Trials@uspto.gov
`571-272-7822
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`Paper 30
`Date: July 14, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2018-01165
`Patent 7,524,087 B1
`____________
`
`
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`I. INTRODUCTION
`
`Petitioner, Nichia Corporation, filed a Request for Rehearing under
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`37 C.F.R. § 42.71(d) seeking reconsideration of the Final Written Decision
`
`(Paper 28, “Dec.”) determining unpatentable some challenged claims of U.S.
`
`Patent No. 7,524,087 B1 (Ex. 1001, “the ’087 patent” or “the challenged
`
`patent”). Paper 29 (“Req. Reh’g”). In the Final Written Decision, we
`
`determined that the Petitioner had shown by a preponderance of the evidence
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`that claims 1 and 6–8 were unpatentable but had not shown that claims 2–5
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`and 9–19 were unpatentable. Dec. 2, 90.
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`For the reasons explained below, we deny the Request for Rehearing.
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`II. DISCUSSION
`
`The party challenging a decision in a request for rehearing bears the
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`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
`
`(2019). A request for rehearing “must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed.” Id.
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`Petitioner challenges our determination that Petitioner had not met its
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`burden with respect to claims 9–19 as challenged in three of Petitioner’s
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`sixteen asserted grounds of unpatentability. Req. Reh’g 1; see Dec. 7
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`(identifying Petitioner’s sixteen asserted grounds of obviousness). In its
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`Request for Rehearing, Petitioner asserts we misapprehended or overlooked
`
`matters in its assertions that claims 9–19 would have been obvious over
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`(i) Takenaka1 and Critelli2 (identified in the Petition as Ground 7),
`
`
`1 U.S. Patent Application Publication No. US 2004/0135156 A1 published
`July 15, 2004 (“Exhibit 1008”).
`2 U.S. Patent No. 4,959,761, issued September 25, 1990 (“Exhibit 1005”).
`
`2
`
`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`(ii) Takenaka and Kamada3 (identified in the Petition as Ground 8), and
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`(iii) Takenaka and Kyowa4 (identified in the Petition as Ground 9). Req.
`
`Reh’g 1; see Dec. 7. Specifically, regarding independent claim 15 and its
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`dependent claims 16–19, Petitioner contends that we overlooked and
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`misapprehended arguments in its Petition that Takenaka disclosed in
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`paragraph 41 the electrical connection required by claim 15.5 Req. Reh’g 5–
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`7. Regarding independent claim 9 and its dependent claims 10–14,
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`Petitioner contends that we overlooked and misapprehended arguments in its
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`Petition that Takenaka discloses “plastic leaded chip carrier LEDs” recited
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`in claim 9.6 Req. Reh’g 7–8.
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`We are not persuaded that Petitioner presented in its Petition the
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`arguments raised in its Request for Rehearing. Rather, the Request for
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`Rehearing evinces hindsight reconstruction of arguments that could have
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`been—but were not—presented in its Petition. This is insufficient to
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`persuade us that we overlooked or misapprehended Petitioner’s arguments
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`because we could not have overlooked or misapprehended arguments that
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`were not made.
`
`
`3 Japanese Design Patent Registration No. 1176348, issued June 16, 2003
`(“Exhibit 1006”).
`4 Japanese Patent Application Publication No. 2001 118868, published April
`27, 2001 (“Exhibit 1010”).
`5 Independent claim 15 recites “at least one LED die . . . electrically
`connected to said plurality of electrically conductive leads.” Ex. 1001,
`7:20–22; see Req. Reh’g 2; Dec. 51.
`6 Independent claim 9 recites “A display comprising a plurality of plastic
`leaded chip carrier LEDs, the plastic leaded chip carrier LEDs each
`comprising” various enumerated elements. Ex. 1001, 6:55–7:2; see Req.
`Reh’g 7; Dec. 48–49.
