`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner
`__________________
`
`Case No. IPR2018-01166
`Patent 7,256,486
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Page
`Introduction ...................................................................................................... 1
`Patent Owner Presents Attorney Argument, Not Evidence from the
`Perspective of a POSITA ................................................................................. 1
`III. Claim Construction .......................................................................................... 2
`A.
`“major surface” ...................................................................................... 2
`B.
`“metallized … major surface” ............................................................... 6
`C.
`Patent Owner’s “separate elements” argument is wrong ...................... 7
`IV. The Challenged Claims are Unpatentable ....................................................... 9
`A. Grounds 1-3: Nakajima and Weeks, Kish, or Edmond render
`obvious claims 1-5................................................................................. 9
`1.
`Claim 1 ........................................................................................ 9
`2.
`Claim 2 ...................................................................................... 15
`3.
`Claim 3 ...................................................................................... 17
`4.
`Claims 4-5 ................................................................................. 18
`B. Grounds 4-6: Rohm and Weeks, Kish, or Edmond render obvious
`claims 1-3 ............................................................................................ 18
`1.
`Claim 1 ...................................................................................... 18
`2.
`Claim 2 ...................................................................................... 20
`3.
`Claim 3 ...................................................................................... 21
`C. Grounds 7-9: Rohm and Weeks, Kish, or Edmond, in further view
`of Nakajima, render obvious claims 4-5 ............................................. 21
`D. Grounds 10-12: Matsushita and Weeks, Kish, or Edmond render
`obvious claims 1-3............................................................................... 22
`
`
`
`i
`
`

`

`
`
`E.
`
`Claim 1 ...................................................................................... 22
`1.
`Claim 2 ...................................................................................... 24
`2.
`Claim 3 ...................................................................................... 25
`3.
`Grounds 13-15: Matsushita and Weeks, Kish, or Edmond, in
`further view of Nakajima, render obvious claims 4-5 ........................ 25
`Grounds 16-24: The obviousness of claim 6 ....................................... 25
`F.
`Patent Owner’s Constitutionality Argument is Both Conclusory and
`Wrong ............................................................................................................ 28
`VI. Conclusion ..................................................................................................... 29
`
`
`V.
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................ 3
`
`
`Fitbit, Inc. v. Blackbird Tech, LLC,
`IPR2017-02012, Paper 28 (P.T.A.B. Mar. 11, 2019) ......................................... 29
`
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) ............................................................................ 1
`
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .................................................................... 15, 27
`
`
`Itron Network Solutions, Inc. v. Acoustic Tech., Inc.,
`IPR2017-01024, Paper 49 (P.T.A.B. Aug. 21, 2018) ........................................... 1
`
`
`Joy Techs. v. Manbeck,
`959 F.2d 226 (Fed. Cir. 1992) ............................................................................ 29
`
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 27
`
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .......................................................................... 27
`
`
`NTP, Inc. v. Research in Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005) ............................................................................ 8
`
`
`Retractable Techs., Inc. v. Becton, Dickson and Co.,
`653 F.3d 1296 (Fed. Cir. 2011) ............................................................................ 8
`
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 3
`
`
`Wasica Fin. GmbH v. Continental Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 2
`iii
`
`
`
`

`

`
`
`
`Wyers v. Master Lock Co.,
`Wyers v. Master Lock C0.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 27
`
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 27
`
`
`
`
`iv
`
`iV
`
`

`

`
`
`I.
`
`Introduction
`The Board correctly instituted review of claims 1-6, (see Paper 9), and
`
`should find all six claims unpatentable. The claims are directed to the combination
`
`of well-known light emitting diodes (such as those of Weeks, Kish, and Edmond)
`
`and well-known substrate packaging assemblies (such as those of Nakajima,
`
`Rohm, and Matsushita).
`
`As explained in the Petition and herein, the record evidence—including the
`
`’486 patent, the prior art, and Dr. Shealy’s unrebutted expert testimony—shows
`
`that each Ground renders the claims obvious.
`
`II.
`
`Patent Owner Presents Attorney Argument, Not Evidence from the
`Perspective of a POSITA
`As a threshold matter, Petitioner notes that Patent Owner’s Response suffers
`
`from a general defect: the failure to provide evidence or analysis beyond attorney
`
`argument. Such “attorney argument [is] not the kind of factual evidence that is
`
`required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465,
`
`1470 (Fed. Cir. 1997); Itron Network Solutions, Inc. v. Acoustic Tech., Inc.,
`
`IPR2017-01024, Paper 49, 26 (P.T.A.B. Aug. 21, 2018).
`
`Here, Patent Owner’s failure to provide evidence from the perspective of a
`
`POSITA should be fatal.
`
`
`
`1
`
`

