Trials@uspto.gov
`571-272-7822
`
`Paper 28
`Date: December 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NICHIA CORPORATION,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`IPR2018-01165
`Patent 7,524,087 B1
`
`
`
`
`
`
`
`
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`

`

`IPR2018-01165
`Patent 7,524,087 B1
`
`I. INTRODUCTION
`In this inter partes review instituted pursuant to 35 U.S.C. § 314,
`Nichia Corporation (“Petitioner”) challenges the patentability of claims 1–19
`of U.S. Patent No. 7,524,087 B1 (Ex. 1001, “the ’087 patent” or “the
`challenged patent”), owned by Document Security Systems, Inc. (“Patent
`Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For reasons discussed herein, Petitioner has shown by a
`preponderance of the evidence that claims 1 and 6–8 are unpatentable but
`has not shown that claims 2–5 and 9–19 are unpatentable.
`A. Procedural History
`Petitioner filed a Petition requesting inter partes review of the
`challenged claims. Paper 1 (“Pet.” or “Petition”). Patent Owner filed a
`Preliminary Response to the Petition. Paper 10. On December 11, 2018,
`after considering the information presented in the Petition and the
`Preliminary Response, we instituted an inter partes review of the challenged
`claims on all grounds asserted by Petitioner. Paper 11 (“Dec.”).
`Subsequent to the Decision on Institution, Patent Owner filed a
`Response (Paper 15; “PO Resp.”), to which Petitioner filed a Reply
`(Paper 18; “Pet. Reply”). In response, Patent Owner filed a Sur-reply (Paper
`21; “PO Sur-reply”). A hearing was held on August 28, 2019. See Paper 27
`(“Tr.”).
`
`B. Real Parties in Interest
`Petitioner identifies Nichia Corporation and Nichia America
`Corporation as real parties in interest. Pet. 1. Patent Owner identifies
`Document Security Systems, Inc. as the sole patent owner and real party in
`interest. Paper 6, 2.
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`IPR2018-01165
`Patent 7,524,087 B1
`
`C. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 2–3; Paper 6 (Patent Owner’s Mandatory
`Notices). The parties identify the following district court cases: Document
`Security Systems, Inc. v. Seoul Semiconductor Co., No. 2:17-cv-00308 (E.D.
`Tex.) (dismissed without prejudice); Document Security Systems, Inc. v.
`Seoul Semiconductor Co., No. 8:17-cv-00981 (C.D. Cal.); Document
`Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-04263 (C.D. Cal.);
`Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-00309 (E.D.
`Tex.) (dismissed without prejudice); Document Security Systems, Inc. v.
`Everlight Electronics Co. et al., No. 2:17-cv-00310 (E.D. Tex.) (dismissed
`without prejudice); Document Security Systems, Inc. v. Everlight Electronics
`Co. et al., No. 2:17-cv-04273 (C.D. Cal.); Document Security Systems, Inc.
`v. OSRAM GmbH, No. 2:17-cv-05184 (C.D. Cal.); Document Security
`Systems, Inc. v. Lite-On, Inc., No. 2:17-cv-06050 (C.D. Cal.); and Document
`Security Systems, Inc. v. Nichia Corporation et al., No. 2:17-cv-08849 (C.D.
`Cal.). Pet. 2; Paper 6, 2–3.
`The parties also indicate that inter partes review of the ’087 patent
`was requested in three other cases: IPR2018-00522, IPR2018-01221, and
`IPR2018-01226. Pet. 2–3; Paper 6, 3–4. Patent Owner further identifies
`petitions requesting inter partes reviews of different patents. Paper 6, 3–4.
`On July 22, 2019, the Board found claims 1, 6–8, 15, and 17 of the
`’087 patent unpatentable. Seoul Semiconductor Co. v. Document Sec. Sys.,
`Inc., IPR2018-00522, Paper 34 at 31 (PTAB July 22, 2019) (Final Written
`Decision); see also Everlight Elecs., Co. v. Document Sec. Sys., Inc.,
`IPR2018-01226, Paper 15 (PTAB September 27, 2018) (decision instituting
`
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`IPR2018-01165
`Patent 7,524,087 B1
`inter partes review and granting Petitioner’s motion for joinder with Seoul
`Semiconductor Co. v. Document Sec. Sys., Inc., IPR2018-00522). Patent
`Owner appealed the Board’s Final Written Decision on September 23, 2019.
