`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner
`
`Patent No. 7,256,486
`Issue: August 14, 2007
`Filed: June 27, 2003
`Inventors: Kong Weng Lee, et al.
`Title: PACKAGING DEVICE FOR SEMICONDUCTOR DIE,
`SEMICONDUCTOR DEVICE INCORPORATING SAME AND METHOD OF
`MAKING SAME
`__________________
`
`Inter Partes Review No. IPR2018-01166
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,256,486
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`
`I. Mandatory Notices (37 C.F.R. §42.8) ............................................................. 1
`
`A.
`
`B.
`
`C.
`
`Real Parties in Interest (37 C.F.R. §42.8(b)(1)) .................................... 1
`
`Related Matters (37 C.F.R. §42.8(b)(2)) ............................................... 1
`
`Counsel and Service Information (37 C.F.R. §§42.8(b)(3)-(4)) ........... 2
`
`II.
`
`Payment of Fees (37 C.F.R. §42.103) ............................................................. 3
`
`III. Requirements for Inter Partes Review (37 C.F.R. §42.104) .......................... 3
`
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ...................................... 3
`
`B.
`
`Identification of Challenge (37 C.F.R. §42.104(b)(1)-(2)) and
`Relief Requested (37 C.F.R. §42.22(a)(1)) ........................................... 4
`
`IV. Relevant Information Concerning the Contested Patent ................................. 7
`
`A. Overview of the ’486 Patent .................................................................. 7
`
`B.
`
`C.
`
`Person of Ordinary Skill in the Art ..................................................... 10
`
`Claim Construction (37 C.F.R. §42.104(b)(3)) ................................... 11
`
`1.
`
`2.
`
`“major surface” ......................................................................... 11
`
`“metallized … major surface” .................................................. 12
`
`V. Analysis of the Patentability of Specific Grounds for Petition ..................... 14
`
`A.
`
`The Prior Art ....................................................................................... 14
`
`1.
`
`2.
`
`Nakajima ................................................................................... 15
`
`Rohm ......................................................................................... 16
`
`3. Matsushita ................................................................................. 17
`
`4. Weeks ........................................................................................ 18
`
`
`
`i
`
`

`

`
`
`5.
`
`6.
`
`7.
`
`Kish ........................................................................................... 20
`
`Edmond ..................................................................................... 22
`
`Jochym ...................................................................................... 23
`
`B. Grounds 1-3: Nakajima, in view of Weeks, Kish, or Edmond
`renders obvious claims 1-5 .................................................................. 25
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 1 ...................................................................................... 25
`
`Claim 2 ...................................................................................... 38
`
`Claim 3 ...................................................................................... 48
`
`Claims 4 and 5 ........................................................................... 49
`
`C. Grounds 4-6: Rohm, in view of Weeks, Kish, or Edmond renders
`obvious claims 1-3............................................................................... 51
`
`1.
`
`2.
`
`3.
`
`Claim 1 ...................................................................................... 51
`
`Claim 2 ...................................................................................... 59
`
`Claim 3 ...................................................................................... 65
`
`D. Grounds 7-9: Rohm in view of either Weeks, Kish, or Edmond, in
`further view of Nakajima renders obvious claims 4-5 ........................ 65
`
`1.
`
`Claims 4 and 5 ........................................................................... 65
`
`E.
`
`Grounds 10-12: Matsushita, in view of Weeks, Kish, or Edmond
`renders obvious claims 1-3 .................................................................. 67
`
`1.
`
`2.
`
`3.
`
`Claim 1 ...................................................................................... 67
`
`Claim 2 ...................................................................................... 75
`
`Claim 3 ...................................................................................... 80
`
`F.
`
`Grounds 13-15: Matsushita in view of either Weeks, Kish, or
`Edmond, in further view of Nakajima renders obvious claims 4-5 .... 80
`
`1.
`
`Claims 4 and 5 ........................................................................... 80
`
`
`
`ii
`
`

