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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2018-01165
`Patent 7,524,087 B1
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`I.
`
`II.
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE .................. 2
`
`A. Okazaki Does Not Disclose or Suggest the Claimed
`Pockets/Cavities .................................................................................... 2
`
`B.
`
`C.
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`1.
`
`2.
`
`3.
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`Petitioner’s Reliance on Secondary Reference Critelli is Faulty .......... 5
`
`The Kamada Reference Does Not Disclose or Suggest the Claimed
`Lead Receiving Compartments Formed in the Peripheral Sidewall of
`the Reflector Housing ............................................................................ 6
`
`Petitioner’s New Interpretations of Kamada are Untimely and
`Improper ........................................................................................... 6
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`Kamada Does Not Support Petitioner’s New Theory ....................11
`
`Petitioner Cannot Excuse Its Failure to Evaluate the Claims as
`Written ............................................................................................13
`
`D.
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`Petitioner’s Challenges Against Claim 2 Fail Because Takenaka Does
`Not Disclose the Features of Claim 2 .................................................15
`
`E.
`
`Petitioner Cannot Remedy Its Deficient Challenges In Its Reply .......15
`
`1.
`
`2.
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`Petitioner’s Grounds 1-3 Challenges Against Claims 12-13, 16,
`and 18 Are Insufficient...................................................................16
`
`Petitioner’s Grounds 1-3 Challenges Against Claims 14 and 19 Are
`Also Insufficient .............................................................................17
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`III. CONCLUSION ..............................................................................................18
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`
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`- i -
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`
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`TABLE OF AUTHORITIES
`
`Cases
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...................................................................................15
`
`Wasica Fin. GmbH v. Continental Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ....................................................................... 3
`
`Statutes
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`35 U.S.C. § 311(b) ............................................................................................ 15, 18
`
`Rules
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`37 C.F.R. § 42.23(b) ................................................................................................15
`
`37 C.F.R. § 42.104(b) ..............................................................................................16
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`37 C.F.R. § 42.104(b)(3) ..........................................................................................14
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`- ii -
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`PATENT OWNER’S LIST OF EXHIBITS
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`
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`Exhibit Number
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`Exhibit Description
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`2001-2002
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`Reserved
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`2003
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`Stanley 1102W Series Data Sheet
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`2004-2009
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`Reserved
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`2010
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`Curriculum Vitae of Thomas L. Credelle
`
`2011-2015
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`Reserved
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`2016
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`2017
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`Depostition Transcript of James R. Shealy, Ph.D.
`
`Exhibit to Ex. 2016 (Dr. Shealy’s Annotated Takenaka,
`Fig. 1)
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`2018
`
`Declaration of Thomas L. Credelle
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`2019-2112
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`Reserved
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`- iii -
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`
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`Patent Owner Document Security Systems, Inc. (“DSS” or “Patent Owner”)
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`files this Sur-Reply in response to the Reply in support of the Petition for inter
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`partes review filed by filed by Nichia Corporation (“Petitioner”). Rather than
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`rehash prior arguments, Patent Owner will focus on certain salient issues in
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`Petitioner’s Reply, and stand on its Response for the remaining issues.
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`I.
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`INTRODUCTION
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`The Reply fails to remedy Petitioner’s failed challenges. Nothing presented
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`in the Reply changes the fact that Okazaki does not disclose the claimed first or
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`second pockets or cavities. Instead, Okazaki has a single through-hole that extends
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`from the top to the bottom of its LED structure.
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`Additionally, Petitioner improperly attempts to establish that Kamada’s
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`leads are located in a peripheral sidewall, extending between end faces, of a
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`reflector housing based on untimely new arguments and Dr. Shealy’s new
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`interpretations of the Kamada reference as set forth in his Reply Declaration.
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`Like Kamada, the secondary references do not teach or suggest the claim
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`features relating to the claimed “lead receiving compartments” recited in the
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`independent claims. The purported motivation to include such features is based on
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`hindsight and inconsistent with the aims of the primary references.
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`Finally, the Petitioner is deficient in its challenges of claims 2-5, 12-14, 16,
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`and 18-19, and fails to come forward with art allegedly disclosing or suggesting
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`features of these claims. It is improper in an IPR to rely upon expert testimony as
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`a substitute for disclosure in patents and printed publications, or to rely upon reply
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`evidence to bolster up a failed challenge asserted in a Petition.
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`For these reasons, and as explained in more detail below, each challenge is
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`deficient and the Board should confirm the patentability of these claims by final
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`written decision.