`In another case, the Board declined to institute inter partes review of the
`’087 patent. Cree, Inc. v. Document Sec. Sys., Inc., IPR2018-01221, Paper 9
`at 4 (PTAB November 14, 2018).
`D. The ’087 Patent
`The ’087 patent generally relates to an optical device with a light
`emitting diode (“LED”) die, such as for use in a large display panel. Ex.
`1001, code (57) (“Abstract”), 1:5–8, 50–52. For example, a stadium display
`may include numerous small light emitting elements, arranged in an array
`and consisting of an LED die mounted to a plastic housing. Id. at 1:5–8.
`The challenged patent indicates that “many plastics used in LED housings
`are susceptible to moisture absorption from the environment which can
`cause the LED in the housing to fail.” Id. at 1:8–11. In an exemplary
`embodiment, LEDs are mounted in a housing and encapsulated for
`protection.
`Figures 1 and 2 of the ’087 patent are reproduced below:
`
`
`Figures 1 and 2, shown above, depict top and bottom perspective
`views of an exemplary optical device. Id. at 1:25–28. The top perspective
`
`4
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`IPR2018-01165
`Patent 7,524,087 B1
`view (shown in Figure 1, above left) and the bottom perspective view
`(shown in Figure 2, above right) of optical device 10 show reflector
`housing 20 with top 30 (also referred to as a first end face) and bottom 34
`(also referred to as a second end face). Id. at 2:12–14. Reflector housing 20
`includes peripheral wall 26 (also referred to as a sidewall) extending
`between top (or first end face) 22 and bottom (or second end face) 24. Id. at
`2:12–17. First cavity 30 (also referred to as a pocket) is formed in top (first
`end face) 22, and second cavity 34 is formed on bottom (second end
`face) 34. Id. at 2:17–23. Light sources—LED dies 12, 14, 16—are located
`in top cavity (pocket) 30 and mounted on electrically conductive lead
`frame 32. Id. at 2:17–21. Lead frame 32 includes leads 36, 40, 42, 44, 46,
`50. Id. at 2:35–37. Lead receiving compartment 52 is formed in the exterior
`of the peripheral wall (sidewall) 26. Id. at 2:65–67. Each of the leads is
`positioned at a lead receiving compartment in reflector housing 20. Id. at
`2:38–39, 64–67.
`First cavity (pocket) 30 formed in top (first end face) 22 of reflector
`housing 20 may be filled with encapsulant 64 to cover and protect LED
`dies 12, 14, and 16. Id. at 3:26–28. The patent indicates that “a
`substantially transparent silicone material may be used as an encapsulant.”
`Id. at 3:28–30.
`
`E. Illustrative Claims
`Claims 1, 9, and 15 are independent. Claim 1, reproduced below, is
`illustrative of the claimed subject matter:
`1. An optical device comprising:
`a lead frame with a plurality of leads;
`a reflector housing formed around the lead frame, the reflector
`housing having a first end face and a second end face and a
`peripheral sidewall extending between the first end face and the
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`IPR2018-01165
`Patent 7,524,087 B1
`second end face, the reflector housing having a first pocket with
`a pocket opening in the first end face and a second pocket with a
`pocket opening in the second end face;
`at least one LED die mounted in the first pocket of the reflector
`housing;
`a light transmitting encapsulant disposed in the first pocket and
`encapsulating the at least one LED die; and
`wherein a plurality of lead receiving compartments are formed in
`the peripheral sidewall of the reflector housing.
`F. Evidence
`Petitioner relies on the following six references in the asserted
`grounds of unpatentability in its Petition:
`U.S. Patent No. 6,653,661 B2, issued November 25, 2003, filed
`in the record as Exhibit 1004 (“Okazaki”);
`U.S. Patent No. 4,959,761, issued September 25, 1990, filed in
`the record as Exhibit 1005 (“Critelli”);
`Japanese Design Patent Registration No. 1176348, issued
`June 16, 2003, filed in the record as Exhibit 1006, which also
`includes a certified translation (“Kamada”);
`Japanese Patent Application Publication No. 2001 118868,
`published April 27, 2001, filed in the record as Exhibit 1010,
`which also includes a certified translation (“Kyowa”);
`U.S. Patent Application Publication No. US 2008/0041625 A1,
`published February 21, 2008, filed August 16, 2006, filed in the
`record as Exhibit 1007 (“Cheong”);
`U.S. Patent Application Publication No. US 2004/0135156 A1
`published July 15, 2004, filed in the record as Exhibit 1008
`(“Takenaka”).
