petitioner’s expert, Dr. Shealy, explained, Kamada teaches
`
`that its lead receiving compartments are formed in the reflector housing’s
`
`peripheral sidewall that extends between the faces. Ex. 1003, ¶¶44-45, 53-54, 85-
`
`87; Ex. 1016, ¶¶12-22. This can be seen, for example, in the annotated figures
`
`below, with the leads (colored green) in/over the lead receiving compartments
`
`(circled in red) formed in the peripheral sidewall (colored light blue) extending
`
`between the first and second end faces:
`
`
`
`1
`
`

`

`
`
`
`
` With respect to the limited testimony of Patent Owner’s declarant, Mr.
`
`Credelle—relating to the small hole between Okazaki’s pockets/cavities—it both
`
`(i) attempts to improperly narrow the claims, despite no clear disavowal or
`
`lexicography, and (ii) should be afforded little to no weight. Not only did Mr.
`
`Credelle never express an opinion as to the level of ordinary skill, but (i) he
`
`admitted during deposition that he has no experience designing or manufacturing
`
`LED packages; (ii) the only “development” work he has done involved
`
`“mount[ing] bare die to a circuit board,” which he characterized as something
`
`“[y]ou might call … an LED package, but it’s not a traditional device….”; and (iii)
`
`there is no evidence he is qualified to testify in the pertinent art. Ex. 1013, 30:4-
`
`
`
`2
`
`

`

`
`
`31:5; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364
`
`(Fed. Cir. 2008) (“[A] witness not qualified in the pertinent art [may not] testify as
`
`an expert on obviousness, or any of the underlying technical questions, such as the
`
`nature of the claimed invention, the scope and content of prior art, the differences
`
`between the claimed invention and the prior art, or the motivation of one of
`
`ordinary skill in the art to combine the[] references to achieve the claimed
`
`invention.”).1
`
`As explained in the Petition and herein, the claims are unpatentable and
`
`should be canceled.
`
`II. The Challenged Claims are Unpatentable
`
`A. Grounds 1-3: Okazaki and Critelli, Kamada, or Kyowa render
`obvious claims 1, 6, and 9-19
`1. Okazaki discloses the claimed pockets/cavities (claims 1, 9-
`10, 15)
`Patent Owner and Mr. Credelle2 argue that Okazaki does not disclose the
`
`claimed pockets/cavities because there is a small hole between Okazaki’s first and
`
`
`1 Although Sundance concerned expert exclusion, the same principles apply to the
`
`weight the Board gives Mr. Credelle’s testimony.
`
`2 Okazaki is the only reference Mr. Credelle opines on. See generally Ex. 2018;
`
`Ex. 1013, 166:1-167:3. Petitioner submits that Mr. Credelle’s opinion should be
`
`
`
`3
`
`

`

`
`
`second pockets and because the lead frame allegedly cannot be used to create the
`
`pocket/cavity. Paper 15, 11-18.
`
`Patent Owner’s argument is premised on Figure 4 of the ’087 patent, and
`
`Mr. Credelle’s conclusory assertions about a POSITA’s understanding of a
`
`“pocket” based solely on the ’087 patent’s figures. Id., 11-12 (citing Ex. 2018,
`
`¶¶25-26, 32). Apart from pointing to the figures of an “exemplary optical device,”
`
`(Ex. 1001, 1:25-31 (emphasis added)),3 Patent Owner does not cite to any portion
`
`of the ’087 patent specification to support its proposed restriction of the terms
`
`“pocket” and “cavity.” Instead, Patent Owner conclusorily asserts that a
`
`pocket/cavity cannot have even a small hole.
`
`
`afforded little to no weight because—not only did he short-circuit a proper analysis
`
`by failing to offer any opinion on the level of skill—but he has no experience
`
`designing or manufacturing LED packages, effectively no experience developing
`
`LED packages, and there is no evidence he is qualified to testify in the pertinent
`
`art. Ex. 1013, 30:4-31:5; Sundance, 550 F.3d at 1364.
`
`3 Mr. Credelle also asserted that the disclosed “exemplary optical device” “is a
`
`very common-looking LED package, in my experience” and “an example of a
`
`good package.” Ex. 1013, 164:23-165:17.
`
`
`
`4
`
`