`

`
`
`III. Claim Construction
`The Board in its Institution Decision properly rejected Patent Owner’s
`
`unsupported claim constructions. E.g., Paper 9, 10-15. Nothing has changed that
`
`warrants a different result; indeed, Patent Owner simply rehashes its arguments
`
`from its Preliminary Response. Compare Paper 8, 9-13 with Paper 13, 10-14.
`
`“major surface”
`A.
`The Board in its Institution Decision found that “the broadest reasonable
`
`construction of the term ‘major surface,’ consistent with the ’486 patent, includes
`
`‘an outer portion that is greater than the surface area of other surfaces,’ which need
`
`not be substantially planar…” Paper 9, 10-13. Petitioner offered a similar
`
`construction: as a matter of geometric orientation, a face that is greater in size than
`
`the other faces of the element being described. Pet., 11-12.
`
`Patent Owner does not address the Board’s claim construction; instead, it
`
`merely repeats its Preliminary Response attorney argument that a “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.” Paper 13, 10-11 (emphasis
`
`added).
`
`But, as the Board found, when viewed in the context of the ’486 patent,
`
`Patent Owner’s attorney argument seeks to improperly read in the unwarranted
`
`restriction that the “major surfaces” must be “substantially planar.” See Wasica
`
`
`
`2
`
`

`

`
`
`Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1281-82 (Fed. Cir.
`
`2017); Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366-68 (Fed.
`
`Cir. 2012); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
`
`2002). As Petitioner has argued from the beginning, the specification demonstrates
`
`that a “major surface” is a geometric orienting construct.1
`
`Patent Owner’s “substantially planar” argument is based solely on its
`
`assertion that “the ’486 patent consistently uses the term ‘surface’ to refer to an
`
`outer, substantially planar portion (i.e., a surface) of a substrate or semiconductor
`
`die.” Paper 13, 10 (citing Ex. 1001, Abstract, 1:20-242; FIGs. 1B, 2B).
`
`This argument is incorrect for two primary reasons.
`
`First, with respect to the planarity of the major surfaces, the patent claims
`
`only that the packaging “substrate” must be “substantially planar.” Ex. 1001,
`
`12:7-8; see also 3:43-46. The claims place no restriction on the particular shape of
`
`the admittedly well-known die’s major surfaces. See id., 12:6-55; Ex. 1003, ¶¶27,
`
`
`1 Patent Owner makes much of the alleged distinction between surface and face,
`
`but fails to explain what the distinction is or how it impacts any claim construction
`
`or invalidity analysis. See also Paper 9, 11. Petitioner respectfully submits that the
`
`prior art renders obvious the claims, regardless of the particular term used.
`
`2 This citation appears to be in error.
`
`
`
`3
`
`