`

`
`
`G. Grounds 16-24 ..................................................................................... 82
`
`
`
`
`
`Grounds 16-18: Nakajima in view of either Weeks, Kish, or
`Edmond, in further view of Jochym, renders obvious claim 6 ........... 82
`
`Grounds 19-24: Rohm or Matsushita, in view of either Weeks,
`Kish, or Edmond, in further view of Nakajima, in further view of
`Jochym, renders obvious claim 6 ........................................................ 82
`
`1.
`
`Claim 6 ...................................................................................... 82
`
`VI. Conclusion ..................................................................................................... 84
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) ..................................... 11
`
`In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995)…………. .................................... 11
`
`In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997)….. ................................... 51, 67, 83
`
`O2 Micro Int’l. Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351
`(Fed. Cir. 2008) ................................................................................................... 11
`
`U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997) .................... 11
`
`Statutes
`35 U.S.C. §102…. .............................................................................................passim
`
`35 U.S.C. §103…. .............................................................................................passim
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`Description
`
`U.S. Patent No. 7,256,486
`File History of U.S. Patent No. 7,256,486
`Declaration of Dr. James Richard Shealy
`Japanese Patent Application No. 2002-232017 with Certified
`Translation (“Nakajima”)
`Japanese Patent Application Publication No. 2003-17754 with
`Certified Translation (“Rohm”)
`Japanese Patent Application Publication No. 2001-352102 with
`Certified Translation (“Matsushita”)
`U.S. Patent No. 6,611,002 (“Weeks”)
`U.S. Patent No. 5,376,580 (“Kish”)
`U.S. Patent No. 5,523,589 (“Edmond”)
`U.S. Patent No. 6,747,217 (“Jochym”)
`U.S. Patent No. 6,885,035 (“Bhat”)
`U.S. Patent No. 6,791,119 (“Slater”)
`Modern Dictionary of Electronics (7th ed. 1999)
`Merriam Webster’s Collegiate Dictionary (10th ed.)
`ERIK LASSNER & WOLF-DIETER SCHUBERT, TUNGSTEN (1999)
`
`
`
`v
`
`

`

`
`
`
`
`Nichia Corporation (“Petitioner”) respectfully request Inter Partes Review
`
`(“IPR”) of claims 1-6 of U.S. Patent No. 7,256,486 (Ex. 1001, “the ’486 patent”),
`
`currently assigned to Document Security Systems, Inc. (“Patent Owner”). There is
`
`a reasonable likelihood Petitioner will prevail on at least one challenged claim.
`
`I. Mandatory Notices (37 C.F.R. §42.8)
`A. Real Parties in Interest (37 C.F.R. §42.8(b)(1))
`The real parties in interest are Nichia Corporation and Nichia America
`
`
`
`Corporation.
`
`B. Related Matters (37 C.F.R. §42.8(b)(2))
`The ’486 patent has been asserted by Patent Owner against Nichia
`
`
`
`Corporation and Nichia America Corporation in Document Security Systems, Inc. v.
`
`Nichia America Corporation, et al., No. 2:17-cv-08849, pending in the Central
`
`District of California.
`
`
`
`The ’486 patent has also been asserted by Patent Owner in the following
`
`actions: Document Security Systems, Inc. v. Everlight Americas Inc., et al., No.
`
`2:17-cv-00310 (Eastern District of Texas); Document Security Systems, Inc. v.
`
`Everlight Americas Inc., et al., No. 2:17-cv-04273 (Central District of California);
`
`Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-00309 (Eastern District
`
`of Texas); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-04263
`
`(Central District of California); Document Security Systems, Inc. v. Seoul
`
`Semiconductor Co., Ltd., et al., No. 2:17-cv-00308 (Eastern District of Texas);
`1
`
`
`
`

`

`
`
`Document Security Systems, Inc. v. Seoul Semiconductor Co., Ltd., et al., No. 8:17-
`
`cv-00981 (Central District of California); Document Security Systems, Inc. v.
`
`OSRAM GmbH, et al., No. 2:17-cv-05184 (Central District of California); and
`
`Document Security Systems, Inc. v. Lite-On Tech. Corp., et al., No. 2:17-cv-06050
`
`(Central District of California).
`
`
`
`The ’486 patent is also subject to the following pending petition for inter
`
`partes review: Seoul Semiconductor Co., Ltd. v. Document Security Systems, Inc.,
`
`No. IPR2018-00333 (“the ’333 Petition”).
`
`
`
`C. Counsel and Service Information (37 C.F.R. §§42.8(b)(3)-(4))
`Petitioner designates the following lead and back-up counsel:
`
`Lead Counsel
`
`Patrick R. Colsher (Reg. No. 74,955; Tel. (212) 848-7708;
`
`patrick.colsher@shearman.com), attorney at Shearman & Sterling LLP, 599
`
`Lexington Avenue, New York, New York 10022.
`
`Backup Counsel
`
`Matthew G. Berkowitz (Reg. No. 57,215; Tel. (650) 838-3737;
`
`matthew.berkowitz@shearman.com), attorney at Shearman & Sterling LLP, 1460
`
`El Camino Real, Menlo Park, California 94025.
`
`
`
`2
`
`

