`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR 2018-01165
`Patent 7,524,087 B1
`____________
`
`RECORD OF ORAL HEARING
`Held: August 28, 2019
`____________
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`
`
`
`Case IPR 2018-01165
`Patent 7,524,087 B1
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`PATRICK R. COLSHER, ESQUIRE
`THOMAS R. MAKIN, ESQUIRE
`OMAR AMIN, ESQUIRE
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, NY 10022-6069
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`WAYNE M. HELGE, ESQUIRE
`JAMES T. WILSON, ESQUIRE
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`
`
`
`The above-entitled matter came on for hearing on Wednesday, August
`
`28, 2019, commencing at 9:00 a.m., at the U.S. Patent and Trademark Rocky
`Mountain Regional Office, Byron G. Rogers Federal Building, 1961 Stout
`Street, Denver, CO 80294.
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`
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`
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`Case IPR 2018-01165
`Patent 7,524,087 B1
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`P R O C E E D I N G S
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`USHER: All Rise.
`JUDGE DOUGAL: Please be seated. Good morning. This is Oral
`Hearing for IPR2018-01165 between Petitioner, Nichia Corporation, and
`Patent Owner, Document Security Systems Inc., concerning Patent Number
`7,564,087.
`I’m Judge Dougal. With me today is Judge Moore, and via video we
`have Judge Benoit in Alexandria.
`JUDGE BENOIT: Excuse me, I can't hear in Hearing Room A.
`JUDGE DOUGAL: Is this any better?
`JUDGE BENOIT: Yes, thank you.
`JUDGE DOUGAL: Okay. All right, so let's start by having counsel
`state their appearances, beginning with Petitioner.
`MR. COLSHER: Patrick Colsher with Shearman and Sterling for
`Petitioner, Nichia Corp, and I also have with me my co-counsel, Tom
`Makin.
`JUDGE DOUGAL: All right.
`MR. HELGE: Good morning, Your Honor. My name is Wayne
`Helge appearing here for the Patent Owner, Document Security Systems Inc.
`Counsel today with me is James Wilson, also working on the case.
`JUDGE DOUGAL: Okay, thank you. Welcome this morning. So,
`before we begin, I will go over a few administrative matters.
`As you recognize, we have Judge Benoit appearing remotely, and so
`we will remind you, first of all, to please always talk into the microphone so
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`that she can hear, and also, so our court reporter can hear and record the
`hearing.
`She will not have access to the screen, so it’s important that you
`always start off saying what slide you are in your slide deck. She has it on
`her computer and will follow along in that manner.
`I believe we have 45 minutes for each side to present their arguments.
`Petitioner, would you like to reserve any of your time?
`MR. COLSHER: I’ll reserve 10 minutes.
`JUDGE DOUGAL: 10 Minutes, that’s fine. So, we've got this grey
`clock up here to keep you very aware of the time that you have. If either
`party has any objections, we ask that you do not interrupt the other party, but
`that when you have your time, that will be the time for you to issue any
`objections you had for the other parties’ presentation.
`All right, do either side have any demonstratives, copies that they
`want to give to the court reporter or to us. You’ve got one, okay.
`JUDGE MOORE: Can you make copies as well.
`JUDGE DOUGAL: Sure, if you have one, we’ll take them now.
`MR. COLSHER: Your Honor, apologies, I have only one extra.
`JUDGE DOUGAL: We don’t need -- that’s fine.
`MR. COLSHER: Okay.
`JUDGE DOUGAL: Thank you. Okay, any questions from either side
`before we start? Okay, Petitioner, you may begin.
`JUDGE MOORE: By the way, I've got it set to bring the yellow light
`up when you have one minute left in the 35 minutes.
`MR. COLSHER: Thank you, Your Honor.
`JUDGE DOUGAL: You may begin.
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`MR. COLSHER: Good morning, Your Honors, I’m on Slide Number
`7. We’re here today to talk about Petitioner’s challenges to Claims 1
`through 19 of the ’087 Patent.