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`II. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`A. Okazaki Does Not Disclose or Suggest the Claimed
`Pockets/Cavities
`
`In Grounds 1-3, Petitioner relies upon Okazaki as disclosing the “pocket”
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`and “cavity” elements of the claims, and identifies Okazaki’s tubular vessel 4 as
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`the claimed “reflector housing.” Pet., 12-16, 29-31, 36-39. Patent Owner
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`explained that Okazaki’s tubular vessel 4 has a single through-hole (or tube)
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`extending from its top surface to its bottom surface, and this through-hole would
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`not be referred to by a POSITA as a pocket or cavity. See PO Resp., 11-18; Ex.
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`2018, ¶¶24-35.
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`In reply, Petitioner offers no reason why its interpretation of Okazaki’s
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`tubular through-hole as a “pocket” or “cavity” is allegedly correct, and leaves
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`unrebutted the majority of Patent Owner’s arguments and Mr. Credelle’s testimony
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`on the proper interpretation of Okazaki. Further, Petitioner’s argument that Patent
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`Owner is somehow narrowing the scope of “pocket”/“cavity” is founded upon its
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`-2-
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`incorrect assumption that a through-hole as disclosed in Okazaki falls within the
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`“full scope” of a pocket/cavity’s “plain and ordinary meaning.” Reply, 5 (citing
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`Wasica Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1281-82 (Fed.
`
`Cir. 2017)). This is incorrect, as Mr. Credelle explained. See Ex. 2018, ¶¶24-35.
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`Petitioner also misstates Patent Owner’s position, and argues that “Patent
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`Owner conclusorily asserts that a pocket/cavity cannot have even a small hole.”
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`Reply, 4. This argument misses the point. First, Patent Owner’s statement that
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`Okazaki’s tubular vessel 4 would not have been interpreted as possessing a
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`pocket/cavity was supported by Mr. Credelle’s well-reasoned testimony. See PO
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`Resp., 11-18; Ex. 2018, ¶¶24-35. Neither Petitioner nor Dr. Shealy directly refutes
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`Mr. Credelle’s testimony on this point. See, e.g., Reply, 4-7.1 Second, whether a
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`pocket/cavity, as those terms are used in the claims of the ’087 patent, could have a
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`1 Petitioner weakly argues that Mr. Credelle’s analysis should be disregarded
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`because there is allegedly “no evidence he is qualified to testify in the pertinent
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`art.” Reply, 4 n.2. Petitioner notably fails to address the substance of Mr.
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`Credelle’s experience and the legal test for disqualifying an expert’s testimony in
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`IPR, both of which establish that Mr. Credelle in fact is qualified to testify on the
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`understandings of a POSITA in the relevant art. In any event, the proper avenue to
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`attempt to disqualify Mr. Credelle is by a motion to exclude, not a footnote in a
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`Reply.
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`small hole is not the relevant question. The relevant question is whether Okazaki’s
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`tubular vessel 4 would have been interpreted as possessing a pocket/cavity. The
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`answer to that question is no. See PO Resp., 11-18; Ex. 2018, ¶¶24-35.
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`Proffering an irrelevant diversion, Petitioner argues that the claims are
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`apparatus claims, and not process claims, and therefore Okazaki’s manufacturing
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`disclosure should somehow be disregarded from the Board’s analysis. Reply, 5.
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`What Petitioner misses from Patent Owner’s discussion on this point is that Patent
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`Owner never argued to incorporate process limitations into the ’087 patent’s
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`apparatus claims. Rather, Patent Owner and Mr. Credelle explained how
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`Okazaki’s method of manufacturing its tubular vessel, and the structure that
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`resulted, informed Mr. Credelle’s opinion that Okazaki’s tubular vessel 4 has a
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`single through-hole (or tube) extending from its top surface to its bottom surface,
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`and that this through-hole would not have been referred to by a POSITA as a
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`pocket or cavity. PO Resp., 15; Ex. 2018, ¶28. In other words, not only does
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`Okazaki’s resulting structure fail to show a pocket/cavity, Okazaki’s
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`manufacturing purpose for using a through-hole would confirm to a POSITA that
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`there is no pocket/cavity. Dr. Shealy’s failure to consider this evidence while
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`forming his own opinions renders his opinions improperly developed and incorrect.