`

`
`
`Eric S. Lucas (Reg. No. 76,434; Tel. (212) 848-4955;
`
`eric.lucas@shearman.com), attorney at Shearman & Sterling LLP, 599 Lexington
`
`Avenue, New York, New York 10022.
`
`Thomas R. Makin (pro hac vice to be requested upon authorization; Tel.
`
`(212) 848-7698; thomas.makin@shearman.com), attorney at Shearman & Sterling
`
`LLP, 599 Lexington Avenue, New York, New York 10022.
`
`
`
`Petitioner consents to e-mail service at the above e-mail addresses and
`
`nichia-dss@shearman.com.
`
`II.
`
`Payment of Fees (37 C.F.R. §42.103)
`
`The Director is authorized to charge the filing fee for this Petition, as well as
`
`any other fees that may be required in these proceedings, to Deposit Account
`
`500324.
`
`III. Requirements for Inter Partes Review (37 C.F.R. §42.104)
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Petitioner certifies that the ’486 patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting an IPR challenging the patent
`
`claims on the grounds identified in this Petition.
`
`
`
`3
`
`

`

`
`
`B.
`
`Identification of Challenge (37 C.F.R. §42.104(b)(1)-(2)) and
`Relief Requested (37 C.F.R. §42.22(a)(1))
`
`Petitioner requests that the Board institute IPR of claims 1-6 of the ’486
`
`patent because those claims are unpatentable as obvious under pre-AIA 35 U.S.C.
`
`§103(a) on the following grounds:
`
`Ground
`
`Prior Art
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`Japanese Patent Application No. 2002-
`232017 (Ex. 1004, “Nakajima”) in view
`of U.S. Patent No. 6,611,002 (Ex. 1007,
`“Weeks”)
`Nakajima in view of U.S. Patent No.
`5,376,580 (Ex. 1008, “Kish”)
`Nakajima in view of U.S. Patent No.
`5,523,589 (Ex. 1009, “Edmond”)
`Japanese Patent Application Publication
`No. 2003-17754 (Ex. 1005, “Rohm”) in
`view of Weeks
`Rohm in view of Kish
`
`Rohm in view of Edmond
`
`Rohm in view of Weeks, in further view
`of Nakajima
`Rohm in view of Kish, in further view
`of Nakajima
`
`
`
`4
`
`Claims
`Challenged
`1-5
`
`Basis
`
`§103
`
`
`
`1-5
`
`1-5
`
`1-3
`
`1-3
`
`1-3
`
`4-5
`
`4-5
`
`§103
`
`
`
`§103
`
`
`
`

`

`Ground
`
`Prior Art
`
`Basis
`
`
`
`§103
`
`
`
`§103
`
`
`
`§103
`
`
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`Rohm in view of Edmond, in further
`view of Nakajima
`Japanese Patent Application Publication
`No. 2001-352102 (Ex. 1006,
`“Matsushita”) in view of Weeks
`Matsushita in view of Kish
`
`Matsushita in view of Edmond
`
`Matsushita in view of Weeks, in further
`view of Nakajima
`Matsushita in view of Kish, in further
`view of Nakajima
`Matsushita in view of Edmond, in
`further view of Nakajima
`Nakajima in view of Weeks, in further
`view of U.S. Patent No. 6,747,217 (Ex.
`1010, “Jochym”)
`Nakajima in view of Kish, in further
`view of Jochym
`Nakajima in view of Edmond, in further
`view of Jochym
`Rohm in view of Weeks, in further view
`of Nakajima, in further view of Jochym
`Rohm in view of Kish, in further view
`of Nakajima, in further view of Jochym
`
`
`
`5
`
`Claims
`Challenged
`4-5
`
`1-3
`
`1-3
`
`1-3
`
`4-5
`
`4-5
`
`4-5
`
`6
`
`6
`
`6
`
`6
`
`6
`
`