`

`
`
`67, 71; Paper 9, 12. As the Board noted, it is improper to extend “the modifier
`
`‘substantially planar,’ which modifies only ‘substrate’ in claim 1, to also modify
`
`the separate term ‘major surface[].’” Paper 9, 12 (alteration in original).
`
`Second, with respect to the planarity of the LED, again, the ’486 patent only
`
`ascribes planarity to the packaging “substrate.” The ’486 patent acknowledges
`
`that the claimed LED with metallized top and bottom major surfaces where the
`
`surfaces comprise one of an anode and a cathode, respectively, was well known in
`
`the prior art. Ex. 1001, 1:20-24, 1:49-52; Ex. 1003, ¶¶27, 67. Consistent with this
`
`admission, the ’486 patent treats “semiconductor die 250” effectively as a
`
`geometric black box, noting that the figures do not show, e.g., the die’s “anode and
`
`cathode electrodes,” “one or more layers … of semiconductor material,” or the
`
`“bottom major surface … of the [die’s] substrate remote from the layers of
`
`(indium) gallium nitride….” Ex. 1001, 5:7-10, 5:35-51.
`
`The prior art is also in accord. Ex. 1007, 4:19-22; Ex. 1003, ¶¶50-52. For
`
`example, like the ’486 patent, Weeks uses “bottom surface” purely as a matter of
`
`geometric orientation: “[a]s shown in the figures, the term ‘backside’ refers to the
`
`bottom surface of the device,” and, “[t]hus, the topside is opposite the backside of
`
`the device.” Ex. 1007, 4:19-22 (emphasis added); FIG. 4 (below); Ex. 1003, ¶¶50-
`
`52; Pet. 18-19.
`
`
`
`
`
`4
`
`

`

`
`
`topside 18
`
`backside 22
`
`
`
`
`
`
`
`Relatedly, even if Patent Owner’s construction were generally correct,
`
`Patent Owner implies an overly narrow view of “planar,” particularly in its use of
`
`“planar” to distinguish Weeks. Paper 13, 24-25. Even if the ’486 patent were to
`
`require planarity of the major surfaces, the ’486 patent describes that a “major
`
`surface” can extend across through holes in which interconnects are placed. Ex.
`
`1003, ¶71; Ex. 1001, 3:43-49, 5:4-7; FIGs. 1B, 2B.3 This is seen in Figure 2B,
`
`below, which shows “substrate 110” (purple) with “opposed major surfaces 112
`
`and 114” (red and green, respectively)—despite the existence of “through holes
`
`
`3 Of course, it is Petitioner’s position that this disclosure of the ’486 patent strongly
`
`militates against reading “planar” into the claims.
`
`
`
`5
`
`

`

`
`
`116 and 118” in which “interconnecting elements” 120 and 122 are placed
`
`(yellow). Ex. 1001, 3:43-49, 5:4-7; FIGs. 1B, 2B; Ex. 1003, ¶71.
`
`
`Thus, even Patent Owner’s proposed construction would not exclude Weeks. See
`
`§§IV.A.1.c, IV.B.1.d, IV.D.1.d, below.
`
`“metallized … major surface”
`B.
`The Board in its Institution Decision properly found that “‘metallized…
`
`major surface,’ consistent with the ’486 patent, includes ‘a major surface having
`
`metal on at least a portion thereof.” Paper 9, 15. In doing so, the Board noted that
`
`“Patent Owner does not cite to any portion of the Specification or to any other
`
`evidence as supporting its proposed construction.” Id., 14.
`
`Patent Owner’s Response again provides no citations or other evidence.
`
`Contrary to Patent Owner’s unsupported attorney argument (which essentially
`
`argues as if the claim term were “metal major surface”), nowhere does the ’486
`
`patent describe that the top and bottom die surfaces are “substantially covered.” In
`
`fact, the patent teaches the opposite, consistently describing that metallization
`
`
`
`6
`
`

`

`
`
`requires only partial surface coverage, without specifying how much of the surface
`
`must be covered. Ex. 1001, 1:20-24, 5:7-12, 5:18-22, 8:23-37; see also Pet., 12-
`
`14; Ex. 1003, ¶¶35-38; Paper 9, 13-14; Ex. 1013, 4 (“metallization” is “[t]he
`
`selective deposition of metal film on a substrate…”); Ex. 1014, 4.
`
`Patent Owner’s “separate elements” argument is wrong
`C.
`Patent Owner repeats from its Preliminary Response its “separate elements”
`
`argument. Compare Paper 8, 19-22, 29-32 with Paper 13, 33-36. That is, Patent
`
`Owner argues—based solely on the claim language—that claim 1 requires “three
`
`separate elements”: (i) the “electrically conductive mounting pad;” (ii) the “first
`
`electrically conductive connecting pad;” and (iii) the “first electrically conductive
`
`interconnecting element.” Paper 13, 33. Patent Owner makes a parallel argument
`
`for claim 2: that it separately requires (i) the “electrically conductive bonding pad;”
`
`(ii) the “second electrically conductive connecting pad;” and (iii) the “second
`
`electrically conductive interconnecting element.” Id., 35-36.
`
`The Board properly rejected this “unpersuasive” argument, noting that “it
`
`attempts to add a limitation to claim 1.” Paper 9, 32.4 As the Board explained:
`
`Claim 1 requires the mounting pad and the connecting pad to each
`be electrically “interconnect[ed]” to the interconnecting element
`(Ex. 1001, 12:33-35), but does not otherwise specify whether they
`
`
`4 The Board did not separately address claim 2, but the same reasoning holds.
`
`
`
`7
`
`

