`
`
`
`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 PRELIMINARY RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`THE CHALLENGED CLAIMS AND CLAIM CONSTRUCTION .............. 6 
`
`A. 
`
`B. 
`
`1. 
`
`2. 
`
`Claim Listing ......................................................................................... 6 
`
`Petitioner’s Proposed Claim Constructions Are Wrong ....................... 8 
`
`“major surface” ................................................................................ 9 
`
`“metallized … major surface” ........................................................ 11 
`
`III.  THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 13 
`
`A. 
`
`The Board Should Deny Institution of This IPR—One of Five IPRs
`Filed Against the ’486 Patent—Based on the General Plastic Factors
` ............................................................................................................. 15 
`
`B. 
`
`Grounds 1-3 Fail and Should be Denied Without Institution ............. 19 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Nakajima Does Not Disclose the Claimed “Electrically Conductive
`Mounting Pad,” “First Electrically Conductive Connecting Pad,”
`and “First Electrically Conductive Interconnecting Element”
`Recited in Claim 1 .......................................................................... 19 
`
`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 ........ 23 
`
`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........................................ 25 
`
`Petitioner’s Grounds 2-3 Challenges Fail Because Neither Kish
`Nor Edmond Teach or Suggest a “Metallized Top Major Surface of
`the LED” As Recited in Claim 2 .................................................... 27 
`
`- i -
`
`

`

`5. 
`
`6. 
`
`7. 
`
`Nakajima Does Not Disclose the Claimed “Electrically Conductive
`Bonding Pad,” “Second Electrically Conductive Connecting Pad,”
`and “Second Electrically Conductive Interconnecting Element”
`Recited in Claim 2 .......................................................................... 29 
`
`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........................................ 32 
`
`Petitioner’s Ground 1 Challenge Against Claims 4 and 5
`Erroneously Argues that the Claim 4 Feature Reciting “the First
`Electrically Conductive Interconnecting Element is Selected to
`Withstand an Operating Temperature When the LED is Mounted
`on the Electrically Conductive Mounting Pad” is Not Entitled to
`Patentable Weight .......................................................................... 35 
`
`C. 
`
`Grounds 4-6 Fail and Should be Denied Without Institution ............. 36 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Rohm Does Not Disclose the Claimed “Electrically Conductive
`Mounting Pad,” “First Electrically Conductive Connecting Pad,”
`and “First Electrically Conductive Interconnecting Element”
`Recited in Claim 1 .......................................................................... 36 
`
`Petitioner’s Grounds 4-6 Challenges 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 .................................................. 40 
`
`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 ........ 41 
`
`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 ............................................. 43 
`
`Petitioner’s Grounds 5-6 Challenges Fail Because Neither Kish
`Nor Edmond Teach or Suggest a “Metallized Top Major Surface of
`the LED” As Recited in Claim 2 .................................................... 45 
`
`- ii -
`
`

`

`6. 
`
`7. 
`
`Rohm Does Not Disclose the Claimed “Electrically Conductive
`Bonding Pad,” “Second Electrically Conductive Connecting Pad,”
`and “Second Electrically Conductive Interconnecting Element”
`Recited in Claim 2 .......................................................................... 47 
`
`Petitioner’s Grounds 4-6 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 Rohm’s LED ............................................. 50 
`
`D. 
`
`Petitioner’s Grounds 7-9 Challenges Against Claims 4 and 5
`Erroneously Argue that the Claim 4 Feature Reciting “the First
`Electrically Conductive Interconnecting Element is Selected to
`Withstand an Operating Temperature When the LED is Mounted on
`the Electrically Conductive Mounting Pad” is Not Entitled to
`Patentable Weight ................................................................................ 52 
`
`E. 
`
`Grounds 10-12 Fail and Should be Denied Without Institution ......... 52 
`
`1.  Matsushita Does Not Disclose the Claimed “Electrically
`Conductive Mounting Pad,” “First Electrically Conductive
`Connecting Pad,” and “First Electrically Conductive
`Interconnecting Element” Recited in Claim 1 ............................... 53 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Petitioner’s Grounds 10-12 Challenges 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 ....................... 56 
`
`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 ........ 57 
`
`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 ........................... 59 
`
`Petitioner’s Grounds 11-12 Challenges Fail Because Neither Kish
`Nor Edmond Teaches or Suggests a “Metallized Top Major
`Surface of the LED” As Recited in Claim 2 .................................. 62 
`
`- iii -
`
`