`
`3
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`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)(4)
`
`(2019) (requiring a petition for inter partes review to “specify where each
`
`element of the claim is found in the prior art patents or printed publications
`
`relied on”). This burden of persuasion never shifts to Patent Owner. See
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
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`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
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`1316, 1326–27 (Fed. Cir. 2008)) (“In an inter partes review, the burden of
`
`persuasion is on the petitioner to prove ‘unpatentability by a preponderance
`
`of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the
`
`patentee.”).
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`In addition, the Federal Circuit instructs that the Board is not “free to
`
`adopt arguments on behalf of petitioners that could have been, but were not,
`
`raised by the petitioner during an [inter partes review].” In re Magnum Oil
`
`Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Rather, “the Board
`
`must base its decision on arguments that were advanced by a party, and to
`
`which the opposing party was given a chance to respond.” Magnum Oil, 829
`
`F.3d at 1381. Patent Owner has not had an opportunity to respond to
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`Petitioner’s new arguments in its Request for Rehearing that Takenaka
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`discloses in paragraph 41 the electrical connection recited by independent
`
`claim 15 or that Takenaka discloses plastic leaded chip carrier LEDs recited
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`by independent claim 9. Req. Reh’g 1, 5–9.
`
`4
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`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`A. Independent Claim 15 and Dependent Claims 16–197
`
`We are not persuaded that Petitioner made an argument in its Petition
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`that Takenaka discloses an electrical connection in paragraph 41, as
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`Petitioner now asserts in its Request for Rehearing. Req. Reh’g 3. In its
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`Request for Rehearing, Petitioner does not identify a statement in its Petition
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`or by its declarant (James Richard Shealy, Ph.D.) that Takenaka discloses
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`the requisite electrical connection. Req. Reh’g 5–7. Instead, Petitioner now
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`points to paragraph 41 in Takenaka that was quoted in its Petition to support
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`a different proposition—that Takenaka disclosed “at least one LED die
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`mounted in the first pocket of the reflector housing” recited in claim 1. Req.
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`Reh’g 3 (“The Petition’s Section VI.D.1 addressing limitation 1[d], in
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`particular, expressly quotes disclosure in Takenaka meeting [the claim 15]
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`limitation” of “at least one LED die . . . electrically connected to said
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`plurality of electrically conductive leads.”).
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`Notably, independent claim 1 does not recite an electrical connection
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`limitation. Ex. 1001, 6:22–37 (claim 1), 7:15–22 (claim 15); see Pet. 37
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`(side-by-side comparison of independent claims 1 and 15). Moreover,
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`Petitioner in its Petition repeatedly pointed out this difference—that
`
`claim 15 recited an electrical connection but claim 1 did not. Pet. 37 (side-
`
`by-side comparison of independent claims 1 and 15); Pet. 36–38 (discussing
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`claim 15 in the context of Grounds 1–3); Pet. 63 (discussing claim 15 in the
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`context of Grounds 7–9); Pet. 83 (discussing claim 15 in the context of
`
`Ground 14).
`
`
`7 We address Petitioner’s arguments in the order made in the Request for
`Rehearing.
`
`5
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`

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`IPR2018-01165
`Patent 7,524,087 B1
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`Despite this difference between claims 1 and 15, Petitioner contends
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`in its Request for Rehearing that we should have recognized from
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`Petitioner’s discussion of Takenaka paragraph 41 made in connection with
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`certain elements recited in claim 1 (Pet. 49–50) that Petitioner was arguing
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`in its Petition that Takenaka in paragraph 41 also disclosed the electrical
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`connection recited only in claim 15. Req. Reh’g 5–7. Petitioner’s rationale
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`appears to be that (i) the Petition quoted Takenaka’s paragraph 41 that
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`expressly discloses an electrical connection (Pet. 49–50) and (ii) the Petition
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`cross referenced in its claim 15 argument the nine-and-a-half page section in
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`which the quotation appears in the context of claim 1.8
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`We are not persuaded that Petitioner argued Takenaka’s paragraph 41
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`disclosed the electrical connection recited in claim 15. First, Petitioner’s
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`cross-reference in its Petition to claim 1—a claim that Petitioner repeatedly
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`noted does not recite the electrical connection—does not rise to the level of
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`an argument made in the Petition that Takenaka discloses in paragraph 41
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`the electrical connection recited in claim 15. Petitioner’s general cross-
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`reference in its Petition to arguments concerning claim 1 does not specify
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`where the electrical element recited only in claim 15 is found in Takenaka.