`

`Ground
`
`Prior Art
`
`Basis
`
`
`
`21
`
`22
`
`23
`
`24
`
`Rohm in view of Edmond, in further
`view of Nakajima, in further view of
`Jochym
`Matsushita in view of Weeks in further
`view of Nakajima, in further view of
`Jochym
`Matsushita in view of Kish in further
`view of Nakajima, in further view of
`Jochym
`Matsushita in view of Edmond in
`further view of Nakajima, in further
`view of Jochym
`
`Claims
`Challenged
`6
`
`6
`
`6
`
`6
`
`
`
`
`Patent Owner filed suit against Petitioner just two weeks after the ’333
`
`Petition, the only other petition challenging the ’486 patent. Although there is
`
`overlap in certain prior art relied upon in the Grounds herein and in the ’333
`
`Petition, the Grounds themselves are different, this Petition challenges additional
`
`claims, and the arguments are presented in a different manner with a different
`
`focus. Accordingly, Petitioner submits that, under the circumstances, it should be
`
`entitled to its own challenge to the ’486 patent claims on each Ground.
`
`
`
`6
`
`

`

`
`
`IV. Relevant Information Concerning the Contested Patent
`
`A. Overview of the ’486 Patent
`The ’486 patent is generally directed to a substrate packaging assembly for
`
`
`
`an LED. 1 Ex. 1001 at Abstract, 2:9-10, 2:33-43; Ex. 1003, ¶25. The specification
`
`discloses that the substrate packaging assembly includes a planar substrate with a
`
`mounting pad and a bonding pad on its topside, and two connecting pads on its
`
`bottom side. Ex. 1001 at Abstract, 2:33-43; Ex. 1003, ¶25. The mounting pad
`
`provides a surface to which the bottom of an LED is mechanically and electrically
`
`attached. Ex. 1001 at Abstract, 2:33-43; Ex. 1003, ¶25. The bonding pad provides
`
`a surface to which a bonding wire (the other side of which is attached to the
`
`topside electrode [anode] of the LED) is mechanically and electrically attached.
`
`Ex. 1001 at Abstract, 2:33-43; Ex. 1003, ¶25. Electrically conductive
`
`interconnecting elements run through the substrate to electrically connect the
`
`mounting and bonding pads (on the top of the substrate) with the two connecting
`
`pads (on the bottom of the substrate). Ex. 1001 at Abstract, 2:33-43; Ex. 1003,
`
`¶25.
`
`
`
`Figures 1A and 1B, which depict the substrate packaging assembly (i.e., the
`
`purported invention without an LED mounted on the mounting pad), are annotated
`
`below (substrate 110 colored red; mounting and bonding pads 130, 132 colored
`
`1 Petitioner uses “LED” in this petition to refer to a light emitting diode.
`
`
`
`7
`
`

`

`
`
`green; connecting pads 140, 142 colored orange (not visible in Fig. 1A);
`
`interconnecting elements 120, 122 colored purple).2 Ex. 1003, ¶26.
`
`
`
`
`
`The ’486 patent discloses that an LED is mounted on the substrate
`
`packaging assembly, and that the LED has metallized top and bottom major
`
`surfaces, and that these surfaces comprise an anode and a cathode, respectively.
`
`Ex. 1001 at 5:43-62; Ex. 1003, ¶27. The ’486 patent itself admits that such an
`
`LED was well known in the prior art. Ex. 1001 at 1:20-23, 49-52; Ex. 1003, ¶27.
`
`
`
`
`
`In Figure 2A, below, substrate 110 is colored red; mounting and bonding
`
`pads 130, 132 are colored green; LED3 250 is colored blue; bonding wire 254 is
`
`
`2 Unless otherwise noted, all coloring and descriptions have been added to the
`
`figures.
`
`3 The ’486 patent specification uses the broader term “semiconductor die” (which
`
`could encompass more than LEDs) but the claims recite only one type of
`
`semiconductor die—“a light emitting diode (LED).” Ex. 1003, ¶28.
`
`
`
`8
`
`