`Pet. 4–5. Petitioner asserts that each of the references is prior art to the
`challenged claims and that the references were not cited during prosecution
`of the challenged patent. Pet. 9–10.
`
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`IPR2018-01165
`Patent 7,524,087 B1
`G. Instituted Grounds of Unpatentability
`We instituted inter partes review of claims 1–19 based on all of the
`grounds of unpatentability asserted in the Petition. Dec. 65. The sixteen
`instituted grounds are as follows:
`Claim(s)
`Reference(s)
`35 U.S.C. §
`Challenged
`Okazaki, Critelli
`1032
`1, 6, 9–19
`Okazaki, Kamada
`103
`1, 6, 9–19
`Okazaki, Kyowa
`103
`1, 6, 9–19
`Okazaki, Critelli, Cheong
`103
`7, 8
`Okazaki, Kamada, Cheong
`103
`7, 8
`Okazaki, Kyowa
`103
`7, 8
`Takenaka, Critelli
`103
`1–3, 5, 6, 9–19
`Takenaka, Kamada
`103
`1–3, 5, 6, 9–19
`Takenaka, Kyowa
`103
`1–3, 5, 6, 9–19
`Takenaka, Critelli, Cheong
`103
`4, 7, 8
`Takenaka, Kamada, Cheong
`103
`4, 7, 8
`Takenaka, Kyowa, Cheong
`103
`4
`Takenaka, Kyowa
`103
`7, 8
`Kamada
`103
`1, 6, 9–19
`Kamada, Kyowa
`103
`7, 8
`Kamada, Cheong
`103
`7, 8
`Dec. 5–7, 65; see Pet. 4–5 (identification of asserted grounds).
`II. ANALYSIS
`A. Legal Standards
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`
`Ground1
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`
`
`1 For clarity we include Petitioner’s identifiers for each asserted ground.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
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`IPR2018-01165
`Patent 7,524,087 B1
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2017). “In an
`[inter partes review], the petitioner has the burden from the onset to show
`with particularity why the patent it challenges is unpatentable.” Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35
`U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter
`partes review to identify how the challenged claim is to be construed and
`where each element of the claim is found in the prior art patents or printed
`publications relied on). This burden never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`partes review). Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
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`IPR2018-01165
`Patent 7,524,087 B1
`of ordinary skill in the art; and (4) objective evidence of nonobviousness. 3
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`Petitioner contends the level of ordinary skill in the art is apparent
`from the cited art and relies on declaration testimony of James Richard
`Shealy, Ph.D. Pet. 8–9 (citing Ex. 1003 ¶ 24). In the Decision on
`Institution, we adopted Petitioner’s formulation “that one of ordinary skill in
`the art ‘would have had at least a B.S. in mechanical or electrical
`engineering or a related filed, and four years’ experience designing LED
`packages,” but that “a higher level of education or skill could make up for
`less work experience or more work experience could make up for less
`education.” Dec. 9 (quoting Pet. 8–9). We also noted in the Decision on
`Institution that “Patent Owner does not dispute Petitioner’s proposed level of
`ordinary skill.” Dec. 9. We indicated in our Decision on Institution that we
`were persuaded, on that preliminary record, that Petitioner’s proposal was
`consistent with the problems and solutions in the ’087 patent and prior art of
`record. Dec. 9
`Following institution, neither Petitioner nor Patent Owner objected to
`this determination. Because the proposed level of ordinary skill is consistent
`with the problems and solutions in the prior art of record, we maintain this
`determination of the level of ordinary skill in the art for purposes of this
`Final Written Decision. 4 See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed.
`Cir. 1995).
`
`
`3 Patent Owner has not offered objective evidence of non-obviousness. See
`generally PO Resp.; PO Sur-reply.