`

`
`
`are separately formed, and, therefore, does not preclude their
`being integrally formed. In particular, claim 1 requires the
`mounting pad and the connecting pad to each be connected to the
`interconnecting element. Ex. 1001, 12:33-35. The Specification
`also makes clear that these three components are electrically
`interconnected. See id. at 2:16-18…. As shown in Figure 1B,
`mounting pads 130 and 140 are “electrically connected to opposite
`ends of interconnecting element 120.” Id. at 3:58-59. Thus, claim 1
`of the ’486 patent requires the claimed mounting pad, connecting
`pad,
`and
`interconnecting
`element
`to
`be
`“electrically
`interconnect[ed],” without specifying how these elements are
`formed. If anything, the requirement that these elements be
`interconnected is consistent with their being integrally formed,
`and certainly does not exclude that possibility.
`
`Id., 32-33 (emphasis added).
`
`
`
` There is nothing in the ’486 patent specification—which Patent Owner does
`
`not cite—to indicate that the parts must be “separate elements” in the manner
`
`suggested by Patent Owner, or that they cannot be formed in a single processing
`
`step. See Retractable Techs., Inc. v. Becton, Dickson and Co., 653 F.3d 1296,
`
`1303-04 (Fed. Cir. 2011); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
`
`1310 (Fed. Cir. 2005).
`
`
`
`8
`
`

`

`
`
`IV. The Challenged Claims are Unpatentable
`A. Grounds 1-3: Nakajima and Weeks, Kish, or Edmond render
`obvious claims 1-5
`Claim 1
`1.
`For Grounds 1-3, Patent Owner argues that (i) Nakajima fails to disclose
`
`“separate elements” for the claimed “electrically conductive mounting pad,” “first
`
`electrically conductive connecting pad,” and “first electrically conductive
`
`interconnecting element,” (Paper 13, 33-36); and (ii) “Petitioner has provided no
`
`evidence supporting why a POSITA would have substituted the LED in Weeks,
`
`Kish, or Edmond for the LED described in Nakajima,” (id., 26-28). For Ground 1,
`
`Patent Owner additionally argues that Weeks fails to disclose the claimed
`
`“metallized bottom major surface.” Id., 24-26.5
`
`Petitioner explains, in turn, why these unsupported attorney arguments fail.
`
`a.
`
`Patent Owner’s “separate elements” argument is
`legally and factually flawed
`Patent Owner’s “separate elements” argument rests exclusively on its
`
`incorrect claim interpretation. See §III.C. Notwithstanding, Patent Owner
`
`rehashes its Preliminary Response attorney argument, (compare Paper 8, 19-22,
`
`
`5 Patent Owner does not attempt to rebut that Kish’s or Edmond’s LED include a
`
`“metallized bottom major surface.”
`
`
`
`9
`
`