`The Patent is directed to an LED package and it’s made clear through
`the prosecution, the alleged novelty is to add what the patent terms to be
`receiving compartments to a side wall of a reflector housing.
`Now these compartments, which the patent interchangeably refers to
`as cavities, can be seen in Figure 2 on the right-hand side of the screen, in
`Slide Number 7, and it’s Element Number 52 that is colored in orange.
`And so, one orienting note is that the patent refers to the Entire
`Housing 20, which is the portion that is not colored on the screen, which
`extends from the top to the bottom, or sometimes in the patent, referred to as
`the first-end face and the second end face, as a Reflector Housing 20, even
`though only the interior of the top part, the cavity that’s colored in yellow in
`Figure 1, in which the LEDs are mounted, actually does any of the
`reflecting.
`Now, turn to Slide Number 3. We have outlined Petitioner’s
`challenges to Claims 1 through 19, and the prior art can generally be split
`into two categories.
`The first category is those that disclose reflector housings with the
`first and second pocket or cavity. And that’s in particular the Kamada,
`Okazaki, and Takenaka References.
`And then there are those that disclose the lead receiving compartments
`that would be added to the peripheral sidewall of the reflector housing, and
`namely those are Kamada, Critelli, and Kyowa.
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`I did mention Kamada in both categories, and we would submit that it
`actually has both the reflector housing with the first and second pocket, as
`well as the lead receiving compartments formed in. And that’s why we have
`presented a single reference obviousness ground for several of the claims.
`The only dispute there is with respect to whether the lead receiving
`compartments are in the peripheral sidewall, and as I’ll explain, as I think
`the papers made clear, we would submit the record evidence does show that
`the claimed lead receiving compartments are found in Kamada; as did
`certain other references, for example, the combination of Takenaka and
`Kyowa.
`The only issue with respect to at least the independent claims is
`whether it would have been obvious to combine those. There's no issue that
`Takenaka has a reflector housing with the first and second end pocket, or
`that Kyowa has the lead receiving compartments that would be formed
`therein.
`So, for that issue, we’re only going to be talking about the
`obviousness to combine those references.
`If we shift to Slide Number 8, we can see in the Table what we sort of
`view as the key remaining disputes in this proceeding. And they fall into a
`handful of categories.
`The first two disputes concern the lead receiving compartments, and
`in particular, the Kamada and Critelli Reference. As I mentioned, there's no
`dispute there with respect to the receiving compartments and Kyowa.
`We’ll then talk about the Okazaki Reference, and whether its reflector
`housing has a first and second pocket or cavity. Now there's no dispute with
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`respect to Kamada or Takenaka for the reflector housing in the first and
`second pocket.
`Then we’ll talk about the obviousness of combining two of the
`reflector housings, that is Okazaki and Takenaka, to add lead receiving
`compartments. And after, then we’ll get into the dependent claims, and their
`issues, effectively is, Patent Owner has taken the position that Petitioner has
`not met its burden of proof; effectively, the arguments are conclusory. And
`we would submit that the record evidence shows otherwise.
`So, if we turn to the first dispute -- and I’m on Slide Number 9 -- it
`pertains to Kamada and whether there's the lead receiving compartments that
`are formed in the peripheral sidewall of the reflector housing. Now, in
`reality we don’t think there's a real dispute here other than the proper
`orientation of the Kamada figures.
`And so, if we look to Slide Number 18, we can see two figures of
`Kamada. We see a perspective view and a bottom/down view. And as Dr.
`Shealy, Petitioner’s expert, explained, and his testimony remains entirely
`unrebutted on these issues, the Kamada leads, which are highlighted in
`green, are tucked into cavities in the sidewall of Kamada’s face, and
`therefore, the space behind those leads, are the claimed lead receiving
`compartments, as can be seen on the figures in Slide Number 18. The
`compartments are, sort of, what are sitting behind the red circles there.