`

`
`
`There is nothing in the ’087 patent that supports Patent Owner’s argument,
`
`particularly considering that the specification text is silent as to the makeup of the
`
`“bottom” surface of the pockets/cavities. See generally Ex. 1001; Ex. 1013,
`
`167:15-169:21 (Mr. Credelle admitting that the specification does not describe the
`
`bottom of the pocket/cavity and that he is relying exclusively on the exemplary
`
`figures to support his argument). The ’087 patent inventors elected to broadly
`
`disclose and claim a general “pocket”/“cavity”; Patent Owner cannot now seek to
`
`narrow the claim to limit it in the manner proposed. Ex. 2016, 54:19-56:16 (Dr.
`
`Shealy explaining that there is no restriction in the pocket/cavity having a hole);
`
`see also Wasica Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1281-
`
`82 (Fed. Cir. 2017) (“absent a clear disavowal or alternative lexicography by the
`
`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 v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366-68 (Fed. Cir.
`
`2012).
`
`Patent Owner also incorrectly places significant emphasis on how Okazaki
`
`forms its pockets/cavities and their “structural” and “manufacturing” “purpos[es].”
`
`Paper 15, 13-15. The ’087 patent claims are apparatus claims—not process
`
`claims—and they include no requirements regarding any particular “purpose.” See
`
`Baldwin Graphics Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008)
`
`
`
`5
`
`

`

`
`
`(“Courts must generally take care to avoid reading process limitations into an
`
`apparatus claim.…”); In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
`
`Regardless, Mr. Credelle admitted that the ’087 patent’s upper pocket and
`
`Okazaki’s split “vessel” have the same purpose: to be filled with encapsulant to
`
`protect the LED, (Ex. 1013, 176:4-7), and that both the upper and lower
`
`pockets/cavities can be filled with material, (id., 150:16-24).
`
`Moreover, Patent Owner argues—based solely on the claim language and
`
`“exemplary” Figure 4—that it is improper to use the “lead frame” to define, in
`
`whole or in part, the contours of a pocket/cavity. Paper 15, 15-16. But, there is
`
`nothing in the claims or specification that restricts the lead frame from being used
`
`in such a manner. For example, claim 1 states only that the “reflector housing [is]
`
`formed around the lead frame” and that the housing “ha[s] a first pocket” and “a
`
`second pocket.” Ex. 1001, 6:23-37. There are no other restrictions, and, if
`
`anything, the claim language and specification demonstrate that the lead frame can
`
`be used to delineate the pockets. See also Retractable Techs., Inc. v. Becton,
`
`Dickson and Co., 653 F.3d 1296, 1303-04 (Fed. Cir. 2011); NTP, Inc. v. Research
`
`in Motion, Ltd., 418 F.3d 1282, 1310 (Fed. Cir. 2005). Indeed, Patent Owner relies
`
`on Figure 4, in which the reflector housing is only formed around the underside of
`
`the lead frame, and in Patent Owner’s own annotation of “exemplary” Figure 4,
`
`
`
`6
`
`

`

`
`
`Patent Owner uses the lead frame to delineate the upper pocket/cavity—just as in
`
`Okazaki:
`
`
`See also Ex. 2016, 46:9-28 (Dr. Shealy explaining that, like Okazaki, in the ’087
`
`patent, “the lead frame isolates the vast majority of the surface area where it bisects
`
`the two pockets”).
`
`
`
`7
`
`

`

`
`
`2.
`
`Critelli, Kamada, and Kyowa each discloses the lead
`receiving compartments formed in the peripheral sidewall
`extending between the first and second end faces (claims 1,
`9, 15)
`Each of Critelli, Kamada, and Kyowa discloses the claimed lead receiving
`
`compartments.4
`
`With respect to Critelli, as in its Preliminary Response, although Patent
`
`Owner states that Critelli does not disclose the claimed lead receiving
`
`compartments, its attorney argument actually appears directed solely to whether a
`
`POSITA would have combined Okazaki and Critelli—not whether Critelli teaches
`
`the lead receiving compartments.5 The closest Patent Owner appears to come (to
`
`
`4 The ’087 patent places no particular restrictions on the bounds of its “lead
`
`receiving compartment,” e.g., it does not need to be bound by “ribs” on both sides,
`
`such as compartment 52 (orange) bounded only by a single rib 56 (gray):
`
`Ex. 1003, ¶¶26-27.
`
`
`
`5 Petitioner addresses in §II.A.3, below, Patent Owner’s attorney argument
`
`regarding whether it would have been obvious to combine Okazaki and Critelli.
`
`
`
`8
`
`

