`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2018-01166
`Patent 7,256,486
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`A. 
`
`B. 
`
`Claims 1-6 Are Not Rendered Obvious by the Challenges Based on
`Primary References Nakajima, Rohm, and Matsushita ........................ 3 
`
`Claim 6 Further Distinguishes from the Nine (9) Challenges Based on
`the Primary References ......................................................................... 5 
`
`II. 
`
`THE CHALLENGED CLAIMS AND CLAIM CONSTRUCTION .............. 7 
`
`C. 
`
`D. 
`
`1. 
`
`2. 
`
`Claim Listing ......................................................................................... 7 
`
`Petitioner’s Proposed Claim Constructions Are Wrong ....................... 9 
`
`“major surface” .............................................................................. 10 
`
`“metallized … major surface” ........................................................ 12 
`
`III.  THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 14 
`
`A.  Grounds 16-24 Fail to Render Claim 6 Obvious ................................ 14 
`
`1. 
`
`2. 
`
`3. 
`
`Petitioner Failed to Prove Unpatentability of Claim 6 Based on
`Jochym ........................................................................................... 16 
`
`Petitioner Fails to Reconcile Technical Differences Between
`Nakajima and Jochym, Which Are Non-Analogous...................... 19 
`
`Petitioner Cannot Remedy Its Deficient Challenges in Its Reply .. 23 
`
`B. 
`
`Grounds 1-3 Fail .................................................................................. 24 
`
`1. 
`
`2. 
`
`Petitioner’s Ground 1 Challenge Against Claim 1 Fails Because
`Secondary Reference Weeks Does Not Disclose or Suggest a Light
`Emitting Diode Having a Metallized Bottom Major Surface ........ 24 
`
`Petitioner’s Grounds 1-3 Challenges Against Claim 1 Fail Because
`Petitioner Has Not Provided Evidence Supporting Why a POSITA
`Would Have Substituted the LEDs From Any of The Secondary
`References in Place of Nakajima’s LED........................................ 26 
`
`- i -
`
`

`

`3. 
`
`4. 
`
`5. 
`
`6. 
`
`Petitioner’s Grounds 2-3 Challenges Fail Because Neither Kish
`Nor Edmond Teaches or Suggests a “Metallized Top Major
`Surface of the LED” As Recited in Claim 2 .................................. 28 
`
`Petitioner’s Grounds 1-3 Challenges Against Claim 2 Fail Because
`Petitioner Has Not Provided Evidence Supporting Why a POSITA
`Would Have Substituted the LEDs From Any of The Secondary
`References in Place of Nakajima’s LED........................................ 30 
`
`Petitioner’s Characterization of Nakajima Lacks Support ............ 33 
`
`Petitioner’s Ground 1 Challenge Against Claim 4 Erroneously
`Argues that Claim 4’s Features are Not Entitled to Patentable
`Weight ............................................................................................ 37 
`
`C. 
`
`Grounds 4-6 Fail .................................................................................. 38 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Petitioner’s Grounds 4-6 Against Claim 1 Fail Because Petitioner
`Did Not Identify Which Embodiments in Weeks, Kish, and
`Edmond Allegedly Disclose a Light Emitting Diode Having a
`Metallized Bottom Major Surface .................................................. 38 
`
`Petitioner’s Ground 4 Challenge Against Claim 1 Fails Because
`Secondary Reference Weeks Does Not Disclose or Suggest a Light
`Emitting Diode Having a Metallized Bottom Major Surface ........ 39 
`
`Petitioner’s Grounds 4-6 Challenges Against Claim 1 Fail Because
`Petitioner Has Not Provided Evidence Supporting Why a POSITA
`Would Have Substituted the LEDs From Any of The Secondary
`References in Place of Rohm’s LED ............................................. 41 
`
`Petitioner’s Grounds 5-6 Challenges Fail Because Neither Kish
`Nor Edmond Teaches or Suggests a “Metallized Top Major
`Surface of the LED” As Recited in Claim 2 .................................. 43 
`
`Petitioner’s Grounds 4-6 Against Claim 2 Fail Because Petitioner
`Has Not Provided Evidence Supporting Why a POSITA Would
`Have Substituted the LEDs From Any of The Secondary
`References in Place of Rohm’s LED ............................................. 45 
`
`6. 
`
`Petitioner’s Characterization of Rohm Lacks Support .................. 46 
`
`- ii -
`
`

`

`D. 