`Now, Patent Owner -- and I’m on Slide Number 10, seized on another
`one of Kamada’s figures from a different perspective, in particular, the
`perceptional view.
`JUDGE BENOIT: Counselor?
`MR. COLSHER: Yes, Your Honor.
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`JUDGE BENOIT: Could you go back to Slide 18, please.
`MR. COLSHER: Yes, Your Honor.
`JUDGE BENOIT: The Kamada housing, I noticed that you put up Dr.
`Sealy’s initial declaration, can you point to me where those arguments were
`made in the Petition. It starts about Page 20. I believe that he made more
`arguments about the leads being parked away in the declaration than what
`you put in your Petition.
`MR. COLSHER: Well, I think in the Petition itself we cited to each
`of these paragraphs that are shown on the screen. In particular, 54, 85, and
`266, and in particular in the Petition on Pages 20 and 21, 72 through 74, and
`78 through 79.
`And I do understand that there was a bit of confusion that was left
`based on the sectional view that we had used as an exemplary portion of the
`peripheral sidewall, which shows just one view; whereas the peripheral
`sidewall actually runs all the way around the reflector housing itself.
`JUDGE BENOIT: And so, you are telling me that you cited to the
`declaration, but you didn’t put all of these arguments into the Petition?
`MR. COLSHER: No, we would submit that we did put the arguments
`into the Petition itself, particularly explaining that the lead receiving
`compartments in the reflector housing, and these figures that you see on the
`screen, as well as the disclosure, we would submit are actually in the Petition
`itself. And then we clarified based on what appeared to be some confusion,
`in the reply.
`JUDGE BENOIT: Thank you for that explanation.
`MR. COLSHER: And so, if we turn back to Slide Number 10, and as
`I mentioned, Patent Owner focuses on the sectional view of the Kamada
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`figures. And so Patent Owner made two key errors in this. And now we
`only have Patent Owner’s counsel’s argument here. We have no expert
`testimony on the other side.
`First, Patent Owner assumed that the two areas highlighted in green in
`the slide, somehow constituted a significant discontinuity between the upper
`and the lower parts of the base in Kamada, such as the entire base cannot be
`set to be the claimed reflector housing with the peripheral sidewall formed
`therein.
`And then, further, Patent Owner assumed that Kamada’s leads were
`positioned over the lead receiving compartments in the peripheral sidewall,
`but that they were positioned where the yellow is highlighted on this slide.
`In other words, over the discontinuity.
`And we would submit that that is actually not correct based on the
`proper interpretation of Kamada.
`And so, on Slide Number 14, and as Dr. Shealy has clarified, the
`referenced sectional view that has been the focus of the issues here, is
`actually from the perspective from the front view. And so, it’s a cut-out of
`the front view.
`So, when you close that referenced sectional view, and you look at the
`front, the actual front of this, what you see is a reflector housing with a
`peripheral sidewall in blue, that extends entirely between the first and the
`second end faces. And that’s the side on which the lead receiving
`compartments are actually formed.
`And so, you can see in the slide that the alleged discontinuity does not
`actually extend to the front surface of Kamada’s peripheral sidewall such
`that it separates the upper and the lower portions, or that the leads lie over it.
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`And so, if we turn to Slide Number 15, we have on the screen, again,
`the sectional view, and this time we have the portions colored in orange,
`which is what Patent Owner had colored in green, but because we already
`used green, Dr. Shealy used orange in his further annotations.
`And what Dr. Shealy has explained, and what Kamada shows, is that
`the top -- the front view, and by extension, the sectional view, is actually 90
`degrees rotated from the right-side view.
`And so, if you rotate it, you can see the leads, which are highlighted in
`green, and those are the leads that are actually formed over the lead
`receiving compartment. And what the discontinuity that’s become at issue,
`is actually just a small hole, which is colored in orange. And notably, it’s
`not on the side in which the lead receiving compartments are actually
`formed.