`4 We note that the problems and solutions in the prior art would also support
`a finding that one of ordinary skill in the art would have had at least a B.S. in
`
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`IPR2018-01165
`Patent 7,524,087 B1
`
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent. See 37 C.F.R. § 42.100(b); see also
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming
`that USPTO has statutory authority to construe claims according to 37
`C.F.R. § 42.100(b)).5
`Under the broadest reasonable construction standard, claim terms are
`presumed to have their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In addition, the broadest reasonable
`construction of a claim term cannot be so broad that the construction is
`
`
`mechanical or electrical engineering or a related filed, and two years’
`experience designing LED packages, as found, based on a different record
`and without objection from Patent Owner, in a decision in IPR2018-00522.
`IPR2018-00522, Paper 34 at 7–8 (Final Written Decision).
`5 The Office changed the claim construction standard used in inter partes
`review proceedings. 37 C.F.R. § 42.100(b) (2019). As stated in the Federal
`Register notice, however, the new rule applies only to petitions filed on or
`after November 13, 2018. See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (stating “[t]his
`rule is effective on November 13, 2018 and applies to all IPR, PGR and
`CBM petitions filed on or after the effective date”). The Petition was filed
`on May 25, 2018 (Paper 4) and, therefore, the new rule does not impact this
`matter.
`
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`IPR2018-01165
`Patent 7,524,087 B1
`unreasonable under general claim construction principles. Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other
`grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
`banc) (“A construction that is unreasonably broad and which does not
`reasonably reflect the plain language and disclosure will not pass muster.”
`(internal quotation marks and citation omitted)). Furthermore, only claim
`terms that are in controversy need to be construed and only to the extent
`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs. in the context of an inter partes review).
`Petitioner does not propose express constructions for any claim terms.
`Pet. 9. Petitioner, however, contends that the challenged patent defines
`“pocket,” recited in independent claim 1, and “cavity,” recited in
`independent claims 9 and 15, to be synonymous. Pet. 9 (quoting Ex. 1001,
`2:16) (“a first cavity 30 (also referred to as a pocket)”). Patent Owner
`agrees. PO Resp. 11 (“The ’087 patent uses ‘pocket’ and ‘cavity’
`synonymously.”).
`In our Decision on Institution, we agreed with the parties that, based
`on the unambiguous description in the specification, the challenged patent
`defines the claim terms “pocket” and “cavity” to be interchangeable and,
`therefore, the terms have the same meaning. Dec. 10–11 (citing Ex. 1001,
`2:18; Paulsen, 30 F.3d at 1480). Neither party objected to this
`determination. Based on the entirety of the trial record, we maintain our
`determination that the challenged patent defines the claim terms “pocket”
`and “cavity” to be interchangeable and, therefore, the terms have the same
`
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`IPR2018-01165
`Patent 7,524,087 B1
`meaning. See Ex. 1001, 2:18 (“a first cavity 30 (also referred to as a
`pocket)”). 6
`In addition, to the extent it is necessary, we discuss claim
`interpretation in the context of analyzing the asserted grounds.
`D. Obviousness Based Takenaka with Other References
`As noted previously, Petitioner contends the subject matter of
`claims 1–3, 5, 6, and 9–19 would have been obvious (i) over Takenaka and
`Kyowa (Ground 9), (ii) over Takenaka and Critelli (Ground 7), and (iii) over
`Takenaka and Kamada (Ground 8). In addition, Petitioner contends the
`subject matter of claims 4, 7, and 8 would have been obvious (i) over
`Takenaka, Critelli, and Cheong (Ground 10) and (ii) over Takenaka
`Kamada, and Cheong (Ground 11). Petitioner also contends the subject
`matter of claims 7 and 8 would have been obvious over Takenaka and
`Kyowa (Ground 13) and the subject matter of claim 4 would have been
`obvious over Takenaka, Kyowa, and Cheong (Ground 12).
`Petitioner and Patent Owner both recognize that the independent
`claims share some substantially similar limitations. See, e.g., Pet. 29–30,
`37–38; PO Resp. 11–18. Petitioner sets forth charts comparing the
`
`
`6 This determination also was made in the Final Written Decision in
`IPR2018-00522. IPR2018-00522, Paper 34 at 9 (“In view of the above, we
`agree that the terms ‘pocket’ and ‘cavity’ are interchangeable and therefore
`have the same meaning.”). We acknowledge that, in the Final Written
`Decision in IPR2018-00522, the Board also accepted the construction
`proposed by Seoul Semiconductor, which is not a party in this case. Id. at
`9–10 (“We further construe ‘pocket’ and ‘cavity’ to mean a partially
`enclosed space as Petitioner’s proposal is consistent with the portions of the
`Specification that relate to these claim limitations.”). An express
`construction for ‘pocket’ and ‘cavity’ has not been proposed by either party
`in this case and is not necessary to this Decision.