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`Finally, even if the Board concludes that Okazaki’s single through-hole
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`could be considered a pocket or cavity rather than a through-hole or tube (which
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`Patent Owner submits would be incorrect), Okazaki only discloses one
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`pocket/cavity under that faulty interpretation. This point was raised by Patent
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`Owner in its Response, and it went unrebutted in Petitioner’s Reply. See PO
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`Resp., 18.
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`Thus, Petitioner’s Reply fails to rebut Patent Owner’s Response arguments.
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`A POSITA would not have interpreted Okazaki’s through-hole as a pocket or
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`cavity required by claims 1, 9 and 15, and it is clear that the “second” pocket or
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`cavity of claims 1, 10 and 15 are neither disclosed nor suggested by Okazaki’s
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`through-hole.
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`Petitioner’s Reliance on Secondary Reference Critelli is Faulty
`
`B.
`Petitioner’s reliance on Critellis is also faulty. As Patent Owner pointed out
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`in its Response, Petitioner’s alleged motivation to modify Okazaki based on
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`Critelli is a hindsight-based analysis. Critelli does not teach adding lead receiving
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`compartments in order to improve prior art LED lead frames. Further, Critelli’s
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`solution to pliable lead frames is not to incorporate “lead receiving compartments”
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`to a peripheral sidewall of a reflector housing, but rather to use conductive spring
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`clips as leads, with a different geometry to contact the conductive spring clips to
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`solder lands 92/94. See PO Resp., 19-20. Petitioner’s Reply fails to address this
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`want of motivation based on Critelli, and instead falls back on legal citations and
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`parentheticals having no pertinence to Petitioner’s failure of evidence. See Reply,
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`-5-
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`17-18. Dr. Shealy’s failure to consider Critelli in full confirms that his testimony
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`was result-oriented, and Petitioner cannot meet its burden under such
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`circumstances.
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`C. The Kamada Reference Does Not Disclose or Suggest the Claimed
`Lead Receiving Compartments Formed in the Peripheral Sidewall
`of the Reflector Housing
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`Grounds 2 and 14 rely upon the Kamada reference as disclosing the lead
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`receiving compartments formed in the peripheral sidewall of the reflector housing.
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`Pet. 20-23. As explained in Patent Owner’s Response, Kamada’s leads are routed
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`down the side of the molded resin and a structure referred to as the lower part of
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`the base. PO Resp., 22. But the leads in Kamada are not located in or near lead
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`receiving compartments formed in the peripheral sidewall of the reflector
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`housing, where such peripheral sidewall extends between the end faces as required
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`by claims 1, 9, and 15.
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`1.
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`Petitioner’s New Interpretations of Kamada are Untimely
`and Improper
`
`Even though a petitioner is not entitled to present new theories of
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`unpatentability on reply, here Petitioner dedicates pages 9-16 of its Reply towards
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`a different interpretation of Kamada’s disclosure than was advanced in pages 20-23
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`-6-
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`of the Petition.2 Further, Petitioner does not cite to its own Petition while
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`advancing this new and untimely interpretation. See Reply, 9-16.
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`Petitioner first takes issue with Patent Owner’s discussion in its Response on
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`Kamada’s sectional view of Line A-A. Reply, 10. But the sectional view of Line
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`A-A is the same view relied upon by Petitioner and discussed in the Petition and
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`Dr. Shealy’s Declaration. See Pet., 21-22 (“Red circles highlight the sidewall in
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`the reference sectional view.); 73-74; Ex. 1003, ¶45 (“Kamada’s reference plan
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`view and reference sectional view at line A-A are reproduced below to show the
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`general structure of its design.”); Ex. 1003, ¶86, ¶268.
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`2 In addition to the Reply tripling the number of pages dedicated to Petitioner’s
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`explanation of Kamada as compared to the Petition, pages 3-15 of Dr. Shealy’s
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`Reply Declaration are provided to address Kamada.
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`-7-
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`
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`Pet., 22; see also Paper 11, 38-39 (Board’s Institution Decision evaluating
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`the Petitioner’s theory based on Kamada’s Sectional View of Line A-A).
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`Further, Petitioner never advanced a theory in the Petition that the
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`“sidewall” in Kamada extends between end-faces of a reflector housing. Rather,
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`Petitioner and Dr. Shealy encircled in red the “upper part of the base” and the
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`edges of the “lower part of the base” in the sectional view of line A-A without
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`advancing a theory that these portions of the base extended between end-faces of a
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`reflector housing. See Pet., 20-22; Ex. 1003, ¶¶54, 87, 268. The Board recognized
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`that Petitioner failed to address the claim requirement that the peripheral sidewall
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`must extend between end-faces of the claimed reflector housing. See Inst. Dec., 42
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`(“Petitioner does not seem to tether Kamada’s summary statement quoted in the
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`Petition to the claim limitations.”).