`

`
`
`colored gold; interconnecting elements 120, 122 are colored purple; and the
`
`connecting pads are not shown. Ex. 1003, ¶28.
`
`
`
`
`
`The substrate, mounting pad, LED, first connecting pad, and first
`
`interconnecting element are claimed in claim 1. Ex. 1003, ¶29. Claim 2 adds the
`
`bonding pad, bonding wire, second connecting pad, and second interconnecting
`
`element. Ex. 1003, ¶29. And, claim 3 specifies that the top and bottom of the
`
`LED comprise first and second electrodes (but, as discussed below, this recitation
`
`would have been implicit in the structure described in claim 2). Ex. 1003, ¶29.
`
`
`
`The ’486 patent discloses three additional details about the first
`
`interconnecting element, which are claimed in claims 4, 5, and 6, respectively: (i)
`
`that it should provide a low-resistance electrical connection, while being able to
`
`withstand an operating temperature when the LED is mounted on the mounting
`
`
`
`9
`
`

`

`
`
`pad; (ii) that tungsten should be one of the materials that is used to provide this
`
`result; and (iii) that it should comprise a slug of electrically conductive material
`
`with a diameter selected such that the slug may be press-fit into a through hole
`
`located in the substrate. Ex. 1001 at 4:29-45, claims 4-6; Ex. 1003, ¶30.
`
`Person of Ordinary Skill in the Art
`
`B.
`Several factors may be considered in determining the proper level of skill:
`
`
`
`The person of ordinary skill in the art is a hypothetical person who is
`presumed to have known the relevant art at the time of the invention.
`Factors that may be considered in determining the level of ordinary
`skill in the art may include: (A) “type of problems encountered in the
`art;” (B) “prior art solutions to those problems;” (C) “rapidity with
`which innovations are made;” (D) “sophistication of the technology;
`and” (E) “educational level of active workers in the field.” In a given
`case, every factor may not be present, and one or more factors may
`predominate.
`
`M.P.E.P. §2141.03.
`
`Here, the level of skill in the art is apparent from the cited art. See In re
`
`
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner submits that a person
`
`of ordinary skill in the art (“POSITA”) for the ’486 patent would have had at least
`
`a B.S. in mechanical or electrical engineering or a related field, and four years’
`
`experience designing LED packages. Ex. 1003, ¶24. This description is
`
`
`
`10
`
`

`

`
`
`approximate, and a higher level of education or skill might make up for less
`
`experience, and vice-versa. Id.
`
`C. Claim Construction (37 C.F.R. §42.104(b)(3))
`A claim subject to IPR is to be given its broadest reasonable construction
`
`
`
`(“BRI”) in light of the specification. 37 C.F.R. §42.100(b); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131 (2016). Only claim terms subject to a legitimate
`
`dispute need to be construed. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
`
`Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); U.S. Surgical Corp. v. Ethicon, Inc.,
`
`103 F.3d 1554, 1568 (Fed. Cir. 1997). The following phrases should be construed
`
`in the manner set forth below.
`
`“major surface”
`
`1.
`The phrase “major surface” is recited in claims 1, 2, and 3 of the ’486 patent
`
`
`
`to describe surfaces of the claimed “substantially planar substrate” and surfaces of
`
`the claimed “LED.” The ’486 patent consistently uses “major surface” to refer, as
`
`a matter of geometric orientation, to “a face that is greater in size than the other
`
`faces of the element being described.” Ex. 1003, ¶34. For example, with respect
`
`to LED 250, the ’486 patent describes that it has two opposed major surfaces,
`
`indicated by red and purple arrows below, respectively. Ex. 1001 at 5:7-22, 8:23-
`
`26, Fig. 2B; Ex. 1003, ¶34.
`
`
`
`
`
`11
`
`

`

`
`
`
`
`
`
`
`
`bottom major
`surface of LED 250
`
`
`
`top major surface
`of LED 250
`
`
`
`
`
`
`
`
`
`Thus, under BRI, a POSITA would have understood “major surface,” as
`
`recited in claims 1, 2, and 3, to refer, as a matter of geometric orientation, to “a
`
`face that is greater in size than the other faces of the element being described.” Ex.
`
`1003, ¶34.
`
`“metallized … major surface”
`
`2.
`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.” Ex. 1003, ¶35.
`
`
`
`While “metallized … major surface” is not expressly defined, use of the
`
`phrase in the specification supports this construction:
`
`
`
`12
`
`