`

`
`
`coherently setting forth an argument that Critelli does not disclose the claimed lead
`
`receiving compartments) is its confusing argument that “[t]he Critelli package is an
`
`adapter that makes it easier to mount LEDs to printed circuit boards,” whereas “the
`
`’087 patent is directed to a particular LED structure.” Paper 15, 21.
`
`And, although this attorney argument seems largely directed at whether a
`
`POSITA would have thought to combine Okazaki and Critelli—not whether
`
`Critelli has lead receiving compartments—the Board nonetheless properly rejected
`
`this attempt to distinguish Critelli’s lead receiving compartments from the claims.
`
`Paper 11, 33 (citing Pet. 19-20; Ex. 1003, ¶¶47, 83-84). Patent Owner presents no
`
`new evidence to countermand the Board’s finding, and, in any event, Patent Owner
`
`again fails to acknowledge that “Petitioner relies on Critelli for the limited purpose
`
`of teaching or suggesting lead receiving compartments and relies on Okazaki for
`
`most of the LED structure recited in the claims.” Id., 34 (emphasis added).
`
`With respect to Kamada, Patent Owner does not rebut that Kamada has lead
`
`receiving compartments. Rather, Patent Owner argues only that the lead receiving
`
`compartments are not formed in the peripheral sidewall extending between the first
`
`end face and the second face. Patent Owner’s argument is premised on its
`
`counsel’s incorrect interpretation of Kamada’s figures.
`
`There are two key problems with Patent Owner’s attorney argument.
`
`
`
`9
`
`

`

`
`
`First, Patent Owner confuses the various views presented in Kamada’s
`
`figures, in particular, the Reference Sectional View at Line A-A. Patent Owner
`
`argues that “[a]lthough not shown in the Sectional View, the leads relied upon by
`
`Petitioner would exit the LED structure at the same vertical location as the element
`
`identified as the ‘lead frame’ in Kamada’s Sectional View” and “[t]hose leads …
`
`would then bend downward adjacent to the green molded resin, and the dark red
`
`‘lower part of the base,’” pointing to the following annotated figure:
`
`
`
`Paper 15, 22-23 (emphasis added).
`
`
`
`There is a reason why these leads are “not shown” in the manner Patent
`
`Owner’s counsel suggests. They are not the leads that are in/over the lead
`
`receiving compartments formed in the peripheral sidewall extending between the
`
`first and second end faces. Ex. 1016, ¶¶11-15; Ex. 1003, ¶¶54, 87. That is, the
`
`element identified by Patent Owner as the “lead frame” is on the “Right” and
`
`“Left” sides of Kamada’s peripheral sidewall, whereas the lead receiving
`
`compartments are formed in the “Front” and “Back” sides of Kamada’s peripheral
`10
`
`
`
`

`

`
`
`sidewall. Ex. 1016, ¶¶13-15.6 This can be seen in the following annotated figures,
`
`where the element identified by Patent Owner as the “lead frame” in the Reference
`
`Sectional View is circled in blue—which is not on the “side” where the lead
`
`receiving compartments (circled in red) are formed in the peripheral sidewall:
`
`
`
`Ex. 1006, 7-9; Ex. 1016, ¶13; Ex. 1003, ¶¶54, 87.
`
`
`6 As Dr. Shealy has explained, the peripheral sidewall wraps around the device and
`
`(at least for orienting purposes) can be thought of as having four sides—as in both
`
`Kamada and the ’087 patent, a “Front,” “Back,” “Right,” and “Left” side of the
`
`peripheral sidewall. Ex. 1016, ¶14; Ex. 1003, ¶26.
`
`
`
`11
`
`