`

`
`
`29-32 with Paper 13, 33-36), which the Board found neither “supported by the
`
`record” nor “persuasive,” (Paper 9, 31-33).
`
`Moreover, just as in its Preliminary Response, Patent Owner incorrectly
`
`argues that Petitioner points to Nakajima’s “metallized wiring conductor 4a” for all
`
`three claim elements. Paper 13, 33-34. Although the Board’s Institution Decision
`
`pointed out this mistake, (Paper 9, 30-32), Patent Owner again misidentifies
`
`Nakajima’s “mounting unit 1a” as the “metallized wiring conductor 4a.” In actual
`
`fact, Petitioner identified three separate elements that are formed together as an
`
`integral structure—mounting unit 1a and the separate portions of metallized wiring
`
`conductor 4a—just like the ’486 patent:
`
`Pet., 27-28, 34-36; Ex. 1004, ¶¶0013-14, 27, 31, FIG. 1; Ex. 1003, ¶¶62-63, 75-78.
`
`
`
`
`
`10
`
`

`

`
`
`b.
`
`It would have been obvious to combine Nakajima
`and Weeks, Kish, or Edmond
`Patent Owner repeats its Preliminary Response attorney argument. Compare
`
`Paper 8, 25-27 with Paper 13, 26-28. The Board has already rejected this
`
`argument, finding that “Petitioner provides persuasive reasoning … which is also
`
`supported by the Shealy Declaration.” Paper 9, 38-41.
`
`As a threshold matter, Patent Owner again ignores much of the evidence that
`
`Petitioner put forth as to why the proposed combinations are simple, obvious
`
`substitutions.
`
`Patent Owner ignores that, while a POSITA would have understood that the
`
`bottom major surface of Nakajima’s LED comprises a metallized electrical contact,
`
`Nakajima is silent as to the details of its LED’s bottom major surface. Pet., 29; Ex.
`
`1003, ¶65. That is, Nakajima focuses on an improved package for housing
`
`LEDs—not on the LED itself (blue in Figure 1 below).
`
`
`
`
`
`11
`
`

`

`
`
`Patent Owner similarly ignores the ’486 patent’s admission that LEDs
`
`having a “metallized bottom major surface … comprising one of an anode or
`
`cathode” were well-known. Pet., 30; Ex. 1003, ¶¶66-67; Ex. 1001, 1:20-24, 1:49-
`
`52.
`
`Patent Owner further ignores Dr. Shealy’s explanation—consistent with the
`
`’486 patent’s admission—that a POSITA would have understood that, for an LED
`
`to actually work, the LED would necessarily have included an anode and cathode
`
`and that the bottom surface was often metallized to form the anode or cathode.
`
`Pet., 36-37; Ex. 1003, ¶¶66-67, 80; Ex. 1001, 1:20-24, 1:49-52.
`
`
`
`Having ignored this evidence, Patent Owner’s arguments should be
`
`dismissed.
`
`Further, with respect to Petitioner’s explanation that a POSITA would have
`
`been further motivated to use an LED that expressly discloses a metallized bottom
`
`major surface (such as Weeks, Kish, or Edmond) because the metallized bottom
`
`surface was known to have “advantageous functions,” e.g., (i) dissipating “thermal
`
`energy generated during … operation,” and (ii) providing optical improvements to
`
`the LED as the bottom surface acts “as a reflective layer [to] enhance output
`
`efficiencies,” (Ex. 1007, 2:57-3:2; Ex. 1003, ¶83), Patent Owner concedes that
`
`“Weeks does state that its backside contact can serve as a heat sink and as a
`
`
`
`12
`
`

`

`
`
`reflective layer which can enhance output efficiencies,” (Paper 13, 27 (citing Ex.
`
`1007, 2:63-3:2)). This should also end the matter.
`
`However, Patent Owner presents attorney argument taking issue with these
`
`known “advantageous functions.”
`
`With respect to heat dissipation, Patent Owner argues that, “critically,
`
`Weeks never compares the heat sinking capacity of its backside contacts to the heat
`
`sinking capacity of LEDs that are directly connected to conductors on a substrate”
`
`and “[t]hus, it would be improper to assume that Weeks backside contact provides
`
`heat sinking capacity greater than that possible with Nakajima’s LED mounted on
`
`metallized wiring conductor 4a.” Paper 13, 27. Patent Owner then concludes
`
`therefrom that there is “no evidence that Weeks provides superior heat sinking
`
`abilities to those of Nakajima.” Id.
`
`With respect to increased optical reflectivity, Patent Owner argues that
`
`“there is no evidence that the use of Weeks’ backside contact would provide
`
`greater optical output efficiencies than those disclosed in Nakajima,” arguing that
`
`“[i]ndeed, one of the main benefits of Nakajima is an arrangement that enhances
`
`the optical output of the LED package.” Id.
`
`These arguments are wrong, both as a matter of fact and a matter of law.
`
`As a matter of fact, Patent Owner presents a fundamental misunderstanding
`
`of Nakajima and Weeks, and Dr. Shealy’s explanation for substituting a well-
`
`
`
`13
`
`