`

`
`
`•
`
`“A metallization layer of aluminum located on the bottom
`
`surface of the semiconductor die is bonded to a conductive
`
`surface that forms part of the lead frame to attach and
`
`electrically connect the die to the lead frame.” Ex. 1001 at
`
`1:19-23 (emphasis added).
`
`•
`
`“In the example shown, semiconductor die 250 embodies a
`
`light-emitting diode and has anode and cathode electrodes (not
`
`shown) covering at least parts of its opposed major surfaces.”
`
`Ex. 1001 at 5:7-10, 8:23-26 (emphasis added).
`
`•
`
`“Semiconductor die 250 is mounted on packaging device 100
`
`with the metallization on its bottom major surface attached to
`
`mounting pad 130.” Ex. 1001 at 5:10-12 (emphasis added).
`
`•
`
`“The metallization on the bottom major surface of the
`
`semiconductor die 250 typically constitutes the cathode
`
`electrode of the light-emitting diode.” Ex. 1001 at 5:18-22
`
`(emphasis added); see also 8:26-31.
`
`•
`
`“The top major surface of semiconductor die 250 typically
`
`includes a bonding pad that is typically part of or connected to
`
`
`
`13
`
`

`

`
`
`the anode electrode of the light-emitting diode.” Ex. 1001 at
`
`8:34-37 (emphasis added).
`
`Ex. 1003, ¶36.
`
`
`
`This construction is further supported by dictionaries:
`
`• Metallization means, in relevant part, “[a] film pattern (single or
`
`multilayer) of conductive material deposited onto a substrate to
`
`interconnect electronic components, or the metal film on the
`
`bonding area of a substrate that becomes part of the bond and
`
`performs both electrical and mechanical functions.” Ex. 1013
`
`Modern Dictionary of Electronics, at 467 (7th ed. 1999).
`
`• “[M]etallize . . . to coat, treat, or combine with metal.” Ex. 1014,
`
`Merriam Webster’s Collegiate Dictionary, at 730 (10th ed.).
`
`Ex. 1003, ¶37.
`
`
`
`In the context of the ’486 patent, therefore, a POSITA would have
`
`understood the phrase to require only a portion of the major surface to have metal
`
`(such as a bonding pad or an electrode) thereon. Ex. 1003, ¶38.
`
`V. Analysis of the Patentability of Specific Grounds for Petition
`A. The Prior Art
`No prior art below was cited during prosecution.
`
`
`
`
`
`14
`
`

`

`
`
`The “Substrate Packaging Assembly” Prior Art
`
`
`
`The following references disclose substrate packaging assemblies that are
`
`structurally identical to the one claimed in the ’486 patent.4 Ex. 1003, ¶42.
`
`Nakajima
`
`1.
`Nakajima, entitled “Package for Housing Light Emitting Elements and
`
`
`
`Manufacturing Method for Same,” was published on August 16, 2002. Ex. 1004.
`
`Accordingly, it is prior art under pre-AIA 35 U.S.C. §102(a).
`
`
`
`Nakajima discloses that its “invention relates to a package for housing light
`
`emitting elements for accommodating a light emitting element such as a light
`
`emitting diode….” Ex. 1004, ¶0001; Ex. 1003, ¶43. Figure 1 of Nakajima is
`
`annotated below (substrate colored red; mounting and bonding pads colored green;
`
`LED colored blue; bonding wire colored gold; interconnecting elements colored
`
`purple; connecting pads colored orange). Ex. 1003, ¶43.
`
`
`
`
`4 The prior art figures below are annotated with the same color scheme as the
`
`above figures of the ’486 patent to show their similarities. Ex. 1003, ¶42.
`
`
`
`15
`
`

`

`
`
`
`
`Rohm
`
`2.
`Rohm, entitled “Surface Mount Semiconductor Device,” was published on
`
`
`
`January 17, 2003. Ex. 1005. Accordingly, it is prior art under pre-AIA §102(a).
`
`
`
`Rohm discloses a “surface mount type semiconductor light emitting device.”
`
`Ex. 1005, ¶0013; Ex. 1003, ¶45. Figure 1A of Rohm is annotated below (substrate
`
`colored red; mounting and bonding pads colored green; LED die colored blue;
`
`bonding wire colored gold; interconnecting elements colored purple; connecting
`
`pads colored orange). Ex. 1003, ¶46.
`
`
`
`16
`
`