`
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`IPR2018-01165
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`limitations in the independent claims. Pet. 29–30 (comparing limitations in
`independent claims 1 and 9), 37–38 (comparing limitations in independent
`claims 1 and 15). Petitioner relies on the same arguments with regard to
`similar limitations in the independent claims and asserts additional
`arguments for limitations that are not recited in claim 1. See, e.g., Pet. 29–
`31 (regarding claim 9), 36–39 (regarding claim 15). Patent Owner argues
`the independent claims together. PO Resp. 11–18.
`In its combination of Takenaka and Kyowa, Petitioner relies on
`Takenaka for most of the limitations in the independent claims (claims 1, 9,
`and 15), including a peripheral sidewall extended between two end faces of
`the reflector housing. Pet. 45–53, 59, 65. For the required lead receiving
`compartments formed (independent claims 1 and 9) or molded (independent
`claim 15) in the peripheral sidewall of the reflector housing, Petitioner relies
`on Critelli (Ground 7), Kamada (Ground 8), or Kyowa (Ground 9).
`Petitioner contends that modifying Takenaka’s peripheral sidewall to form
`lead receiving compartments taught by Kyowa would teach or suggest every
`limitation of the independent claims. Pet. 53–54, 59, 65.
`Patent Owner provides specific arguments that Petitioner’s assertions
`regarding claims 1–3, 5, 6, and 9–19 are insufficient (i) because Kyowa does
`not disclose or suggest lead receiving compartments formed in the peripheral
`sidewall of the reflector housing as required and (ii) because Petitioner does
`not identify sufficient reasons one of ordinary skill in the art would have
`combined Kyowa with Takenaka in the manner proposed by Petitioner. PO
`Resp. 34. In addition, specifically regarding claim 2, Patent Owner provides
`particular arguments that Takenaka does not disclose features recited in
`claim 2. PO Resp. 38. Patent Owner provides further specific arguments
`that Petitioner’s challenge against claims 12–14, 16, 18, and 19 are
`
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`IPR2018-01165
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`insufficient. PO Resp. 39 (claims 14 and 19), 40 (claims 12, 13, 16, and
`18). 7
`In our analysis of Petitioner’s grounds asserting Takenaka and other
`references, we first discuss Petitioner’s asserted grounds based on Takenaka
`and Kyowa and then address other grounds based on Takenaka asserted by
`Petitioner.
`
`1. Prior Art Disclosures
`a. Disclosure of Takenaka
`Takenaka is a U.S. patent application publication titled
`“Semiconductor Light Emitting Device and Fabrication Method Thereof.”
`Ex. 1008, code (54); Pet. 10 (asserting Takenaka is prior art). Figure 1 of
`Takenaka is reproduced below:
`
`
`Figure 1 depicts “a sectional view of a surface mount type LED.” Ex. 1008
`¶ 39. Figure 1 shows a semiconductor light emitting device that includes
`“LED chip 4, a first lead frame 1 on which LED chip 4 is mounted, a second
`
`
`7 Declaration testimony from Thomas L. Credelle (Exhibit 2018) submitted
`by Patent Owner opines regarding Petitioner’s asserted grounds based on
`Okazaki and addresses claim terms related to his opinion. Ex. 2018, 6–19.
`Dr. Credelle’s testimony does not address Petitioner’s asserted grounds
`based on Takenaka and Kyowa.
`
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`lead frame 2 electrically connected to LED chip 4 via a bonding wire 5 such
`as a gold wire, and a resin portion 3 surrounding the circumference of LED
`chip 4, and securing the lead frame.” Ex. 1008 ¶ 40. “First and second lead
`frames 1 and 2 are embedded in resin portion 3 by insert-molding.”
`Ex. 1008 ¶ 41. “Resin portion 3 is formed so as to surround the
`circumference of LED chip 4, bonding wire 5, and Ag paste 7. The inner
`side surrounded by resin portion 3 is sealed with epoxy resin 6 to protect the
`LED element portion.” Ex. 1008 ¶ 41.