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`See 37 C.F.R. § 42.104(b)(4) (requiring a petition for inter partes review to
`
`“specify where each element of the claim is found in the prior art patents or
`
`printed publications relied on”).
`
`
`8 Specifically, in the Petition, after addressing each of four limitations
`(including the electrical connection) found in claim 15 but not in claim 1
`(Pet. 63–65), Petitioner asserted that “[t]hus, claim 15 is obvious for
`essentially the same reasons discussed in Section VI.D.1 with respect to
`claim 1” (Pet. 65). Req. Reh’g 5–7. Section VI.D.1 of the Petition presents
`arguments that the limitations of claim 1 would have been obvious over
`Takenaka and three other references (Grounds 7–9).
`
`6
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`

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`IPR2018-01165
`Patent 7,524,087 B1
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`Second, although Petitioner quoted Takenaka’s paragraph 41 that
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`described an electrical connection to an LED chip, Petitioner did so to argue
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`that “Takenaka discloses at least one LED die mounted in the first pocket of
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`the reflector housing,” recited in claim 1. Pet. 49–50. Moreover, although
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`Petitioner quoted paragraph 41 that described an electrical connection to an
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`LED chip, Petitioner did not point to the electrical connection as disclosing
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`any claim limitation—either in claim 1 or claim 15. Pet. 49–50. Here, too,
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`we are not persuaded that Petitioner argued in its Petition that Takenaka in
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`paragraph 41 (describing Figure 1) disclosed the electrical connection
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`recited in claim 15. See 37 C.F.R. § 42.104(b)(4).
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`Third, Petitioner arguments in its Petition asserting Takenaka and
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`other references would have rendered claim 15 obvious (Grounds 7–9) do
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`not identify any disclosure in Takenaka for the electrical connection
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`limitation, as noted in our Decision. Dec. 51. The Petition stated:
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`The fourth difference9 is insubstantial because [one of ordinary
`skill in the art] reading claim 15 would have known that the
`LED die(s) should be electrically connected to the leads—as
`this would have been the conventional means for powering the
`LED die(s) in such a configuration. Ex. 1003, ¶233.
`
`Pet. 65 (citing Ex. 1003 ¶ 233). We discussed this argument in our Decision
`
`that determined Petitioner had not demonstrated by a preponderance of the
`
`evidence that the subject matter of claim 15 would have been obvious over
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`Takenaka and other references. Dec. 51–54.
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`Petitioner further contends in its Request for Rehearing that we
`
`overlooked or misapprehended Dr. Shealy’s statement that the electrical
`
`
`9 Petitioner identified the fourth difference as the electrical connection
`recited in independent claim 15 but not in claim 1. See Pet. 37 (“The fourth
`difference is that claim 15 explicitly requires the at least one LED die to be
`electrically connected to the plurality of electrically conductive leads.”).
`
`7
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`

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`IPR2018-01165
`Patent 7,524,087 B1
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`connection recited by independent claim 15 was insubstantial because we
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`did not recognize Dr. Shealy’s evidence that the electrical connection
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`limitation was expressly disclosed in Takenaka. Req. Reh’g 6. Petitioner,
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`however, again points to arguments made with respect to claim 1. Req.
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`Reh’g 6. Here, too, Petitioner does not identify any statement in its Petition
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`or Dr. Shealy’s declaration that states Takenaka’s paragraph 41 discloses the
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`electrical connection recited in independent claim 15.
`
`Although Petitioner could have argued in its Petition that Takenaka’s
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`paragraph 41 disclosed the electrical connection recited in claim 15 (as
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`Petitioner does in its Request for Rehearing), Petitioner did not do so. Nor
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`was Patent Owner afforded a fair opportunity to address Petitioner’s
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`argument made for the first time in its Request for Rehearing that Takenaka
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`in paragraph 41 discloses the electrical connection recited in independent
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`claim 15.10
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`We are not persuaded that Petitioner’s hindsight reconstruction in its
`
`Request for Rehearing of arguments that could have been made in the
`
`Petition—but were not—shows that we overlooked or misapprehended
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`Petitioner’s arguments.