`
`Petitioner’s Grounds 7-9 Against Claim 4 Erroneously Argue that
`Claim 4’s Features are Not Entitled to Patentable Weight ................. 48 
`
`E. 
`
`Grounds 10-12 Fail and Should be Denied Without Institution ......... 49 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Petitioner’s Grounds 10-12 Against Claim 1 Fail Because
`Petitioner Did Not Identify Which Embodiments in Weeks, Kish,
`and Edmond Allegedly Disclose a Light Emitting Diode Having a
`Metallized Bottom Major Surface .................................................. 49 
`
`Petitioner’s Ground 10 Challenge Against Claim 1 Fails Because
`Secondary Reference Weeks Does Not Disclose or Suggest a Light
`Emitting Diode Having a Metallized Bottom Major Surface ........ 50 
`
`Petitioner’s Grounds 10-12 Challenges Against Claim 1 Fail
`Because Petitioner Has Not Provided Evidence Supporting Why a
`POSITA Would Have Substituted the LEDs From Any of The
`Secondary References in Place of Rohm’s LED ........................... 52 
`
`Petitioner’s Grounds 11-12 Challenges Fail Because Neither Kish
`Nor Edmond Teach or Suggest a “Metallized Top Major Surface of
`the LED” As Recited in Claim 2 .................................................... 55 
`
`Petitioner’s Grounds 10-12 Against Claim 2 Fail Because
`Petitioner Has Not Provided Evidence Supporting Why a POSITA
`Would Have Substituted the LEDs From Any of The Secondary
`References in Place of Matsushita’s LED ..................................... 57 
`
`6. 
`
`Petitioner’s Characterization of Matsushita Lacks Support .......... 58 
`
`F. 
`
`Petitioner’s Grounds 13-15 Against Claim 4 Erroneously Argue that
`Claim 4’s Features are Not Entitled to Patentable Weight ................. 60 
`
`IV.  RETROACTIVE APPLICATION OF INTER PARTES REVIEW ON PRE-
`AIA PATENTS IS CONSTITUTIONALLY IMPERMISSIBLE ................ 61 
`
`V. 
`
`CONCLUSION .............................................................................................. 62 
`
`
`
`
`
`
`
`- iii -
`
`

`

`TABLE OF AUTHORITIES
`
`Cases 
`
`Bausch & Lomb Inc. v. Barnes-Hind Inc.,
`796 F.2d 443 (Fed. Cir. 1986) ....................................................................... 21
`
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997) ..................................................................... 37
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) .............................................................. 10, 12
`
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`138 S. Ct. 1365 (2018) ................................................................................... 61
`
`SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ................................................................ 24, 36, 48, 60
`
`Statutes 
`
`35 U.S.C. § 154(a)(2) ................................................................................................. 9
`
`35 U.S.C. § 282(a) ................................................................................................... 61
`
`35 U.S.C. § 314(a) ................................................................................................... 23
`
`Rules 
`
`37 C.F.R. § 42.22(a) ................................................................................................. 55
`
`37 C.F.R. § 42.22(a)(2) ..................................................................................... 39, 50
`
`37 C.F.R. § 42.23(b) ......................................................................................... 17, 24
`
`37 C.F.R. § 42.65(a) .................................................................................... 27, 42, 53
`
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 9
`
`37 C.F.R. § 42.104(b)(4) ..................................................................................... 9, 12
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`- iv -
`
`

`

`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`2001-2015
`
`Reserved
`
`2016
`
`2017
`
`Depostition Transcript of James R. Shealy, Ph.D.
`
`Exhibit to Ex. 2016 (Dr. Shealy’s Annotated Takenaka,
`Fig. 1)
`
`2018-2112
`
`Reserved
`
`- v -
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`Pursuant to 37 C.F.R. § 42.120, Patent Owner Document Security Systems,
`
`Inc. (“DSS” or “Patent Owner”) files this Response to the Petition, setting forth
`
`reasons why the Board should determine that claims 1-6 of U.S. Patent No.
`
`7,256,486 (the “’486 patent”) are not unpatentable, contrary to the Petition for inter
`
`partes review (“IPR”) filed by Nichia Corporation (“Petitioner”).
`
`I.