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`-8-
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`Petitioner’s incomplete analysis of the challenged claim language is
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`consistent with Petitioner’s later theory in Ground 14, where Petitioner looked
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`solely to Kamada’s “base” having an upper part and a lower part to satisfy the
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`claimed “reflector housing.” Pet., 72-73. Petitioner reinforced the limits of its
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`interpretation of Kamada, beginning on the bottom of page 73 through page 74,
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`with exclusive reliance on Kamada’s sectional view of line A-A and the
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`upper/lower portions of the base shown therein. In the Petition, Petitioner stated:
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`
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`Pet., 73-74; see also Ex. 1003, ¶¶266-268.
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`Thus, Kamada’s “base” as shown in sectional view at line A-A was the
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`exclusive component Petitioner relied upon to allegedly disclose the “reflector
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`housing” of the ’087 patent claims. But on Reply, Petitioner improperly looks to
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`different evidence—Kamada’s perspective view and Dr. Shealy’s reply
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`declaration—to argue that the second end face of Kamada’s “reflector housing”
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`actually corresponds to a bottom portion of what the Petitioner previously referred
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`to as a “rib.”
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`The contention that the “rib” was part of Kamada’s “base” is a new theory as
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`there was no argument in or evidence submitted with the Petition to conclude that
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`the alleged “rib” of Kamada is part of Kamada’s “base.” While the Petition
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`included “Kamada’s perspective and bottom views,” and colored the “ribs” on
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`these views with gray shading (see Pet., 22-23; Ex. 1003, ¶54), the Petition did not
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`take the position that the ribs were part of the base or part of the alleged “reflector
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`housing,” and did not take the position that Kamada’s “ribs” extend to a second
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`end-face of a reflector housing. Indeed, Petitioner instead characterized the alleged
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`“ribs” as something different: “structures separating the lead receiving
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`compartments” rather than part of Kamada’s “base.” See also Ex. 1003, ¶87.
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`Further, Dr. Shealy’s original declaration, even if it could have been incorporated
`
`by reference (which it could not), fails to advance the theory now set forth in the
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`Reply. See Inst. Dec., 42 (“Dr. Shealy’s declaration testimony, however, appears
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`to add little or no additional reasoning to that found in the Petition. Compare Pet.
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`22, with Ex. 1003 ¶ 87.); Ex. 1003, ¶¶85-87.
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`Petitioner’s new theories first advanced in the Reply are improper, and
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`cannot remedy the defective theories advanced in the Petition based on Kamada.
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`2. Kamada Does Not Support Petitioner’s New Theory
`As noted above, Petitioner dedicates pages 9-16 of its Reply to its new
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`interpretation of Kamada. Of the 20-page reply declaration from Dr. Shealy, pages
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`3-15 (¶¶5-22) are also dedicated to explaining this new interpretation of Kamada.
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`But Kamada lacks the details necessary to support Petitioner’s new interpretation.
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`In particular, Kamada is a design patent, and aside from the Description of
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`the Article to the Design (Ex. 1006, 6), and the select labels applied to Kamada’s
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`Reference Plan View and Reference Sectional View at Line A-A (Ex. 1006, 8-9),
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`Kamada lacks a specific discussion of its construction. The net result is that the
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`views that Petitioner now bases its interpretation upon are views lacking detailed
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`descriptions. See, e.g., Reply, 12-13 (annotating Kamada’s Perspective View,
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`Front View, and Right Side View). This is perhaps why Petitioner and Dr. Shealy
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`needed so many pages to develop their new theory on reply.
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`Moreover, Petitioner’s annotations to Kamada’s unlabeled views make too
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`much of Kamada’s solid lines. As a design patent, Kamada makes clear that its
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`“solid lines are portions for which design registration is sought as partial
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`designs.” Ex. 1006, 7 (emphasis added). Kamada’s solid lines do not reflect the
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`full construction or arrangement of Kamada’s light emitting diode, but just those
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`portions for which design registration is sought. Petitioner suggests that the
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`molded resin portions located below the lead frame in Sectional View A-A are not
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`present on the Front and Perspective Views of Kamada (Reply, 15), but Kamada’s
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`solid lines cannot substantiate this interpretation. Notably, neither Kamada’s Right
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`Side View nor the Front View include the hatched texture of the molded resin
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`shown in Sectional View A-A. See Ex. 1006, 7. On the other hand, the more
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`detailed Sectional View A-A makes clear that the upper part of the base and lower
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`part of the base are discontinuous, separated by the molded resin.