`

`
`
`known LED of Weeks, Kish, or Edmond into Nakajima’s package. For example,
`
`contrary to Patent Owner’s assertion, Nakajima’s LED is mounted not on
`
`“metallized wiring conductor 4a,” but rather on the element identified as
`
`“mounting unit 1a.” Ex. 1004, ¶¶0013-14. Moreover, Patent Owner overlooks
`
`that Weeks is focused on the details of the LED to be mounted to a package, while
`
`Nakajima is focused on the package in which an LED is to be mounted. Thus,
`
`Weeks’ teachings regarding an improved LED (while not addressing the packaging
`
`in which it is intended to be mounted) and Nakajima’s teachings about an
`
`improved package (while not addressing the details of the LED mounted in the
`
`package) should be viewed as complementary, not mutually exclusive. Ex. 1003,
`
`¶¶40, 80-84.
`
`If anything, Nakajima’s lack of details about the particulars of its LED—
`
`coupled with a POSITA’s understanding of the benefits of well-known LEDs with
`
`a metallized bottom major surface comprising an anode or cathode (as explained in
`
`Weeks and by Dr. Shealy)—would have led a POSITA to substitute into Nakajima
`
`well-known LEDs, such as those of Weeks, Kish, or Edmond. Id., ¶¶65-68, 80-84.
`
`
`
`And, as a matter of law, there is no requirement that “Petitioner demonstrate
`
`the superiority of the proposed combination to provide a sufficient rationale to
`
`combine.” See Paper 9, 40 (emphasis added). As the Board noted, “[e]ven if
`
`better alternatives exist in the prior art, that ‘does not mean that an inferior
`
`
`
`14
`
`

`

`
`
`combination is inapt for obviousness purposes.’” Id. (quoting In re Mouttet, 686
`
`F.3d 1322, 1334 (Fed. Cir. 2012)).
`
`c. Weeks discloses the claimed “metallized bottom
`major surface” of the LED
`Patent Owner presents only attorney argument—based exclusively on its
`
`incorrect claim construction, (see §§III.A-B)—that Weeks does not disclose the
`
`claimed “metallized bottom major surface.” Paper 13, 24-25. That is, Patent
`
`Owner argues that Weeks’ backside contact 20 is not “substantially planar”
`
`because there is a via formed therethrough. Id., 25. The Board properly rejected
`
`this attorney argument. Paper 9, 37; see also §§III.A-B; Ex. 1003, ¶71.
`
`2.
`
`Claim 2
`
`For Grounds 1-3, Patent Owner argues that (i) Nakajima fails to disclose
`
`“separate elements” for the claimed “electrically conductive bonding pad,”
`
`“second electrically conductive connecting pad,” “second electrically conductive
`
`interconnecting element,” (Paper 13, 35-36); and (ii) “Petitioner has not provided
`
`evidence supporting why a POSITA would have substituted the LED in Weeks,
`
`Kish, or Edmond… for the LED described in Nakajima,” (id., 30-32). For
`
`Grounds 2-3, Patent Owner additionally argues that Kish and Edmond fail to
`
`
`
`15
`
`