`
`INTRODUCTION
`
`The ’486 patent, entitled “Packaging Device for Semiconductor Die,
`
`Semiconductor Device Incorporating the Same and Method of Making the Same,”
`
`discloses a semiconductor device having a semiconductor die arranged on a
`
`packaging device. The packaging device includes a substrate having opposed
`
`major surfaces and interconnecting elements in two through-holes of the substrate.
`
`A first interconnecting element connects a mounting pad arranged on the
`
`substrate’s first major surface, with a connecting pad arranged on the other major
`
`surface (second major surface) of the substrate. The second interconnecting
`
`element connects a bonding pad arranged on the substrate’s first major surface,
`
`with another connecting pad arranged on the substrate’s second major surface. A
`
`semiconductor die is arranged on the mounting pad. A bonding wire extends
`
`between a metallized upper surface of the semiconductor die and the substrate’s
`
`bonding pad. The semiconductor die, mounting pad, bonding wire, and bonding
`
`-1-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`pad are encapsulated with a transparent encapsulant to allow emission of the light
`
`generated by the semiconductor die.
`
`Examples in the ’486 patent of such a semiconductor device are shown in
`
`the first exemplary embodiment of FIGS. 2A and 2B, where semiconductor device
`
`200 includes packaging device 100, semiconductor die 250, bonding wire 254, and
`
`encapsulant 252. Packaging device 100 of this exemplary embodiment includes
`
`mounting pad 130, bonding pad 132, interconnecting elements 120 and 122
`
`(arranged in through-holes 116 and 118), and connecting pads 140 and 142. The
`
`isometric view from FIG. 2A of this exemplary semiconductor device 200 and the
`
`side view from FIG. 2B are reproduced below:
`
`
`
`-2-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`
`A. Claims 1-6 Are Not Rendered Obvious by the Challenges Based
`on Primary References Nakajima, Rohm, and Matsushita
`The Petition relies upon three primary references – i.e., Nakajima1, Rohm2,
`
`and Matsushita3 as allegedly disclosing the “electrically conductive mounting pad,”
`
`the “first electrically conductive connecting pad,” and the “first electrically
`
`conductive interconnecting element” recited in claim 1 of the ’486 patent. But
`
`Petitioner consistently points to three different portions of a single structure as
`
`allegedly disclosing the three elements of claim 1, without establishing why such a
`
`characterization is warranted. The Petition follows a similar strategy in addressing
`
`
`1 Ex. 1004, Japanese Patent Application Publication No. 2002-232017 with
`
`Certified Translation (“Nakajima”)
`
`2 Ex. 1005, Japanese Patent Application Publication No. 2003-17754 with Certified
`
`Translation (“Rohm”).
`
`3 Ex. 1006, Japanese Patent Application Publication No. 2001-352102 with
`
`Certified Translation (“Matsushita”).
`
`-3-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`the claimed “electrically conductive bonding pad,” a “second electrically
`
`conductive connecting pad,” and a “second electrically conductive interconnecting
`
`element” of claim 2.
`
`Claim 1 also recites a “light emitting diode (LED) having a metallized
`
`bottom major surface.” Claim 2 recites that “a metallized top major surface of the
`
`LED.” Petitioner alternatively relies upon secondary references Weeks4, Kish5,
`
`and Edmond6 as allegedly disclosing these claim features. When those terms are
`
`properly construed as explained below, Weeks does not disclose an LED having a
`
`metallized bottom major surface, and Kish and Edmond fail to disclose an LED
`
`having a metallized top major surface.
`
`As an additional defect, Petitioner advances incorrect constructions for
`
`“major surface” and “metallized … major surface.” Petitioner incorrectly
`
`construes “major surface” to read on a “face” that has multiple surfaces.
`
`Additionally, Petitioner construes “metallized … major surface” to include any
`
`surface so long as it has metal on a small part of the surface. That interpretation
`
`improperly conflates a “metallized … major surface” with a major surface having a
`
`
`4 Ex. 1007, U.S. Patent No. 6,611,002 (“Weeks”)
`
`5 Ex. 1008, U.S. Patent No. 5,376,580 (“Kish”).
`
`6 Ex. 1009, U.S. Patent No. 5,523,589 (“Edmond”).
`
`-4-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`metal pad, even though the claims themselves use different language when the
`
`applicant intended to claim a pad.
`
`Petitioner also fails to set forth evidence-based reasons why a person of
`
`ordinary skill in the art (“POSITA”) would have combined or modified the
`
`asserted references in a manner that would have disclosed all claimed features as
`
`arranged in the ’486 patent claims. As result, each challenge is deficient.