`And just one final point on this is that -- and I’m on Slide Number 16
`-- is both parties’ experts on Patent Owner’s side, Mr. Credelle, and on
`Petitioner’s side, Dr. Shealy, agree that a small hole does not impact whether
`or not Kamada has a peripheral sidewall.
`And so, we would submit that based on the record evidence in this
`proceeding, that Kamada does, in fact, have a lead receiving compartment
`formed in its peripheral sidewall that extends from the first end face, to the
`second end face, as required by the claims.
`Now, if I shift to Slide Number 20, still talking about lead receiving
`compartments, but I’ll quickly talk about the Critelli Reference. And Patent
`Owner appears to take issue with Critelli’s disclosure of lead receiving
`compartments.
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`And on Slide Number 21, we can see Patent Owner’s position. And
`we understand Patent Owner’s position to be effectively a non-analogous art
`argument, and that Critelli is directed to a different art.
`Patent Owner has put no evidence to support that statement, and
`Petitioner, on the other hand, has the record evidence, including Dr. Shealy’s
`explanation thereof.
`And so, if we’re on Slide Number 22, we can see Dr. Shealy’s
`testimony, which remains unrebutted, talking about how Critelli discloses
`lead receiving compartments. And as you can see, the leads, which are
`colored in green, are actually formed into those lead receiving compartments
`in Figure 1 and Figure number 2.
`I’m on Slide Number 23, and we would note that the Board, in its
`Institution Decision, we think, credited Dr. Shealy’s testimony in this regard,
`in emphasizing that Petitioner, who we think properly relies Critelli for the
`limited purpose of the lead receiving compartments, and we’re relying on
`Okazaki, and similarly Takenaka, for the rest of the claim limitations, for
`example the reflector housing with the first and second pocket that has a
`peripheral sidewall.
`And we would note the Board that at this juncture there still is no
`expert testimony from Patent Owner to try to explain the teachings of
`Critelli as it’s sort of set forth.
`And that’s what we would submit hereto, that the record evidence
`shows that Critelli teaches or suggests the lead receiving compartments.
`Now, on Slide Number 24, we will shift to the Okazaki Reference,
`and the question here is whether --
`JUDGE BENOIT: Excuse me, Counselor.
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`MR. COLSHER: Yes Ma’am.
`JUDGE BENOIT: Before you shift to Okazaki, Patent Owner
`contends that there was a logical gap in your theory, the addition of the lead
`receiving compartments, that solution of Critelli it’s not tied to background
`problems that you raised. I don’t believe you addressed that in your
`argument.
`MR. COLSHER: Well, I was --
`JUDGE BENOIT: What's your answer to that?
`MR. COLSHER: I was planning to get to that in just a little bit when
`we were talking about the actual obviousness of combining Okazaki and
`Takenaka, but I’m happy to address that at this juncture.
`JUDGE BENOIT: Thank you.
`MR. COLSHER: And so, what we would say, and for example,
`shifting to Slide Number 33, is we have Dr. Shealy’s unrebutted testimony
`talking about why it would have been obvious to add lead receiving
`compartments to Okazaki’s peripheral sidewall, and Dr. Shealy and
`Petitioner made a similar argument with respect to Takenaka.
`And what Dr. Shealy did is he provided three primary reasons. So,
`you have to take the overall explanation in total. And one of the reasons was
`to protect the lead from external sources.
`And yes, there is some dispute, perhaps, over whether Critelli
`specifically teaches that, but there's not dispute that Kyowa, and you can see
`for example in Paragraph 6 on Slide Number 33, that Kyowa specifically
`teaches that. Its invention is designed to protect leads from outer forces in a
`similar manner.
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`So, we would submit that the record evidence as a whole certainly
`supports that point. But, of course, that’s not the only reason that Dr. Shealy
`put forth. There's also to, as Kyowa expressly teaches, to downsize the
`package, which can be important in these LED packages. And then
`additionally, to serve as a guide into which the lead electrodes are formed.