`

`
`
`disclose the claimed “metallized top major surface.” Id., 28-29.6
`
`a.
`
`Patent Owner’s “separate elements” argument is
`legally and factually flawed
`Patent Owner’s argument rests exclusively on its incorrect claim
`
`interpretation. See §III.C. It fails for effectively the same reasons as its similar
`
`argument with respect to claim 1. See §IV.A.1.a.
`
`b.
`
`It would have been obvious to combine Nakajima
`and Weeks, Kish, or Edmond
`Patent Owner repeats its Preliminary Response attorney argument that
`
`Petitioner’s rationale for combining Nakajima and Weeks, Kish, or Edmond relates
`
`to independent claim 1 not dependent claim 2. Compare Paper 8, 32-33 with Paper
`
`13, 30-32. The Board has already rejected this argument, finding that “Petitioner’s
`
`rationale as provided for claim 1 with regard to a metallized bottom major surface
`
`applies similarly to the metallized top major surface, as recited in claim 2.” Paper
`
`9, 45.
`
`Moreover, Patent Owner ignores the ’486 patent’s admission regarding
`
`known LEDs, as well as Dr. Shealy’s explanation that a POSITA would have
`
`understood that (i) the top major surface would comprise the other of an anode or
`
`
`6 Patent Owner does not attempt to rebut that Weeks’ LED includes a “metallized
`
`top major surface.”
`
`
`
`16
`
`

`

`
`
`cathode because it would have been necessary for powering the LED, and (ii) the
`
`anode and cathode of such an LED would likely have been metal to facilitate
`
`ohmic contact formation. Pet., 46; Ex. 1003, ¶102.
`
`c.
`
`Each of Kish and Edmond discloses the claimed
`“metallized top major surface” of the LED
`Patent Owner presents only attorney argument—based exclusively on its
`
`incorrect claim construction, (see §III.B)—that Kish and Edmond do not disclose
`
`the claimed “metallized top major surface.” Paper 13, 28-29. The Board properly
`
`rejected this argument. Paper 9, 44-45; see also §III.B; Ex. 1003, ¶¶35-38.
`
`
`
`Even if Patent Owner’s construction were correct, it would nonetheless have
`
`been obvious to include in either Kish’s or Edmond’s LED a broad thin layer of
`
`metal across the top surface for spreading of the current, as evidenced by Weeks,
`
`Bhat, and Slater. Ex. 1003, ¶105; Pet., 46-48.
`
`Patent Owner does not actually argue otherwise. Instead, it focuses only on
`
`whether it would have been obvious to include a broad thin layer on Nakajima’s
`
`LED. Paper 13, 32. It makes no attempt to rebut that it would have been obvious
`
`to apply the broad thin layer across the top of Kish’s or Edmond’s LED.
`
`3.
`
`Claim 3
`
`Patent Owner presents no argument.
`
`
`
`17
`
`

`

`
`
`4.
`
`Claims 4-5
`
`Patent Owner’s only argument is to challenge Petitioner’s assertion that the
`
`additional limitation of claim 4 is a statement of function or intended purpose and
`
`thus not entitled to patentable weight. Paper 13, 37-38. Although Patent Owner is
`
`wrong that this limitation is entitled to patentable weight, (Pet., 49; Ex. 1003,
`
`¶111), it is of no moment, as Patent Owner does not even attempt to rebut
`
`Petitioner’s showing that—even if the limitation of claim 4 were entitled to
`
`patentable weight—the prior art in each Ground discloses both claims 4 and 5.
`
`B. Grounds 4-6: Rohm and Weeks, Kish, or Edmond render obvious
`claims 1-3
`For Grounds 4-6, Patent Owner presents effectively the same arguments as it
`
`did for Grounds 1-3.
`
`Claim 1
`1.
`For Grounds 4-6, Patent Owner argues that (i) Rohm fails to disclose the
`
`alleged “separate elements,” (Paper 13, 46-48); (ii) “Petitioner has provided no
`
`evidence supporting why a POSITA would have substituted the LED in Weeks,
`
`Kish, or Edmond for the LED described in Rohm,” (id., 41-42); and (iii) Petitioner
`
`allegedly does not identify which embodiments of Weeks, Kish, or Edmond it is
`
`relying upon, (id., 38-39). For Ground 4, Patent Owner additionally argues that
`
`Weeks fails to disclose the claimed “metallized bottom major surface.” Id., 39-40.
`
`
`
`18
`
`