`

`
`
`
`
`Patent Owner’s misunderstanding can further be seen in the following
`
`annotated figure of Kamada’s “Perspective View,” with similar color coding as
`
`above:
`
`A
`
`Leads in/over the lead
`receiving compartments
`
`Ex. 1006, 9; Ex. 1016, ¶14.
`
`“lead frame” from
`Reference Sectional
`View at Line A-A
`
`
`
`A
`
`
`
`And, as Dr. Shealy has explained, these lead receiving compartments are,
`
`indeed, formed in the peripheral sidewall extending between the first and second
`
`end faces, where the peripheral sidewall is colored light blue:
`
`
`
`12
`
`

`

`
`
`
`
`
`
`Ex. 1006, 7-10; Ex. 1016, ¶15; Ex. 1003, ¶¶54, 87.
`
`
`
`Put simply, there is no difference between Kamada’s lead receiving
`
`compartments formed in the peripheral sidewall extending between the end faces
`
`and those of the ’087 patent—both show lead receiving compartments on two
`
`“sides” only:
`
`
`
`13
`
`
`
`

`

`Ex. 1006, 9; Ex. 1001, FIG. 1; Ex. 1016, ¶16.
`
`
`
`And, in any event, the claims merely require a plurality of compartments in
`
`the sidewall, which is a structure “wrapping around” the device. Ex. 1016, ¶14;
`
`Ex. 1003, ¶26.
`
`
`
`Second, Patent Owner’s counsel highlights portions of the molded resin in
`
`the cutout Reference Sectional View, arguing therefrom that the “lower part of the
`
`base” and the “upper part of the base” are disconnected from each other. Paper 15,
`
`21-24. Patent Owner provided the following annotation, with the portions of the
`
`molded resin that Patent Owner takes issue with highlighted in green:
`
`Id., 24.
`
`
`
`
`
`Again, as discussed above, this argument considers the wrong perspective to
`
`illustrate the lead receiving compartments. The “Reference Sectional View” is a
`
`cutout of the “Front View,” which (i) explains why the lead receiving
`
`compartments are not shown in the Reference Sectional View, and (ii) makes clear
`
`that, as shown in the “Front View,” the lead receiving compartments are formed in
`
`the peripheral sidewall extending between the first and second end faces:
`
`
`
`14
`
`

`

`
`
`
`
`Ex. 1006, 7, 9; Ex. 1016, ¶21.
`
`Moreover, Patent Owner fails to appreciate that the portions it highlighted in
`
`green in the Reference Sectional View (orange in Petitioner’s annotations)7 are
`
`actually small anchors to keep the molded resin in place—which anchors are in the
`
`outer wall on the sides that do not have the lead receiving compartments. Ex.
`
`1016, ¶¶17-21. This can be seen in the following annotated figures, where the
`
`anchors filled with molded resin on the Left and Right “sides” that do not have the
`
`lead receiving compartments are shown in orange:
`
`
`7 Because Petitioner previously colored the leads green, it has colored orange the
`
`portions of the molded resin that correspond to those molded-resin portions Patent
`
`Owner colored green.
`
`
`
`15
`
`

`

`
`
`
`
`Ex. 1006, 7-9; Ex. 1016, ¶¶17-20.
`
`And, in any event, Dr. Shealy and Mr. Credelle agree that the peripheral
`
`sidewall does not need to be “continuous” or “solid” (i.e., it can have holes or
`
`cavities that are filled with material, such as a lead frame or molded resin, and still
`
`constitute the claimed peripheral sidewall extending between the faces). Ex. 1016,
`
`¶¶17-18; Ex. 1013, 149:18-150:6 (Mr. Credelle testifying that “it’s fair to say that
`
`the [peripheral sidewall] doesn’t have to be continuous” and that “nothing in the
`
`patent I interpret as having it be continuous or solid.”), 146:14-149:25 (Mr.
`
`Credelle testifying that “[t]he peripheral sidewall has [a] certain number of
`
`depressions, openings for lead frames, and unidentified depressions,” that could
`
`also be a “hole” or a “cavity”).
`
`
`
`With respect to Kyowa, Patent Owner does not rebut that Kyowa discloses
`
`lead receiving compartments formed in the peripheral sidewall extending between
`
`the first and second end faces. Paper 15, 24-25. Rather, Patent Owner’s argument
`
`is premised on Kyowa not showing a “second pocket or cavity” in the reflector
`16
`
`
`
`