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`B. Independent Claim 9 and Dependent Claims 10–14
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`We are not persuaded that Petitioner made an argument in its Petition
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`that Takenaka discloses or suggests “plastic leaded chip carrier LEDs”
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`recited in independent claim 9. Req. Reh’g 7–9. In its Request for
`
`
`10 Petitioner contends in its request that, because it made an argument in its
`Petition that Takenaka discloses an electrical connection and because Patent
`Owner did not challenge such an argument, Petitioner has met its burden to
`demonstrate this limitation by a preponderance of the evidence. Req.
`Reh’g 4. For the reasons noted, we do not agree that Petitioner made such
`an argument in its Petition.
`
`8
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`

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`IPR2018-01165
`Patent 7,524,087 B1
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`Rehearing, Petitioner does not identify a statement in its Petition or by its
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`declarant (Dr. Shealy) that Takenaka discloses “plastic leaded chip carrier
`
`LEDs.” Req. Reh’g 7–9 (quoting Pet. 30–31).
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`Instead, in its Request, Petitioner quotes its argument in its Petition
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`that Okazaki discloses the plastic leaded chip carrier LEDs recited in
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`independent claim 9 and does so in the context of the Petition’s arguments
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`that Okazaki and other references would have rendered independent claim 9
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`obvious (Grounds 1–3). Req. Reh’g 8–9 (citing Pet. 30–31); Pet. 30
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`(“Nevertheless, Okazaki discloses a display comprising a plurality of plastic
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`leaded chip carrier LEDs.”); see Pet. 30 (citing Ex. 1004, 1:17–20; Ex. 1004,
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`3:51-55; Ex. 1003 ¶ 108). In its Request for Rehearing, Petitioner also
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`points to Dr. Shealy’s declaration testimony that Okazaki in columns one
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`and three disclosed a display comprising a plurality of plastic leaded chip
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`carrier LEDs. Ex. 1003 ¶ 108; Req. Reh’g 8–9 (citing Ex. 1003 ¶ 108).
`
`Notably, Okazaki is not included in Petitioner’s grounds asserting Takenaka
`
`(Grounds 7–9) but in other grounds challenging claim 9 (Grounds 1–3).
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`Dec. 7 (identifying asserted grounds); Pet. 4–5 (identifying asserted
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`grounds).
`
`Although Petitioner asserted in its Petition that Okazaki discloses the
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`plastic leaded chip carrier LEDs recited in independent claim 9 (and did so
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`in the context of Grounds 1–3), Petitioner did not argue in its Petition that
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`Takenaka disclosed or suggested plastic leaded chip carrier LEDs. Pet. 59
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`(discussing claim 9 in the context of Grounds 7–9). Neither does Petitioner
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`in its Request for Rehearing contend that the Petition stated that Takenaka
`
`disclosed or suggested plastic leaded chip carrier LEDs recited in
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`independent claim 9. Req. Reh’g 7–9. Rather, Petitioner’s Request for
`
`9
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`

`

`IPR2018-01165
`Patent 7,524,087 B1
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`Rehearing contends that the Petition indirectly makes such an argument
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`through three propositions:
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`(i) the argument in the Petition (and the testimony of Dr. Shealy) that
`
`Okazaki disclosed plastic lead chip carrier LEDs recited in claim 9 based on
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`a quotation of Okazaki that describes resin in the context of lead chip carrier
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`LEDs, but the Petition does so only impliedly without noting that resin is
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`equivalent to plastic (Pet. 30–31);
`
`(ii) the argument in the Petition that Takenaka disclosed an LED
`
`device having a resin portion in Figure 1 (Pet. 49–50), which was recognized
`
`by the Decision (Dec. 14–15, 23–24); and
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`(iii) the reference in the discussion of claim 9 in the Petition to an
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`analysis of similar limitations in claim 1 (Pet. 46, 59), which limitations do
`
`not include the specific material plastic required by claim 9.