`
`B. Claim 6 Further Distinguishes from the Nine (9) Challenges Based
`on the Primary References
`
`The Petition also suffers from a complete failure of proof in its nine
`
`challenges (Grounds 16-24) of claim 6. In relevant part, claim 6 recites, “wherein
`
`the first electrically conductive interconnecting element comprises a slug of
`
`electrically conductive material, the slug having a diameter selected to press-fit the
`
`slug into a through hole located in the substrate between the mounting pad and the
`
`first electrically conductive connecting pad.”
`
`In an exemplary embodiment of the ’486 patent, such as that illustrated in
`
`FIG. 5B, interconnecting elements of the device may be formed by introducing
`
`slugs of conductive material (520-523) into the through holes (516-519), and
`
`subjecting the slugs to a squeezing process.
`
`-5-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`
`
`Petitioner attempts to satisfy claim 6’s features by relying on Jochym,7
`
`which discloses a conductive stake. But claim 4 further requires certain
`
`characteristics of the “first electrically conductive interconnecting element,” and
`
`Petitioner and its expert, Dr. Shealy, failed to consider claim 6’s dependence from
`
`claim 4 when advancing their attack on claim 6.
`
`In particular, Petitioner evaluated Nakajima’s disclosure of Tungsten as
`
`allegedly satisfying the features of claim 4, but never evaluated the phosphor
`
`bronze materials disclosed to form Jochym’s conductive stake against claim 4’s
`
`requirements. Further, Petitioner never suggested any further modification of
`
`Jochym’s conductive stake, and certainly never presented any reason why a
`
`POSITA would have been motivated to modify Jochym’s conductive stake to be
`
`formed of Tungsten. These failures are described in more detail in Section III.A
`
`below.
`
`
`7 Ex. 1009, U.S. Patent No. 5,523,589 (“Edmond”).
`
`-6-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`Additionally, Jochym is a reference from the printed circuit board art—not
`
`the semiconductor die packaging assembly art of the ’486 patent. Petitioner
`
`provides no reason why a POSITA would have looked to the PCB art in the first
`
`place while addressing Petitioner’s primary LED art. Nor does Petitioner identify
`
`any evidence of a perceived problem in Nakajima, Rohm, or Matsushita that would
`
`have led a POSITA to look for an alternative method of interconnecting elements
`
`in their semiconductor packaging assemblies. Finally, in proposing to combine
`
`Nakajima and Jochym, Petitioner fails to reconcile the clear technical
`
`inconsistencies between these refrences.
`
`Each of these defects, and other defects in the Petition, are addressed below.
`
`II. THE CHALLENGED CLAIMS AND CLAIM CONSTRUCTION
`C. Claim Listing
`Challenged claims 1-6 of the ’486 patent recite (with the highlighting of
`
`elements to be addressed below):
`
`1. A semiconductor device, comprising:
`a substantially planar substrate having opposed major surfaces;
`an electrically conductive mounting pad located on one of the major
`surfaces of the substrate;
`a light emitting diode (LED) having a metallized bottom major
`surface that is mounted on the electrically conductive mounting pad, the
`metallized bottom major surface comprising one of an anode and a cathode
`of the LED;
`
`-7-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`a first electrically conductive connecting pad located on the other of
`the major surfaces of the substrate; and
`a first electrically conductive interconnecting element extending
`through the substrate and electrically interconnecting the mounting pad and
`the first electrically conductive connecting pad.
`
`2. The semiconductor device of claim 1, further comprising:
`an electrically conductive bonding pad located on the one of the
`major surfaces of the substrate;
`a bonding wire extending between a metallized top major surface of
`the LED and the electrically conductive bonding pad;
`a second electrically conductive connecting pad located on the other
`of the major surfaces of the substrate; and
`a second electrically conductive interconnecting element extending
`through the substrate and electrically interconnecting the bonding pad and
`the second connecting pad.
`
`3. The semiconductor device of claim 2 wherein the metallized top
`major surface comprises a first electrode of the LED and the metallized
`bottom major surface comprises a second electrode of the LED.
`
`4. The semiconductor device of claim 1 wherein the first electrically
`conductive interconnecting element is selected to withstand an operating
`temperature when the LED is mounted on the electrically conductive
`mounting pad and to provide a low-resistance electrical connection
`between the mounting pad and the first electrically conductive connecting
`pad.