`

`
`
`housing. Id. This is irrelevant and misunderstands Petitioner’s obviousness
`
`grounds; Petitioner is relying on Okazaki (not Kyowa) for the second
`
`pocket/cavity. Pet. 11-19, 23-26; see also Paper 11, 45-46 (Patent Owner’s
`
`argument “does not comport with Petitioner’s proposed combination of the
`
`references.”).
`
`3.
`
`It would have been obvious to combine the teachings of the
`prior art (claims 1, 6, 9-19)
`Patent Owner largely repeats its Preliminary Response attorney argument
`
`that a POSITA would not have found it obvious to combine Okazaki with Critelli,
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`Kamada, or Kyowa because of alleged incompatibilities between the references.
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`Compare Paper 10, 26-29 with Paper 15, 25-29. In particular, Patent Owner again
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`argues that Kyowa uses injection molding to form the device, while Okazaki does
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`not; Critelli is allegedly directed “to an entirely different art;” and “Kamada
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`appears to be much larger than Okazaki.” Paper 15, 25-29.
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`Although the Board specifically noted in its Institution Decision that Patent
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`Owner would have the opportunity to present expert testimony, (Paper 11, 34-35,
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`42-43, 46), Patent Owner declined to do so. This should be fatal. See Itron
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`Network Solutions, Inc. v. Acoustic Tech., Inc., IPR2017-01024, Paper 49, 26
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`(P.T.A.B. Aug. 21, 2018) (“Patent Owner provides considerable attorney
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`argument, but does not support its assertions with evidence that rebuts Dr.
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`Soliman’s expert testimony.” (emphasis in original)); Apple, Inc. v. Evolved
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`
`
`17
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`

`

`
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`Wireless, LLC, IPR2016-00758, Paper 48, 20 (P.T.A.B. Mar. 12, 2018) (“In our
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`consideration of the record in these proceedings, we keep in mind that attorney
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`argument is not evidence and Patent Owner cannot rebut evidence with unsworn
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`attorney argument.”).
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`And, regardless, as in its Preliminary Response, Patent Owner’s attorney
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`argument again ignores Petitioner’s expert-supported rationale for combining the
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`references, and instead, improperly demands bodily incorporation of the references
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`to demonstrate obviousness. See Paper 11, 35-36, 43, 46; MCM Portfolio LLC v.
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`Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“[t]he test for
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`obviousness is not whether the features of the secondary reference may be bodily
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`incorporated into the structure of the primary reference” (citation omitted)); In re
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`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
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`determination of obviousness based on teachings from multiple references does not
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`require an actual, physical substitution of elements.”); In re Etter, 756 F.2d 852,
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`859 (Fed. Cir. 1985) (en banc) (finding that “assertions that [one reference] cannot
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`be incorporated in [another reference] are basically irrelevant, the criterion being
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`not whether the references could be physically combined but whether the claimed
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`inventions are rendered obviousness by the teachings of the prior art as a whole.”).
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`
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`18
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`

`

`
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`4.
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`The “stadium” qualifier is peripheral and adds little, if
`anything, to claims 14 and 19
`Patent Owner does not dispute that the prior art in each ground teaches or
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`suggests a display. Patent Owner does not argue that there is anything novel or
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`inventive about a “stadium” display. Nor does it argue that the ’087 patent
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`provides any detail concerning what qualifies (or does not qualify) as a “stadium”
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`display (e.g., size, location, indoor, outdoor, etc.). Yet, Patent Owner takes issue
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`with whether the prior art displays are “stadium displays.” Paper 15, 29-30.
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`The “stadium” qualifier adds nothing to the claim other than an intended use.
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`See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“a new intended use for
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`an old product does not make a claim to that old product patentable.”). Indeed, the
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`Examiner during prosecution found the “stadium” display to be an intended use, a
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`point which the Applicant never attempted to rebut. Ex. 1002, 42 (Examiner
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`determining that, with respect to “claim 19, as broadly claimed the display can be
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`used as a stadium display (intended use)”).8 See also Ex. 1016, ¶28 (the
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`unspecified “stadium” is simply a possible location for, and does not add anything
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`8 The Applicant never argued otherwise during prosecution, focusing instead on the
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`alleged novelty of lead receiving compartments. Ex. 1002 at 59-64; Ex. 1016, ¶28.
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`
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`19
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`