`
`Req. Reh’g 7–9.
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`Through the reconstruction of these propositions, Petitioner argues in
`
`its Request for Rehearing that Petitioner presented arguments in its Petition
`
`that (i) resin is equivalent to plastic and (ii) Takenaka discloses a resin
`
`portion in Figure 1 for the LED and, therefore, Petitioner argued in its
`
`Petition that Takenaka disclosed plastic lead chip carrier LEDs recited in
`
`claim 9.
`
` We are not persuaded that Petitioner in its Petition argued that
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`Takenaka disclosed or suggested the plastic lead chip carrier LEDs recited in
`
`claim 9. Petitioner’s discussion of claim 9 in its grounds asserting Takenaka
`
`would have rendered claim 9 obvious (Grounds 7–9) did not argue (i) resin
`
`is equivalent to plastic and (ii) Takenaka discloses a resin portion in Figure 1
`
`for the LED, and, as such, Takenaka disclosed the plastic lead chip carrier
`
`LEDs required by claim 9. See Pet. 59. The Petition stated:
`
`10
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`

`

`IPR2018-01165
`Patent 7,524,087 B1
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`The differences between claims 9 and 1 are discussed in
`
`Section VI.B.3.11 Ex. 1003, ¶204.
`
`As explained above, the preamble of claim 9 should not
`
`be limiting because it does not breathe life and meaning into the
`claim. See, e.g., Pitney Bowes, 182 F.3d at 1305; Ex. 1003,
`¶205. Nonetheless, Takenaka discloses this additional
`language. Ex. 1003, ¶205. Takenaka discloses that the
`“semiconductor light emitting device preferably includes a
`plurality of LED chips,” and that “[a]ccordingly, the
`applicability to a product such as a full color display can be
`increased.” Ex. 1008, ¶0021, 37; Ex. 1003, ¶205.
`
`Also, Kamada explains that “[t]he present article can be
`
`used principally as a light emitting diode for the display of a
`semi-outdoor TV.” Ex. 1006 (Description); Ex. 1003, ¶206.
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`Thus, claim 9 is obvious for essentially the same reasons
`
`discussed with respect to claim 1. Ex. 1003, ¶207.
`
`Pet. 59.
`
`
`
`Instead of arguing that Takenaka discloses or suggests the plastic
`
`leaded chip carrier LEDs recited by claim 9 as Petitioner now does in its
`
`Request for Rehearing, Petitioner argued in its Petition that the preamble 9 is
`
`not limiting and identifies the limitation reciting plastic leaded chip carrier
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`LEDs as part of the preamble. See Pet. 29 (identifying the preamble as “A
`
`display comprising a plurality of plastic leaded chip carrier LEDs, the plastic
`
`leaded chip carrier LEDs each comprising. . . .”).
`
`Petitioner additionally argued with regard to claim 9 that Takenaka
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`disclosed LED chips, but not that Takenaka disclosed plastic, or even resin,
`
`in the context of LED chips. Pet. 59 (citing Ex. 1008 ¶ 21, 37; Ex. 1003,
`
`¶ 205). Petitioner in its Takenaka grounds in its Petition simply did not
`
`address the specific material required by claim 9—plastic. See Pet. 59.
`
`
`11 Section VI.B.3 asserts the subject matter of claim 9 would have been
`obvious over Okazaki and other references (Grounds 1–3).
`
`11
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`

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`IPR2018-01165
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`
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`Petitioner contends in its Request for Rehearing that its Petition
`
`argument that “claim 9 is obvious for essentially the same reasons discussed
`
`with respect to claim 1” should be understood as asserting the specific
`
`arguments advanced in its Request for Rehearing that Takenaka discloses a
`
`resin portion and therefore, because resin is equivalent to plastic, discloses
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`“plastic leaded chip carrier LEDs” required by claim 9. Req. Reh’g 7–9.
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`We are not persuaded that is a reasonable understanding of the Petition for
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`two reasons.
