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