`JUDGE BENOIT: Thank you for that explanation. Also, before you
`get to Okazaki, I have a question on the Kamada Reference, and I don’t
`know whether you addressed it. I didn’t see it in your slides, but I have a
`question about your arguments of the reflector housing.
`And I leave it to you if you want to address that later, but I did want to
`mention it while we were talking about Kamada a few minutes ago.
`MR. COLSHER: And just so I understand, the question is concerning
`whether the housing in Kamada is a reflector housing?
`JUDGE BENOIT: Yes, your argument on Page 73.
`MR. COLSHER: And I think that I don’t think we've seen any -- I
`think the argument on 73 at this point remains unrebutted. I haven’t seen
`anything in this proceeding where Patent Owner was challenging that
`Kamada’s reflector housing with the angled, the sidewalls, would be
`understood to actually be, to act as a reflector, to reflect the light.
`JUDGE BENOIT: Right, and without shifting the burden to Patent
`Owner, and I know we are focusing on the dispute today, that’s the most
`effective procedures for the hearing and using that time, but I did have a
`question about your argument on the reflector housing, because your
`argument seems to be that one of ordinary skill would have understood that
`the inner surfaces of the face, most likely would have conformed of the
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`reflective material angle as they are. And it’s something that is most likely
`to be a claim elements issue.
`MR. COLSHER: This is actually the reason why Petitioner put forth
`an obviousness challenge as opposed to an anticipation challenge because
`Kamada does not expressly say that it’s reflector housing -- the housing as
`angled would have been reflector housing.
`But what we have is Dr. Shealy’s unrebutted testimony from the
`perspective of one of ordinary skill explaining that well, one, that’s the
`typical purpose of these cavities, and that’s why you have these angles.
`And then additionally, supported by other state of the art references
`that are in this proceeding explaining that one of skill would have, in fact,
`understood that that housing would, in fact, be packed as a reflector.
`I mean, it’s by the virtue of the fact that it’s angled, and there's lights
`coming off of it, it will reflect light, I mean, that is the underlying purpose,
`as Dr. Shealy has explained.
`JUDGE BENOIT: Thank you for that explanation.
`MR. COLSHER: So, if it is okay with Your Honors, I will shift back
`to talking a little bit about Okazaki, and there we’re going to be talking
`about the issues pertaining to whether Okazaki has a first and a second
`pocket by virtue of the whole.
`And so, if we look to Slide Number 26, what we see is Patent Owner’s
`position. And Patent Owner has taken the position, based on this exemplary
`Figure 4, that a small hole between the upper and the lower portion of a
`reflector housing would mean that it cannot be a pocket because the pocket
`or cavity must be an area that’s enclosed on all but one side.
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`So, inherent in Patent Owners argument, we see a claim construction
`argument requiring, indeed, as it says on Slide Number 26, citing to Patent
`Owner’s response on Page 11 saying that, the pocket or cavity is an area
`closed on all but one side.
`We think that Your Honors were correct in the Institution Decision
`when you rejected that. And we also think that it was correct when the
`Board, in the Final Written Decision, in IPR2018-00522 -- excuse me, only
`two -- 00522, the 522 IPR, involving the same patent, the same claims,
`construed pocket or cavity to mean a partially enclosed space. And we
`would submit that consistent with that construction that Okazaki has the two
`pockets or cavities.
`JUDGE BENOIT: Counselor, you have not taken the position up
`until this point in the proceeding here, is that correct?
`MR. COLSHER: We haven’t sought it an expressed construction.
`We’ve been looking to what we sort of viewed as the plain and ordinary
`meaning. But we would view that the Board’s construction in the 522 IPR
`to be consistent with that.
`JUDGE BENOIT: Is there evidence of the ordinary meaning of
`pocket or cavity?
`MR. COLSHER: We would submit that Dr. Shealy, Petitioner’s
`expert, has explained, both in his initial declaration, as well as in deposition,
`you know, questions from Patent Owner counsel -- and I’m on Slide Number
`27 -- explaining that a pocket or a cavity is a compartment that could
`encompass a small hole.