`

`
`
`
`
`3. Matsushita
`Matsushita, entitled “Optical Semiconductor Device,” was published on
`
`
`
`December 21, 2001. Ex. 1006. Accordingly, it is prior art under pre-AIA §102(b).
`
`
`
`Matsushita’s “invention is related to an optical semiconductor device, for
`
`example, a surface mount type chip LED (light-emitting diode)….” Ex. 1006,
`
`¶0001; Ex. 1003, ¶47. Figure 2 of Matsushita is annotated below (substrate
`
`colored red; mounting and bonding pads colored green; LED die colored blue;
`
`bonding wire colored gold; interconnecting elements colored purple; connecting
`
`pads colored orange). Ex. 1003, ¶48.
`
`
`
`17
`
`

`

`
`
`
`
`The “LED” Prior Art
`
` The following references disclose LEDs that have metallized top and bottom
`
`major surfaces, such as the LED claimed in the ’486 patent. Ex. 1003, ¶49.
`
`4. Weeks
`Weeks, entitled “Gallium Nitride Material Devices and Methods Including
`
`
`
`Backside Vias,” was filed on February 23, 2001, and issued on August 26, 2003.
`
`Ex. 1007. Accordingly, it is prior art under pre-AIA §102(e).
`
`
`
`Weeks discloses an LED with metal contacts located on its top and bottom
`
`major surfaces, each comprising one of an anode and a cathode. Ex. 1007 at 3:39-
`
`62, 4:11-22, 5:49-64, 6:7-64, 9:32-52; Ex. 1003, ¶50. Weeks discloses that “[a]
`
`topside electrical contact 16 (on a topside 18 of the device) and a backside
`
`electrical contact 20 (on a backside of the device 22) are provided for connection
`
`to an external power supply that powers the device.” Ex. 1007 at 3:48-51; Ex.
`
`1003, ¶50. Weeks explains that “[t]opside contact 16 is formed of a p-type metal
`
`
`
`18
`
`

`

`
`
`and backside contact 20 is formed of an n-type metal.” Ex. 1007 at 9:45-46; Ex.
`
`1003, ¶50. Weeks further explains that “[b]ackside contact 20 and topside contact
`
`16 may be deposited using known techniques suitable for depositing conducting
`
`materials such as metals,” (Ex. 1007 at 8:43-45), and that “the phrase ‘electrical
`
`contact’ or ‘contact’ refers to any conducting structure on the semiconductor
`
`device that may be effectively contacted by a power source including electrodes,
`
`terminals, contact pads, contact areas, contact regions and the like,” (Ex. 1007 at
`
`6:7-21). Ex. 1003, ¶50. Regarding the material that comprises its contacts, Weeks
`
`states:
`
`Backside contact 20 and topside contact 16 are formed of conducting
`materials including certain metals…. For example, contacts 16, 20
`may contact n-type material or p-type material. Suitable metals for n-
`type contacts include titanium, nickel, aluminum, gold, copper, and
`alloys thereof. Suitable metals for p-type contacts include nickel, gold
`and titanium, and alloys thereof.
`
`Ex. 1007 at 6:7-21; Ex. 1003, ¶50.
`
`
`
`Weeks touts certain advantages of its invention, including that it can be used
`
`to produce smaller packaged devices, remove thermal energy generated during
`
`operation of the device, and enhance optoelectronic output efficiencies. Ex. 1007
`
`at 2:57-3:2; Ex. 1003, ¶51.
`
`
`
`19
`
`

`

`
`
`
`
`Weeks explains that, “the term ‘topside’ refers to the upper surface of the
`
`device and the term ‘backside’ refers to the bottom surface of the device. Thus, the
`
`topside is opposite the backside of the device.” Ex. 1007 at 4:19-22; Ex. 1003,
`
`¶52. Topside contact 16 and backside contact 20 are colored light blue below in
`
`Figure 4. Ex. 1003, ¶52.
`
`5. Kish
`Kish, entitled “Wafer Bonding of Light Emitting Diode Layers,” issued on
`
`
`
`December 27, 1994. Ex. 1008. Accordingly, it is prior art under pre-AIA §102(b).
`
`
`
`
`
`20
`
`