`According to Takenaka, “[m]etal body 8 is held by resin portion 3
`functioning as a substrate.” Ex. 1008 ¶ 42. “Metal block 8 . . . is
`sandwiched between first and second lead frames 1 and 3 via resin
`portion 3.” Ex. 1008 ¶ 42. “Resin portion 3 located around LED chip 4 is
`formed of white resin having high reflectance for the purpose of reflecting
`efficiently the light emitted from LED chip 4.” Ex. 1008 ¶ 46.
`b. Disclosure of Kyowa
`Kyowa is a Japanese patent application publication titled “Surface
`mounted parts and their manufacturing method.” Ex. 1010, 9; see Pet. 10
`(asserting Kyowa is prior art to the challenged claims). Kyowa’s Figure 2 is
`reproduced below:
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`
`
`Kyowa’s Figure 2 is a plan view of an LED to which surface-mounting parts
`are applied. Ex. 1010 ¶ 13. Kyowa’s Figure 2 shows LED 10, which is a
`surface-mounting part, with light-emitting parts stored in resin package 11.
`Ex. 1010 ¶ 14. Light-emitting chips 17a, 17b, 17c are mounted to respective
`pad portions 14, 15, 16 by die bonding. Ex. 1010 ¶ 14. One of the
`electrodes of each light-emitting chip 17a, 17b, 17c is connected to common
`area part 19, and opening 12 is filled with transparent epoxy resin. Ex. 1010
`¶ 14. Lead frame 13 has outer leads 21, 22, 23 continuing to common area
`part 19. Ex. 1010 ¶ 15. Kyowa indicates external leads 21–24 of lead frame
`13 “are formed integrally with the package 11 in a state of being almost
`flush with the side and bottom surfaces of the package 11 (however, the side
`piece may not necessarily be in an almost flush state).” Ex. 1010 ¶ 16.
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`Kyowa’s Figure 3 is reproduced below:
`
`
`Kyowa’s Figure 3 depicts a section view taken along the III-III line of
`Figure 2. Ex. 1010 ¶ 13. Figure 3 shows LED 10 with light-emitting parts
`stored in resin package 11. Ex. 1010 ¶ 14.
`2. Independent Claim 1 and Dependent Claims 2–8
`a. Limitations of Claim 1
`In the asserted combination of Takenaka and Kyowa, Petitioner relies
`on Takenaka’s sectional view of a surface mount type LED that includes an
`LED chip shown in Takenaka’s Figure 1 for most of the limitations of the
`optical device recited in claim 1. Pet. 45–54; Ex. 1008 ¶ 39 (describing
`Fig. 1). Petitioner further relies on Kyowa’s LED packaging assembly for
`forming a plurality of lead receiving compartments in the peripheral sidewall
`of an LED housing, as required by claim 1. Pet. 23–25, 53–54; see Pet. 51
`(citing Kyowa contentions in Section VI.B.1[f]).
`For the reasons set forth below, we agree with Petitioner’s
`contentions, which are consistent with a plain reading of Takenaka’s
`disclosures. See, e.g., Pet. 45–54 (citing Ex. 1008 ¶¶ 41, 42, 46). Patent
`Owner does not contest with particularity Petitioner’s assertions regarding
`the teachings of Takenaka’s disclosures. See generally PO Resp. Even so,
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`the burden remains on the Petitioner to demonstrate by a preponderance of
`the evidence that the claims are unpatentable, including where each element
`of the claim is found in the prior art. 35 U.S.C. § 316(e); 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”); 37 C.F.R. § 42.1(d); 37 C.F.R. § 42.104(b) (requiring a
`petition for inter partes review to identify how the challenged claim is to be
`construed and where each element of the claim is found in the prior art
`patents or printed publications relied on).
`(1) “An optical device comprising:
`a lead frame with a plurality of leads”
`Neither party argues that the preamble “an optical device” limits
`claim 1. See, e.g., Pet. 45; PO Resp. 18. Without deciding that issue, we
`find that Takenaka’s device shown in Figure 1—a chip-type LED that emits
`light—discloses an optical device, as Petitioner contends in the alternative.
`Ex. 1008 ¶¶ 39–40; Ex. 1003 ¶ 167; see Ex. 1008 ¶ 2; Pet. 45 (citing Ex.
`1008 ¶ 2; Ex. 1003 ¶ 167).