`
`First, we are not persuaded in view of the Petitioner’s recognition in
`
`the Petition that claim 9 recites “[a] display comprising a plurality of plastic
`
`leaded chip carrier LEDs, the plastic leaded chip carrier LEDs each
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`comprising” whereas claim 1 recites “[a]n optical device comprising.”
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`Pet. 29 (side-by-side limitation comparisons in Section VI.B.3 (discussing
`
`Grounds 1–3)). In the context of the identified difference that claim 9
`
`recites plastic leaded chip carrier LEDs, we are not persuaded that the
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`general statement that “claim 9 is obvious for essentially the same reasons
`
`discussed with respect to claim 1” should lead us to understand that
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`Petitioner is arguing that Takenaka discloses a limitation recited in
`
`claim 9—specifically plastic—that is not required by claim 1.
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`Second, we are not persuaded that Petitioner’s Okazaki argument
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`concerning claim 9 in its Petition—that asserts a description of resin by
`
`Okazaki discloses the plastic limitation of claim 9—should lead us to
`
`understand that Petitioner is arguing that Takenaka discloses the plastic
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`limitation recited in claim 9 because Petitioner quotes a portion of Takenaka
`
`that refers to resin with regard to the limitations “at least one LED die” and
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`“a light transmitting encapsulant” recited in claim 1.
`
`12
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`IPR2018-01165
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`We conclude that Petitioner did not argue in its Petition, as Petitioner
`
`does in its Request for Rehearing, that Takenaka discloses or suggests the
`
`plastic lead chip carrier LEDs recited in claim 9 because (i) resin is
`
`equivalent to plastic and (ii) Takenaka discloses a resin portion in Figure 1
`
`for the LED. See 37 C.F.R. § 42.104(b) (requiring a petition for inter partes
`
`review to identify how the challenged claim is to be construed and where
`
`each element of the claim is found in the prior art patents or printed
`
`publications relied on). We are not persuaded that Petitioner’s hindsight
`
`reconstruction in its Request for Rehearing of arguments that could have
`
`been made in the Petition—but were not—shows that we overlooked or
`
`misapprehended Petitioner’s arguments. Moreover, Patent Owner was not
`
`afforded a fair opportunity to address the argument Petitioner now raises in
`
`its Request for Rehearing.
`
`In addition, Petitioner’s Request for Rehearing contends that the
`
`Decision is in error because the Decision recognizes Takenaka’s description
`
`of resin but concludes that Petitioner did not identify any disclosure in
`
`Takenaka that teaches or suggests the plastic limitation required by claim 9.
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`Req. Reh’g 7; Pet. 50. As explained in the Decision, Petitioner and
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`Dr. Shealy failed to address the material requirement of the plastic limitation
`
`in claim 9 or identify the plastic limitation as reading on Takenaka’s
`
`description of resin. Dec. 50. We are not “free to adopt arguments on
`
`behalf of petitioners that could have been, but were not, raised by the
`
`petitioner” but “must base its decision on arguments that were advanced by”
`
`the petitioner. Magnum Oil Tools, 829 F.3d at 1381.
`
`To be clear, we did not determine in our Decision that resin is
`
`equivalent to plastic based on Petitioner’s argument with regard to Okazaki
`
`disclosing the plastic leaded chip carrier LEDs as recited in claim 9 based on
`
`13
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`

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`IPR2018-01165
`Patent 7,524,087 B1
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`Okazaki’s disclosure of resin. This is because the Decision did not address
`
`whether Petitioner sufficiently demonstrated that Okazaki disclosed the
`
`plastic leaded chip carrier LEDs as recited in claim 9 or whether plastic is
`
`equated with resin in the context of leaded chip carrier LEDs as Petitioner
`
`implied in its claim 9 arguments concerning Okazaki. Rather, the Decision
`
`found Petitioner had not shown claim 9 to be unpatentable over Okazaki
`
`(Grounds 1–3) because Okazaki does not teach or suggest another limitation
`
`recited by the claims. Dec. 83. Thus, whether resin is equivalent to plastic
`
`was not addressed by our Decision.