`

`
`
`
`
`Kish discloses an LED with metal electrodes located on its top and bottom
`
`major surfaces, each comprising one of an anode and a cathode. Ex. 1003, ¶53.
`
`Kish explains that “[e]lectrodes 142 and 144 are … formed on the upper surface of
`
`the patterned wafer 126 and the lower surface of the substrate 136.” Ex. 1008 at
`
`10:53-55, Fig. 14; Ex. 1003, ¶53. Kish further explains that the use of “metallized
`
`electrodes” for applying electricity to the active region of LEDs was “standard.”
`
`Ex. 1008 at 5:19-21, 7:48-55, 9:64-66, 10:53-55, 13:30-33, Fig. 7, Fig. 12, Fig. 14;
`
`Ex. 1003, ¶53. Top electrode 142 and bottom electrode 144 are colored light blue
`
`below in Figure 14. Ex. 1003, ¶53.
`
`
`
`
`
`21
`
`

`

`
`
`Edmond
`
`6.
`Edmond, entitled “Vertical Geometry Light Emitting Diode with Group III
`
`
`
`Nitride Active Layer and Extended Lifetime,” issued on June 4, 1996. Ex. 1009.
`
`Accordingly, it is prior art under pre-AIA §102(b).
`
`
`
`Edmond discloses an LED with metal contacts located on its top and bottom
`
`major surfaces, each comprising one of an anode and a cathode. Ex. 1009 at 5:9-
`
`12, 5:56-62; 7:67-8:5; Ex. 1003, ¶54. Edmond refers to its anode and cathode as
`
`“ohmic contact[s]” and explains that the ohmic contacts should be made of metal,
`
`“such as aluminum (Al), gold (Au), platinum (Pt), or nickel (Ni),” or other
`
`materials known to a POSITA to function as anode or cathode contacts. Ex. 1009
`
`at 5:9-12, 5:56-62; Ex. 1003, ¶54. Bottom ohmic contact 22 (located on
`
`conductive silicon carbide substrate 21) and top ohmic contact 30 (located on the
`
`oppositely facing surface) are colored light blue below in Figure 1. Ex. 1009 at
`
`4:66-5:12; Ex. 1003, ¶54.
`
`
`
`22
`
`
`
`

`

`
`
`The “Conductive Slug” Prior Art
`
`Jochym
`
`7.
`Jochym, entitled “Alternative to Through-Hole-Plating in a Printed Circuit
`
`
`
`Board,” was filed on November 21, 2001, and issued on June 8, 2004. Ex. 1010.
`
`Accordingly, it is prior art under pre-AIA §102(e).
`
`
`
`Jochym discloses forming an electrical interconnect between PCB layers by
`
`“placing a conductive stake, or conductive pin, in the through-hole.” Ex. 1010 at
`
`Abstract, 1:54-2:4, 6:19-23; Ex. 1003, ¶56. Jochym describes “using a ‘press fit’”
`
`to insert the conductive stake into a via/through-hole. Ex. 1010 at 6:19-23; Ex.
`
`1003, ¶56.
`
`
`
`Jochym explains that, “[i]n order to connect signal paths from one
`
`conductive layer to another conductive layer, holes (or through-holes) are drilled
`
`through a PCB and are subsequently coated, or plated, with a conductive
`
`substance,” but that this method proves problematic because as the PCB thickens,
`
`“there may be a concomitant increase in the amount of space, i.e., the diameter,
`
`required by through-holes….” Ex. 1010 at 1:22-54; Ex. 1003, ¶57. Jochym
`
`purports to solve this problem:
`
`[I]n accordance with the invention, instead of coating, or plating a
`through-hole with a conductive material to form a via—the via is
`formed by placing a conductive stake in the through-hole for
`electrically coupling foils disposed on at least two electrically
`
`
`
`23
`
`

`

`
`
`conductive layers together. Thus, as the thickness of a PCB increases,
`the diameter of the individual through-holes stay the same and the
`amount of space taken up by the through-holes does not change. In an
`embodiment of the invention, a conductive stake is inserted into a
`through-hole of a PCB for the purpose of forming a via…. The length
`of the conductive stake is at least as long as the distance between two
`conductive layers of the PCB. A diameter of the conductive stake is
`approximately greater than, or equal to, the diameter of the through-
`hole.
`
`Ex. 1010 at 1:55-2:4, Fig. 1; Ex. 1003, ¶57. Figure 1 below shows conductive
`
`stake 105 being press-fit into through-hole 125 to electrically interconnect layers of
`
`the PCB. Ex. 1003, ¶57.
`
`
`
`24
`
`

`

`
`
`
`
`B. Grounds 1-3: Nakajima, in view of We