`Petitioner contends that the recited “a lead frame with a plurality of
`leads” reads on Takenaka’s lead frames 1 and 2. Petitioner’s annotation of
`Takenaka’s Figure 1 is reproduced below:
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`Pet. 46. Takenaka’s Figure 1 depicts “a sectional view of a surface mount
`type LED” (Ex. 1008 ¶ 39), and Petitioner annotates Takenaka’s first and
`second lead frames 1 and 2 shown in Takenaka’s Figure 1 in green (Pet. 45–
`46).
`
`Based on a plain reading of Takenaka’s description that “[f]irst and
`second lead frames 1 and 2 embedded in resin portion 3 by insert-molding,”
`we find that Takenaka’s first and second lead frames 1 and 2 teach the
`recited “lead frame with a plurality of leads.” Ex. 1008 ¶ 41; see Pet. 45–46
`(citing Ex. 1008 ¶ 41; Ex. 1003 ¶ 168).
`(2) “a reflector housing formed around the lead frame,
`the reflector housing having a first end face and
`a second end face and a peripheral sidewall extending
`between the first end face and the second end face”
`Petitioner contends that Takenaka’s resin portion 3 corresponds to the
`recited “reflector housing.” Pet. 47 (“Takenaka’s resin portion 3 (which
`corresponds to the claimed ‘reflector housing’)”); see Pet. 46–47. Petitioner
`annotates Takenaka’s Figure 1 a second time, which is set forth below:
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`Pet. 47. Takenaka’s Figure 1 depicts “a sectional view of a surface mount
`type LED” that includes resin portion 3 (Ex. 1008 ¶ 39). In the annotation
`presented immediately above, Petitioner depicts in red resin portion 3 shown
`in Takenaka’s Figure 1, and Petitioner adds red circles to highlight
`Takenaka’s sidewalls. Pet. 47. Petitioner also annotates the uppermost
`portion of resin portion 3 shown in Takenaka’s Figure 1 as the “top of resin
`portion 3” and the bottommost portion of resin portion 3 as the “bottom of
`resin portion 3.” Pet. 46. Petitioner circles in red the rightmost side and the
`leftmost sides of the sectional view of the semiconductor LED shown in
`Takenaka’s Figure 1.
`Based on a plain reading of Takenaka’s description that “[f]irst and
`second lead frames 1 and 2 are embedded in resin portion 3 by insert-
`molding,” we find that Takenaka teaches a “housing formed around the lead
`frame,” as recited in claim 1. Ex. 1008 ¶ 41; see Pet. 46–47 (citing Ex. 1008
`¶ 41; Ex. 1003 ¶ 170). Furthermore, based on Takenaka’s description that
`“[r]esin portion 3 located around LED chip 4 is formed of white resin having
`high reflectance for the purpose of reflecting efficiently the light emitted
`from LED chip 4,” we find Takenaka teaches “a reflector housing,” as
`recited in claim 1. Ex. 1008 ¶ 46; Pet. 46–47 (citing Ex. 1008 ¶ 46;
`Ex. 1003 ¶ 170).
`In addition, based on Petitioner’s mapping of Takenaka’s resin
`portion 3 and lead frames to the recited reflector housing and lead frame, we
`agree with Petitioner that the top and bottom of resin portion 3 identified by
`Petitioner corresponds to the recited first and second end faces and that
`either of the LED sidewalls depicted in Takenaka’s Figure 1 (circled in red
`by Petitioner) correspond to the recited “peripheral sidewall extending
`between the first end face and the second end face.” Each sidewall
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`identified by Petitioner extends from the top portion to the bottom portion of
`resin portion 3.
`For these reasons, we agree with Petitioner that Takenaka teaches or
`suggests “a reflector housing formed around the lead frame, the reflector
`housing having a first end face and a second end face and a peripheral
`sidewall extending between the first end face and the second end face,” as
`recited in claim 1.
`(3) “the reflector housing having a first pocket with a pocket
`opening in the first end face and a second pocket with
`a pocket opening in the second end face”
`Petitioner additionally annotates Takenaka’s Figure 1 to identify how
`Takenaka teaches “the reflector housing having a first pocket with a pocket
`opening in the first end face and a second pocket with a pocket opening in
`the second end face,” as recited in claim 1. Pet. 47–49. Petitioner’s third