`

`
`
`a.
`
`Patent Owner’s “separate elements” argument is
`legally and factually flawed
`Patent Owner’s argument rests exclusively on its incorrect claim
`
`interpretation. See §III.C. It rehashes its Preliminary Response argument.
`
`Compare Paper 8, 36-39 with Paper 13, 46-48. The Board found this argument to
`
`parallel Patent Owner’s argument regarding Grounds 1-3, which was neither
`
`“supported by the record” nor “persuasive.” Paper 9, 49, 31-33.
`
`Notwithstanding, Patent Owner’s attorney argument is premised entirely on
`
`Rohm’s Figure 1 including similar hashing for three separately identified and
`
`disclosed elements. Paper 13, 46-48. But, not only does Rohm disclose—just like
`
`the ’486 patent—that “die bonding electrode 18 and the electrode for first surface
`
`mounting 22 are electrically connected by the first connect electrode formed inside
`
`the first through hole 14,” (Ex. 1005, ¶0019 (emphasis added); Ex. 1003, ¶45), but
`
`Patent Owner conceded in IPR2018-00333 that there are no functional differences
`
`between Rohm and the ’486 patent claims, (Ex. 1016, 34:17-35:4).
`
`
`
`b.
`
`It would have been obvious to combine Rohm and
`Weeks, Kish, or Edmond
`Patent Owner presents effectively the same attorney argument for Grounds
`
`4-6 as it did for Grounds 1-3. This attorney argument fails for essentially the same
`
`reasons discussed in §III.A.1.b. See also Paper 9, 48; Ex. 1003, ¶¶122-127, 132-
`
`137.
`
`
`
`19
`
`

`

`
`
`c.
`
`Petitioner relies on the same embodiments of
`Weeks, Kish, and Edmond for Grounds 1-6
`There is no credible dispute that Petitioner is relying on the same
`
`embodiments of Weeks, Kish, and Edmond for each Ground (Weeks Figure 4,
`
`Kish Figure 14, and Edmond Figure 1).
`
`d. Weeks discloses the claimed “metallized bottom
`major surface” of the LED
`Patent Owner presents the same argument for Ground 4, as it did for Ground
`
`1. It fails for the same reasons discussed in §IV.A.1.c.
`
`2.
`
`Claim 2
`
`For Grounds 4-6, Patent Owner argues that (i) Rohm fails to disclose the
`
`alleged “separate elements,” (Paper 13, 48-49); and (ii) “Petitioner has not
`
`provided evidence supporting why a POSITA would have substituted the LED in
`
`Weeks, Kish, or Edmond… for the LED described in Rohm,” (id., 45-46). For
`
`Grounds 5-6, Patent Owner additionally argues that Kish and Edmond fail to
`
`disclose the claimed “metallized top major surface.” Id., 43-45.
`
`a.
`
`Patent Owner’s “separate elements” argument is
`legally and factually flawed
`Patent Owner’s argument rests exclusively on its incorrect claim
`
`interpretation. See §III.C. It fails for effectively the same reasons as claim 1. See
`
`§IV.B.1.a.
`
`
`
`20
`
`

`

`
`
`b.
`
`It would have been obvious to combine Rohm and
`Weeks, Kish, or Edmond
`Patent Owner repeats its Preliminary Response attorney argument that
`
`Petitioner’s rationale for combining Rohm and Weeks, Kish, or Edmond relates to
`
`claim 1 not claim 2. Compare Paper 8, 50-51 with Paper 13, 45-46. The Board
`
`has already rejected this argument, finding that it parallels its failed Grounds 1-3
`
`argument. Paper 9, 49.
`
`Moreover, as with Grounds 1-3, Patent Owner ignores the ’486 patent’s
`
`admission regarding known LEDs, as well as Dr. Shealy’s explanation that a
`
`POSITA would have understood that the anode or cathode on the top of the LED
`
`(such as Rohm’s surface electrode 30a) would likely have been metal to facilitate
`
`ohmic contact formation. Pet., 64; Ex. 1003, ¶151.
`
`c.
`
`Kish and Edmond each discloses the clai