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`3.
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`Petitioner Cannot Excuse Its Failure to Evaluate the Claims
`as Written
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`Petitioner’s new interpretation of Kamda also raises a new issue of claim
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`construction. Petitioner repeatedly points to the lowest portion of Kamada’s “rib”
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`as the “second end face” of Kamada. That lowest portion is limited to the surface
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`located in the central region of Kamada’s Bottom View, identified by arrow below:
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`
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`In the Petition, Petitioner interpreted the “rib” as a separate structure from
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`any peripheral sidewall, characterizing the alleged “ribs” as “structures separating
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`the lead receiving compartments” rather than part of Kamada’s “base.” See also
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`Ex. 1003, ¶87. Indeed, aside from the “rib,” the alleged peripheral sidewall of
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`Kamada does not extend to that second end face, as Petitioner seemingly concedes
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`with its annotated Front View, showing the alleged peripheral sidewall in light
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`blue:
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`
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`Even if Petitioner is correct in interpreting that lowest surface of Kamada’s
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`light emitting diode as a “second end face,” the “Front View” of Kamada only
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`depicts the central portion of the light emitting diode as having the lowest surface.
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`Petitioner has failed to establish that it would be correct to interpret the other
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`portions, which encircle a periphery of the device but do not extend to that lowest
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`surface, as a “peripheral sidewall extending between the first end face and the
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`second end face.”
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`Finally, attempting to excuse its original reliance in the Petition on
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`Kamada’s Sectional View A-A and the discontinuous upper and lower parts of the
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`base shown therein, Petitioner now argues that the “peripheral sidewall” does not
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`need to be “continuous” or “solid.” Reply, 16. This constitutes an untimely claim
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`construction argument that should have been included in the Petition, but was not.
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`See 37 C.F.R. § 42.104(b)(3). The challenged claims each require (directly or
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`-14-
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`through dependence) a “peripheral sidewall extending between the first end face
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`and the second end face,” and Petitioner has never established that discontinuous
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`portions of a base, such as shown in Kamada’s Sectional View along line A-A, fall
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`within the scope of this claim language.
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`D.
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`Petitioner’s Challenges Against Claim 2 Fail Because Takenaka
`Does Not Disclose the Features of Claim 2
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`Claim 2 recites the optical device of claim 1, “wherein the combined volume
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`of the second pocket and the lead receiving compartments is at least 50% of the
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`volume of the first pocket.” ’087 patent, 6:38-40. Takenaka never discloses any
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`dimensions or other information that would allow a POSITA to draw any fact-
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`based conclusions about the relative volumes of those two areas. Petitioner’s
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`argument on reply confirms that Petitioner is using Dr. Shealy’s testimony as a
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`substitute for actual disclosure in a patent or printed publication, in violation of 35
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`U.S.C. § 311(b). See 2018 Revised Trial Practice Guide at 5 (“expert testimony
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`cannot take the place of disclosure from patents or printed publications”).
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`Petitioner Cannot Remedy Its Deficient Challenges In Its Reply
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`E.
`Dr. Shealy’s Reply Declaration (Ex. 1016) is primarily directed to the failed
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`challenges asserted in the Petition. However, under SAS Institute Inc. v. Iancu, 584
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`U.S. ___, 138 S. Ct. 1348 (2018), the Petition governs the proceeding, and
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`Petitioner cannot remedy deficient challenges in its Reply. See also 37 C.F.R. §
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`42.23(b). The Petition’s challenges of claims 2-5, 12-14, 16, 18, and 19 failed to
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`establish a reasonable likelihood of success, and cannot be remedied on Reply. See
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`Paper 11, 55-59, 60-61, and 63-65.
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`1.