`In his view, in his expert opinion a small hole does not render a
`pocket or a cavity a non-pocket or a cavity.
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`JUDGE BENOIT: But there's not definition other than a pocket does
`not include what a hole – not what a pocket or cavity is.
`MR. COLSHER: No, but if we look to, in the -- I think at this point,
`if the record evidence, and you know, we would submit that consistent with
`the construction of the ’522 proceeding, that pocket or cavity is simply an
`enclosed on, or a partially enclosed space. And we would note that, for
`example, that the lead receiving compartment that we were talking about
`earlier, that Element Number 52 in the Patent, that only has a, you know,
`was enclosed on, you know, what, two or three sides, is also referred to
`expressly in the ’087 Patent as a cavity.
`And so, we would submit that that is consistent with this, and the
`record evidence would show that.
`JUDGE BENOIT: Thank you.
`JUDGE DOUGAL: So, in Okazaki, it discusses that channel, that
`area has kind of a singular item. Right, I mean, it’s cross-hatched all the
`same in the lead, and then we have Dr. Shealy’s testimony as to how he feels
`that it would be two cavities -- do we have any other evidence that would
`consider this type of a design to be multiple cavities, or compartments?
`MR. COLSHER: At this juncture, what we have is the teachings of
`Okazaki as explained by Dr. Shealy.
`JUDGE DOUGAL: Okay, thank you.
`MR. COLSHER: And so, I’m on Slide Number 29, and I already
`briefly touched on Okazaki and combining it with Critelli, Kamada, or
`Kyowa, so I won't touch on that again, unless Your Honors have questions --
`JUDGE BENOIT: I have a question.
`MR. COLSHER: Oh, sure.
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`JUDGE BENOIT: About Dr. Shealy’s deposition, Patent Owner
`noted in this deposition that Dr. Shealy agreed that the resident 7 is a single
`mass of cured resin. Doesn’t that undercut his testimony somewhat if that’s
`two different cavities?
`(9:37:37 am, off the record, power issue)
`(9:38:17 am, on the record)
`MR. COLSHER: Okay, sorry.
`JUDGE DOUGAL: That’s all right. Whenever you're ready.
`MR. COLSHER: Thank you. To attempt to answer that question, I
`don’t think there's anything that restricts in the ’087 Patent, or otherwise,
`that a pocket or cavity couldn’t be filled with the same material. So, we
`would submit that that is not actually in consistence with his testimony in
`that regard.
`And so, we were touching earlier on Okazaki and combining it with
`Kamada, Critelli, or Kyowa and I won't belabor those points, but I do want
`to make one point with respect to Takenaka.
`I’m on Slide Number 35 at the moment, and Patent Owner took a
`similar position with respect to both combining Takenaka with the lead
`receiving compartments, or Okazaki with the lead receiving compartments.
`And, you know, it has not offered any expert testimony to rebut Dr. Shealy,
`so that testimony at this point stands unrebutted. And, in fact, Patent Owner
`has not actually questioned Dr. Shealy on any of his testimony in this
`respect.
`Now, with respect to Takenaka, Patent Owner offers one additional
`argument, and that’s with respect to the metal body eight that is inserted into
`the second pocket of Takenaka. And, Patent Owner has argued that the
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`metal body eight was served to protect the lead frames from damage so
`there's no reason that one would have looked to add protection, because it’s
`already there.
`And so, we would submit that the record evidence actually would
`show otherwise. Counsel’s hypothetical doesn’t cite to any portion of
`Takenaka; doesn’t talk about any, you know, has no evidentiary support
`whatsoever.
`But we think importantly, and I’m on Slide Number 38, as to this
`particular argument, we would say -- we would submit that it’s wrong for
`several reasons.
`First, it addresses only one of the three primary reasons that Dr.