`

`
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`to, the claimed “display”). Patent Owner should not now be allowed to contend
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`otherwise.
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`Moreover, the ’087 patent admits in its Background section that “[l]arge
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`display panels such as stadium displays may consistent of numerous small light
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`emitting elements arranged in an array,” (Ex. 1001, 1:5-11), and then states that its
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`“optical devices” may be used in “large stadium displays,” (id., 5:31-32). Ex.
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`1016, ¶¶23-25.9
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`9 There is no restriction under 35 U.S.C. §311(b) that evidence—both documentary
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`and testimonial—not specifically in a ground cannot be relied on to support an
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`obviousness determination. See C&D Zodiac, Inc. v. B/E Aerospace, Inc.,
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`IPR2017-01276, Paper 48, 5 (P.T.A.B. Mar. 29, 2019) (Section 311(b) permits
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`“petitioners [to] rely on evidence other than that contained within the four corners
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`of a patent or printed publication, when asserting obviousness.”); Taiwan
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`Semiconductor Mfg. Co. v. Godo Kaisha IP Bridge I, IPR2016-01246, Paper 48,
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`68 (P.T.A.B. Jan. 3, 2018) (evidence not specifically part of ground may be
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`considered in obviousness analysis); Yeda Research v. Mylan Pharms., Inc., 906
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`F.3d 1031, 1040-41 (Fed. Cir. 2018); Genzyme Therapeutic Prods. Ltd. v.
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`Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016).
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`
`
`20
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`

`

`
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`As Dr. Shealy has explained, a POSITA would have understood that (i)
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`these generic “stadium” displays are simply typical display panels that LED
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`packages are intended to be used in (including Okazaki);10 and (ii) while Okazaki
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`does not use the word “stadium,” Okazaki’s disclosure that its invention “relates to
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`a chip-type LED utilized as a light source for various display panels or a backlight
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`source for liquid crystal display devices,” (Ex. 1004, 1:17-20, emphasis added),
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`encompasses displays at various locations (including stadiums), as generally
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`described and claimed in the ’087 patent, and further evidenced by the Daktronics
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`article (Ex. 1011). Ex. 1016, ¶¶23-28; Ex. 1003, ¶¶31-32, 130, 152, 154.
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`
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`5.
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`J-shaped leads (claims 12, 16), inward deflection (claim 13)
`and arrays (claim 18) were obvious
`For each of claims 12-13, 16, and 18, Patent Owner does not assert that there
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`is anything novel or inventive, or that they are anything but peripheral to the
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`claimed invention.
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`With respect to claims 12 and 16, Patent Owner does not contest that J-
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`shaped leads were well known. Instead, Patent Owner (incorrectly) frames
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`Petitioner’s argument as asserting that “because J-shaped leads were known, the
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`combination would have been obviousness [sic].” Paper 15, 31. Patent Owner
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`10 The same is true for Takenaka and Kamada.
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`21
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`
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`also appears to assert that it was improper for Petitioner to rely on evidence that
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`was not specifically included in the grounds. Id., 31-32.11
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`
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`Petitioner did not simply assert that J-shaped leads were known and thus
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`obvious; instead, Petitioner—supported by Dr. Shealy’s testimony and
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`documentary evidence—explained that J-shaped leads were well known to be the
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`“preferred surface mount lead form,” and that it would have been a simple design
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`choice based on a finite number of known lead-shapes. Ex. 1003, ¶120 (citing Ex.
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`1009, 90, 651; Ex. 1012, ¶¶0001-02, Figs. 3-4, 6-7, 9 (emphasis added)); see also
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`CRFD Research Inc. v. Matal, 876 F.3d 1330, 1347 (Fed. Cir. 2017) (“simple
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`design choice” to choose from “predictable choices”); Leapfrog Enterprises, Inc. v.
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`Fisher Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2017) (“common sense of those
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`skilled in the art demonstrates why some combinations are obvious….”); KSR
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`International Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“When there is a
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`design need or market pressure to solve a problem and there are a finite number of
`
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`11 Again, both documentary and testimonial evidence not specifically in a ground
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`can properly be relied on to support an obviousness determination under Section
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`311(b). See C