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`Petitioner’s Grounds 1-3 Challenges Against Claims 12-13,
`16, and 18 Are Insufficient
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`Regarding claims 12 and 16, the Board evaluated the substance of
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`Petitioner’s argument against these claims at pp. 55-57 of the Institution Decision,
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`and noted that the Petition “relies upon Dr. Shealy’s testimony” as a substitute for
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`disclosure in a prior art reference. Paper 11, 55-56 (“Petitioner does not cite a
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`portion of any asserted prior art references as teaching or suggesting these
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`additional limitations.”). Petitioner relies upon Dr. Shealy to state that J-shaped
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`leads were “a preferred lead form for surface mount components.” Ex. 1003, ¶120;
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`Pet., 32. The Board correctly noted that a petition must “specify where each
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`element of the claim is found in the prior art patents or printed publications relied
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`upon.” Id., 56-57 (quoting 37 C.F.R. § 42.104(b)).
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`Petitioner’s deficiency as to claim 13 is similar. While the Board stated that
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`“one of ordinary skill in the art may understand the figure itself to show the
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`required limitation,” Petitioner and Dr. Shealy failed to establish that
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`understanding in the Petition, and they cannot establish such a factor for the first
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`time on reply.
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`Finally, the Board evaluated claim 18 on pp. 60-61 of the Institution
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`Decision. There, the Board noted that “Petitioner does not identify any portion of
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`the asserted references that purportedly teaches the additional limitation of
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`reflector housings arranged in an array in a display.” Paper 11, 60. Further, the
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`Board stated that “On this preliminary record, Petitioner’s contentions regarding
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`the cited portions of Okazaki and Kamada appear conclusory and may lack
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`sufficient explanation as to how the quoted portions of the references relate to the
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`required array.” Id., 61.
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`2.
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`Petitioner’s Grounds 1-3 Challenges Against Claims 14 and 19
`Are Also Insufficient
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`Dependent claims 14 recites that the “display comprises a stadium display.”
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`Claim 19 recites the illumination system of claim 18, “said display comprising a
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`stadium display.” As the Board already recognized, “Petitioner does not cite a
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`portion of any asserted prior art references as teaching a stadium display.” Paper
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`11, 58. The untimely Reply Declaration from Dr. Shealy, which amounts to a
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`disparagement of claims 14 and 19 rather than a proper challenge, cannot remedy
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`the Petition.
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`To the extent that Petitioner is urging the Board to find claims 14 and 19
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`obvious because it was known to use LEDs in stadium displays, that argument
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`must fail because Petitioner has not identified the design criteria and challenges
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`that are unique to stadium displays (e.g., number of elements, light intensity
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`required, contrast necessary for outdoor and brightly-lit environments) and has not
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`shown that it would have been obvious to a POSITA to use the combination of
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`Okazaki with either Citrelli, Kamada, or Kyowa in that environment.
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`Further, Petitioner provides no evidence that the particular LED structure
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`disclosed in the asserted references were ever used in a stadium display. This
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`violates the prior art standards of 35 U.S.C. § 311(b) and cannot succeed.
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`Petitioner’s challenges of claims 14 and 19 must fail.
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`III. CONCLUSION
`For the reasons presented above, all of the Petition’s grounds challenging the
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`validity of the ’087 patent claims are improperly supported and the patentability of
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`claims 1-19 should be confirmed by final written decision.
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`Dated: July 16, 2019
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`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`James T. Wilson (Reg. No. 41,439)
`Aldo Noto (Reg. No. 35,628)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax: (571) 765-7200
`Email: whelge@dbjg.com
`Email: jwilson@dbjg.com
`Email: anoto@dbjg.com
`
`Counsel for Patent Owner
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`CERTIFICATE OF WORD COUNT
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`The undersigned certifies that the foregoing PATENT OWNER’S SUR-
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`REPLY complies with the type-volume limitation in 37 C.F.R. § 42.24(c).
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`According to the word-processing system’s word count, the brief contains 3,430
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`words, excluding the parts of the brief exempted by 37 C.F.R. § 42.24(c).
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`
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`By: /s/ Wayne M. Helge
`
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
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`IPR2018-01165 Patent Owner’s Sur-Reply
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that this PATENT OWNER’S RESPONSE
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`and exhibit was served to Petitioner by serving the correspondence email addresses
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`of record as follows:
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`
`Patrick R. Colsher (Reg. No. 74,955)
`patrick.colsher@shearman.com
`Eric S. Lucas (Reg. No. 76,434)
`eric.lucas@shearman.com
`Thomas R. Makin (pro hac vice)
`thomas.makin@shearman.com
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, New York 10022
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`matthew.berkowitz@shearman.com
`Shearman & Sterling LLP
`1460 El Camino Real
`Menlo Park, California 94025
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`Email: nichia-dss@shearman.com
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`
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`Dated: July 16, 2019
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`
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`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
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