`
`-8-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`
`5. The semiconductor device of claim 4, wherein the first electrically
`conductive interconnecting element comprises tungsten.
`
`6. The semiconductor device of claim 4, wherein the first electrically
`conductive interconnecting element comprises a slug of electrically
`conductive material, the slug having a diameter selected to press-fit the slug
`into a through hole located in the substrate between the mounting pad and
`the first electrically conductive connecting pad.
`’486 patent, 12:6-55.
`
`
`Petitioner’s Proposed Claim Constructions Are Wrong
`
`D.
`The ’486 patent was filed on June 27, 2003, and issued on August 14, 2007.
`
`Accordingly, the ’486 patent is not expected to expire prior to any Final Written
`
`Decision in this IPR. See 35 U.S.C. § 154(a)(2); 37 C.F.R. § 42.100(b). Petitioner
`
`states that the Board applies the “broadest reasonable construction in light of the
`
`specification” (referred to as “BRI”) to the ’486 patent. However, Petitioner’s
`
`proposed constructions for the challenged claims deviate unreasonably from the
`
`BRI standard, and this flaw is fatal to the Petition under 37 C.F.R. § 42.104(b)(3)-
`
`(4) (the petition must identify “[h]ow the challenged claim is to be construed” and
`
`“[h]ow the [correctly] construed claim is unpatentable.”).
`
`
`
`
`
`-9-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`“major surface”
`
`1.
`Petitioner asserts that “major surface” should be construed as meaning “a
`
`face that is greater in size than the other faces of the element being described.” As
`
`is clear from Petitioner’s proposed constructions, Petitioner incorrectly interprets
`
`the major surfaces of the LED to be synonymous with the largest face.
`
`This interpretation exceeds the broadest reasonable interpretation of
`
`“surface” according to the ’486 patent specification, and there is no justification
`
`presented in the Petition for this unsupported substitution of “surface” for “face” in
`
`the proposed constructions. The purpose of claim construction is not simply to
`
`identify potential synonyms of claim terms and swap them out without reason;
`
`rather, the purpose is to “accord a claim a meaning it would have to a person of
`
`ordinary skill in the art at the time of the invention.” Innova/Pure Water, Inc. v.
`
`Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004).
`
`Confirming that Petitioner’s constructions are wrong and unreasonably
`
`broad, the ’486 patent never uses the word “face” at all, much less as a substitute
`
`for “surface.” Moreover, the ’486 patent consistently uses the term “surface” to
`
`refer to an outer, substantially planar portion (i.e., a surface) of a substrate or a
`
`semiconductor die. See ’486 patent, Abstract, col. 1:20-24; Figs. 1B and 2B.
`
`Indeed, that interpretation is confirmed by claim 1 where it recites “a substantially
`
`planar substrate having opposed major surfaces.” ’486 patent, col. 12:7-8. A
`
`-10-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`“major surface” is “an outer, substantially planar surface of the element being
`
`described which has the largest surface area of any surface of the element.”
`
`Consistent with the ’486 patent disclosure, there can be more than one “major
`
`surface” on an element, provided those surfaces have substantially similar surface
`
`areas, and that their surface areas are greater than the surface areas of other
`
`surfaces.
`
`Petitioner attempts to construe “major portion” to refer to “a matter of
`
`geometric orientation” instead of an outer planar surface. This is incorrect and
`
`inconsistent with the usage of the term “surface” in the ’486 patent.
`
`Petitioner also defines “major surface” as being the one “face that is greater
`
`in size than the other faces of the element being described.” Pet., 12. Under
`
`petitioner’s construction, there can only be one “major surface” of the element
`
`being described. Yet, the ’486 patent claims refer to a “substrate having opposed
`
`major surfaces.” Thus, Petitioner’s construction is inconsistent with the claims and
`
`the ’486 patent specification.
`
`As an additional defect, Petitioner applies its proposed construction in a
`
`manner that fails to lend any weight to the claim term, “major.” In particular,
`
`Petitioner views a bottom side of a substrate or an LED as a “bottom major
`
`surface” without regard to where (or even whether) there exists a “major surface”
`
`on that side. Petitioner’s challenges simply point to a bottom side of a substrate or
`
`-11-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`an LED in the asserted references without taking the necessary step of identifying a
`
`“bottom major surface.” As a result, Petitioner’s Petition fails under 37 C.F.R. §
`
`42.104(b)(4) (the petition must identify “[h]ow the [correctly] construed claim is
`
`unpatentable.”).