`Shealy put forth as to why you would add eight receiving compartments, and
`in fact, it just talks about the protection aspect itself.
`Second, Patent Owner, as I mentioned, provides no citation of
`evidence to support its theory. Takenaka discloses that its metal body eight
`is designed to act as a heat sink and nowhere does it mention protecting
`leads as we heard theorize.
`And third, it’s undisputed that lead receiving compartments, such as
`those at Kyowa, which you can see on Slide Number 38, help protect lead
`from external forces regardless of whether there's a second pocket, or
`whether that second pocket is empty or full, such as with a heat sink.
`And of note, Kyowa specifically explains that using its lead receiving
`compartments help to prevent influence of outer force, even though there is
`no second pocket, and like Takenaka, Kyowa’s leads are inserted into a
`flush, or an almost flush state. And then the leads are bent around, like the
`housing in Kyowa, to the same horizontal height as the housing itself.
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`And so, by extension, if you look to Kyowa’s express teachings, there
`is, in fact, a reason why you would add that to Takenaka in order to protect
`leads. You know, whether it’s top to bottom or left to right. So, we would
`submit that the record evidence actually shows that. This theory is both
`unsupported and incorrect.
`And I’ll briefly touch now -- and I’m on Slide Number 39 -- on a
`handful of the issues concerning the Patent claims.
`And as I mentioned, Patent Owner has taken the position that
`Petitioner has not provided sufficient evidence to meet its burden. There's
`no real dispute that any of these claims add anything novel or non-obvious,
`and we appreciate that Petitioner has the burden. But we think that we have
`met that burden, including the unrebutted testimony of Dr. Shealy, as well as
`the record evidence that has been put forth.
`So, if we look to Slide Number 40, and what we see is Patent Owner’s
`position with respect to Claim 2 and the relative portions. And Patent
`Owner has argued -- and we’re talking about the Takenaka Reference -- that
`Takenaka never discloses any dimensions or other information that allowed
`one of skill to draw any fact-based collusions thereof; so, therefore, we can't
`tell if the relative dimensions are met.
`But what we actually have is Dr. Shealy’s unrebutted testimony
`explaining how one of ordinary skill in the art would have understood
`Takenaka’s disclosure in its figures, as well as the specification describing
`those figures, including that you preferredly make the volume of the purple
`portion -- that you could see on the screen, the second pocket, in which the
`metal body is inserted -- as large as possible to result in improved heat
`dissipation.
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`He then explained there, firm, that while they are not necessarily
`drawn to scale, there's enough there that you can draw the inferences that it
`would meet the relative dimensions.
`And this testimony is unrebutted and we would also note, as we did in
`the Petition, that we think this case is analogous to Ex Parte Sato where,
`although the drawings were not necessarily drawn to scale, they were of
`sufficient detail and precision when you considered the actual written
`description to draw some conclusions regarding relative size.
`And, interestingly enough, Sato, just like Takenaka, was concerned
`with increasing heat dissipation from, you know, generated by leads.
`Quickly, I will touch on the J-shaped at issue -- and I’m on Slide
`Number 44 --
`JUDGE BENOIT: Counselor, could we stick on Slide 41 --
`MR. COLSHER: Of course, Your Honor.
`JUDGE BENOIT: I’ll try to ask my questions quicker before you
`move on. So, how do we know that it’s Dr. Shealy right in terms of the
`50%. Part of the testimony was it would mean as large as possible, and why
`is it not 40% or 45%. How do we know that 50% is correct?
`MR. COLSHER: Well, I think there are sort of two points to that.
`Now, the relative dimensions are actually to the addition of the second
`pocket and the ead receiving compartment.
`So, Dr. Shealy was only -- with respect to talking about whether the
`relative dimensions are met specifically with a separate pocket, he was going
`above and beyond what's actually necessary to show Claim Number 2
`obvious.
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`And additionally, it really comes down to the fact that we’re looking
`at Dr. Shealy’s unrebutted tes
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