`
`For the reasons discussed above, we are not persuaded that Petitioner
`
`argued in the Petition that resin is equivalent to plastic and, therefore,
`
`Takenaka’s description of resin discloses the plastic leaded chip carrier
`
`LEDs required by claim 9. Accordingly, we are not persuaded that we
`
`overlooked or misapprehended such an argument in the Petition.
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`III. CONCLUSION
`
`For the foregoing reasons, Petitioner has not demonstrated that we
`
`misapprehended or overlooked any matter that claims 9–19 of the ’087
`
`patent would have been over (i) Takenaka and Critelli (identified in the
`
`Petition as Ground 7), (ii) Takenaka and Kamada (identified in the Petition
`
`as Ground 8), and (iii) Takenaka and Kyowa12 (identified in the Petition as
`
`Ground 9).
`
`Accordingly, we decline to modify our Final Written Decision.
`
`
`12 Japanese Patent Application Publication No. 2001 118868, published
`April 27, 2001 (“Exhibit 1010”).
`
`14
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`

`

`Claims
`Not Shown
`Unpatentable
`1, 6, 9–19
`
`1, 6, 9–19
`
`1, 6, 9–19
`
`7, 8
`
`7, 8
`
`7, 8
`
`2, 3, 5, 9–1913
`
`2, 3, 5, 9–1914
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1, 6
`
`2, 3, 5, 9–19
`
`
`
`
`
`
`
`415
`
`416
`
`4
`
`Ground
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`Outcome of Final Written Decision after Rehearing:
`35
`Claims
`U.S.C.
`Shown
`§
`Unpatentable
`
`
`IPR2018-01165
`Patent 7,524,087 B1
`
`Claim(s)
`
`Reference(s)
`
`1, 6, 9–
`19
`1, 6, 9–
`19
`1, 6, 9–
`19
`7, 8
`
`7, 8
`
`7, 8
`
`1–3, 5, 6,
`9–19
`1–3, 5, 6,
`9–19
`1–3, 5, 6,
`9–19
`4, 7, 8
`
`4, 7, 8
`
`4
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Okazaki,
`Critelli
`Okazaki,
`Kamada
`Okazaki,
`Kyowa
`Okazaki,
`Critelli,
`Cheong
`Okazaki,
`Kamada,
`Cheong
`Okazaki,
`Kyowa
`Takenaka,
`Critelli
`Takenaka,
`Kamada
`Takenaka,
`Kyowa
`Takenaka,
`Critelli,
`Cheong
`Takenaka,
`Kamada,
`Cheong
`Takenaka,
`Kyowa,
`Cheong
`
`
`13 Claims 1 and 6 were not reached.
`14 Claims 1 and 6 were not reached.
`15 Claims 7 and 8 were not reached.
`16 Claims 7 and 8 were not reached.
`
`15
`
`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`Claim(s)
`
`35
`U.S.C.
`§
`
`Reference(s)
`
`7, 8
`
`1, 6, 9–
`19
`7, 8
`
`7, 8
`
`Overall
`Outcome
`
`
`Takenaka,
`Kyowa
`Kamada
`
`Kamada,
`Kyowa
`Kamada,
`Cheong
`
`
`103
`
`103
`
`103
`
`103
`
`
`
`Claims
`Shown
`Unpatentable
`7, 8
`
`Claims
`Not Shown
`Unpatentable
`
`
`
`
`
`
`
`
`1, 6, 9–19
`
`7, 8
`
`7, 8
`
`Ground
`
`13
`
`14
`
`15
`
`16
`
`1, 6–8
`
`2–5, 9–19
`
`
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`16
`
`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`FOR PETITIONER:
`
`Patrick R. Colsher
`Matthew G. Berkowitz
`Eric S. Lucas
`Thomas R. Makin (pro hac vice)
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`eric.lucas@shearman.com
`thomas.makin@shearman.com
`matthew.berkowitz@shearman.com
`
`
`
`FOR PATENT OWNER:
`
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@davidsonberquist.com
`
`
`
`17
`
`