`
`Because each of Petitioner’s grounds is based on an incorrect construction of
`
`“major surface,” each ground necessarily fails.
`
`“metallized … major surface”
`
`2.
`Petitioner proposes to construe “metallized … major surface” as follows:
`
`Under BRI a POSITA would have understood
`“metallized … major surface,” as recited in claims 1, 2,
`and 3, to mean “a major surface having metal on at least
`a portion thereof.
`
`Pet., 12. This construction is also wrong. It could result in the “metallized …
`
`major surface” being satisfied by nothing more than a major surface having a small
`
`metallized pad formed thereon. But the claims separately recite a “mounting pad”
`
`and a “connecting pad” as different elements than a “metallized … major surface,”
`
`and Petitioner has not established this as a situation where the surrounding
`
`language of the claims or the specification of the ’486 patent would support a
`
`finding that a “metallized … major surface” is indistinct from a major surface
`
`having a small metallized pad formed thereon. See Innova/Pure Water v. Safari
`
`Water Filtration, 381 F.3d 1111, 1119 (Fed. Cir. 2004) (“when an applicant uses
`
`-12-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`different terms in a claim it is permissible to infer that he intended his choice of
`
`different terms to reflect a differentiation in the meaning of those terms.”).
`
`
`
`For example, Petitioner points to Kish’s LED chip in Figure 14 as having
`
`electrode 142 in its analysis of the “metallized top major surface of the LED” of
`
`claim 2, and includes the following annotation in its discussion of Kish:
`
`
`
`
`
`Pet., 21. There is no reason that a POSITA would have referred to the top surface
`
`of Kish’s LED as “metallized” simply because there is an electrode 142, or pad,
`
`covering a small portion of that surface.
`
`Petitioner’s construction—a major surface having metal on at least a portion
`
`thereof—fails to account for different claim language used to refer to a mounting
`
`pad and connecting pad in the claims. To properly account for these differences,
`
`-13-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`the correct construction of “metallized … major surface” is “a major surface (as
`
`defined above) substantially covered with metal.”
`
`III. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`Petitioner has failed to establish that each of the challenged ’486 patent
`
`claims are unpatentable over the asserted art. Petitioner’s improper challenges rely
`
`on Petitioner’s incorrect claim construction and incorrect interpretations of each
`
`primary reference.
`
`For these reasons, discussed below in more detail, the Board should confirm
`
`the patentability of these claims by final written decision. Patent Owner will first
`
`address the defect in the Petitioner’s challenges to dependent claim 6 (Nos. 16-24)
`
`and then address the defects in the remaining challenge (Nos. 1-15).
`
`A. Grounds 16-24 Fail to Render Claim 6 Obvious
`Claim 6 states (with emphasis added):
`
`The semiconductor device of claim 4, wherein the first
`electrically conducting interconnecting element
`comprises a slug of electrically conductive material, the
`slug having a diameter selected to press-fit the slug into a
`through hole located in the substrate between the
`mounting pad and the first electrically conductive
`connecting pad.
`
`As clearly written and as Petitioner and Dr. Shealy admitted, claim 6
`
`depends from claim 4, and therefore incorporates every feature from claim 4.
`
`In every challenge of claim 6, Petitioner relies upon Jochym to disclose the
`
`-14-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`features of claim 6. Pet., 82-84. For example, claim 6 is challenged in Grounds
`
`16-18 based on Nakajima, in view of Weeks, Kish, or Edmond, in further view of
`
`Jochym. Claim 6 is also challenged in Grounds 19-24 based on Rohm or
`
`Matsushita in view of Weeks, Kish, or Edmond, in further view of Nakajima, in
`
`further view of Jochym.
`
`Further, as can be seen from the structure of these challenges of claim 6,
`
`every challenge of claim 4 relies upon Nakajima to disclose those underlying
`
`features of claim 4. See Pet., 49-50 (“Therefore, Nakajima discloses the
`
`limitations of claims 4 and 5.”), 65-67 (“As explained above in §V.B.4 [pp. 49-50],
`
`Nakajima discloses that tungsten is a desirable material to be used in
`
`interconnecting elements.”), 80-82 (“As explained above in §V.B.4 [pp. 49-50],
`
`Nakajima discloses that tungsten is a desirable material to be used in
`
`interconnecting elements.”). What is clear from the Petition and Dr. Shealy’s
`
`declaration is that Petitioner only evaluated Nakajima’s disclosure of Tungsten
`
`powder/paste against the features of claim 4.8 See Decision to Institute (Paper 9) at
`
`46-48; see also Ex. 1003, ¶¶111-114, ¶¶162-166, ¶¶214-218; Ex. 2016, 74:10-15.
`
`Jochym, relied upon for teaching the features of claim 6, does not use Tungsten.
`
`8 Petitioner also set forth an alternative theory that the features of claim 4 are not
`
`entitled to patentable weight. As explained below in Sections III.B.6, III.C.6, and
`
`III.E.6, that alternative theory is incorrect.
`
`-15-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`1.
`
`Petitioner Failed to Prove Unpatentability of Claim 6 Based
`on Jochym
`
`Petitioner and Dr. Shealy argue in favor of substituting out Nakajima’s
`
`method of applying the metallized metal Tungsten powder/paste to form
`
`interconnects, and using Jochym’s conductive stake instead to form the
`
`interconnects. Pet., 83-84. But this obviousness theory includes no fewer than
`
`three flaws. At the heart of these flaws is the fact that Petitioner and Dr. Shealy
`
`failed to consider whether this combination of Nakajima (with or without Rohm or
`
`Matsushita) in view of Jochym discloses or suggests the features of claim 6’s
`
`underlying claim, claim 4.
`
`Claim 4 requires, in relevant part, “the first electrically conductive
`
`interconnecting element is selected to withstand an operating temperature when the
`
`LED is mounted on the electrically conductive mounting pad and to provide a low-
`
`resistance electrical connection between the mounting pad and the first electrically
`
`conductive connecting pad.” Dr. Shealy evaluated this element only with respect
`
`to the Tungsten powder/paste disclosed in Nakajima. See Ex. 1003, ¶¶114, 165,
`
`217; Ex. 2016, 74:4-15; see also Pet., 49-50, 65-67, 80-82. But Jochym does not
`
`disclose the use of Tungsten in any form for the conductive stake. Rather, Jochym
`
`solely discloses the use of a phosphor bronze material coated with gold-over-nickel
`
`plating for the conductive stake. Jochym, 4:15-17. Dr. Shealy is correct that this
`
`material identification is illustrative, but after reviewing the entirety of Jochym at
`
`-16-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`deposition, Dr. Shealy was unable to find any other illustrative materials for the
`
`conductive stake in Jochym. See Ex. 2016, 75:18-76:18. In particular, Dr. Shealy
`
`confirmed that Jochym does not disclose using Tungsten in any form (paste,
`
`powder, or otherwise) for the conductive stake. Id. (referring to Jochym, Dr.
`
`Shealy testified: “I do not find tungsten in here.”).
`
`Accordingly, Petitioner’s modification, as set out in the Petition and Dr.
`
`Shealy’s declaration, calls for the replacement of Nakajima’s paste/powder
`
`interconnect with the bronze-based stake of Jochym. No other modification of
`
`Nakajima/Jochym is present in the Petition or Dr. Shealy’s declaration. See, e.g.,
`
`Pet., 82-84; Ex. 1003, ¶¶220-228.
`
`Because claim 4 is incorporated into claim 6 by dependence, Petitioner has
`
`failed to satisfy the features of claim 4 in its obviousness theory against claim 6.
`
`First, Petitioner and Dr. Shealy never evaluated whether the materials disclosed by
`
`Jochym for the conductive stake satisfy the elements of claim 4. Specifically,
`
`Petitioner and Dr. Shealy never evaluated whether Jochym’s phosphor bronze
`
`material coated with gold-over-nickel plating for the conductive stake satisfies the
`
`underlying features of claim 4. Therefore, even if Jochym were substituted in full
`
`for Nakajima’s interconnection formation method (or Rohm’s or Matsushita’s),
`
`there is no basis for the Board to conclude that Jochym’s conductive stake
`
`materials satisfy both claims 4 and 6. Again, this is a failure of proof in the
`
`-17-
`
`

`

`IPR2018-01166 Patent Owner’s Response
`
`Petition, and Petitioner cannot remedy this failure of proof in the Reply.
`
`Second, the sole material evaluated by Petition and Dr. Shealy to meet the
`
`features of claim 4 was Tungsten, but Petitioner and Dr.