`

`6.  Matsushita Does Not Disclose the Claimed “Electrically
`Conductive Bonding Pad,” “Second Electrically Conductive
`Connecting Pad,” and “Second Electrically Conductive
`Interconnecting Element” Recited in Claim 2 ............................... 64 
`
`7. 
`
`Petitioner’s Grounds 10-12 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 Matsushita’s LED ................... 67 
`
`F. 
`
`Petitioner’s Grounds 13-15 Challenges Against Claims 4 and 5
`Erroneously Argue that the Claim 4 Feature Reciting “the First
`Electrically Conductive Interconnecting Element is Selected to
`Withstand an Operating Temperature When the LED is Mounted on
`the Electrically Conductive Mounting Pad” is Not Entitled to
`Patentable Weight ................................................................................ 68 
`
`G.  Grounds 16-24 Fail and Should be Denied Without Institution ......... 69 
`
`IV.  CONCLUSION .............................................................................................. 72 
`
`
`
`
`
`
`
`- iv -
`
`

`

`TABLE OF AUTHORITIES
`
`Cases 
`
`FedEx Corp. v. Intellectual Ventures II LLC,
`IPR2017-02030 (PTAB Feb. 20, 2018) (Paper 12) ....................................... 19
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357 (PTAB Sep. 6, 2017) (Paper 19) ............................ 16, 17, 19
`
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997) ........................................................ 35, 52, 68
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ..................................................................... 10
`
`NetApp Inc. v. Realtime Data LLC,
`IPR2017-01196 (PTAB Oct. 13, 2017) (Paper 10) ....................................... 17
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................... passim
`
`Statutes 
`
`35 U.S.C. § 154(a)(2) ................................................................................................. 8
`
`35 U.S.C. § 314(a) ...................................................................................... 13, 16, 17
`
`35 U.S.C. § 316 ........................................................................................................ 13
`
`35 U.S.C. § 316(a)(11) ............................................................................................. 17
`
`35 U.S.C. § 316(a)-(b) ............................................................................................. 15
`
`35 U.S.C. § 325(d) ................................................................................................... 17
`
`Rules 
`
`37 C.F.R. § 42 .......................................................................................................... 13
`
`37 C.F.R. § 42.22(a)(2) ............................................................................... 40, 56, 62
`
`37 C.F.R. § 42.65(a) .................................................................................... 26, 44, 60
`
`- v -
`
`

`

`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`37 C.F.R. § 42.104(b)(3)-(4) ...................................................................................... 9
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 11
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108(a) .................................................................................. 14, 16, 17
`
`37 C.F.R. § 42.108(b) .............................................................................................. 14
`
`37 C.F.R. § 42.108(c) ............................................................................................... 14
`
`37 C.F.R. § 42.120(a) ................................................................................................. 1
`
`Other Authorities 
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,612 (Aug. 14, 2012) .............. 14
`
`
`
`- vi -
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Document Security Systems,
`
`Inc. (“DSS” or “Patent Owner”) files this preliminary response to the Petition,
`
`setting forth reasons why the Petition for inter partes review (“IPR”) of U.S. Patent
`
`No. 7,256,486 (the “’486 patent”), claims 1-6, as requested by Nichia Corporation
`
`(“Petitioner”) should be denied.1
`
`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
`
`1 By submitting this Preliminary Response, no waiver of any argument is intended
`
`by Patent Owner. Patent Owner will have a right to file “a response to the petition
`
`addressing any ground for unpatentability not already denied” should the Board
`
`institute inter partes review. 37 C.F.R. § 42.120(a).
`
`-1-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`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
`
`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 Preliminary Response
`
`
`
`
`The Petition relies upon three primary references – i.e., Nakajima2, Rohm3,
`
`and Matsushita4 as allegedly disclosing the “electrically conductive mounting pad,”
`
`2 Ex. 1004, Japanese Patent Application Publication No. 2002-232017 with
`
`Certified Translation (“Nakajima”)
`
`3 Ex. 1005, Japanese Patent Application Publication No. 2003-17754 with Certified
`
`Translation (“Rohm”).
`
`-3-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`the “first electrically conductive connecting pad,” and the “first electrically
`
`conductive interconnecting element” recited in claim 1 of the ’486 patent. Claim 1
`
`also recites a specific physical arrangement between those three elements. The
`
`“first electrically conductive interconnecting element” extends through the
`
`substrate and electrically interconnects the “mounting pad” and the “first
`
`electrically conductive connecting pad.” But Petitioner has not established that
`
`these three elements, arranged as recited in the claims, are disclosed by the primary
`
`references. Instead, Petitioner consistently points to three different portions of a
`
`single structure as allegedly disclosing the three elements of claim 1, without
`
`support for its characterizations.
`
`Similarly, claim 2 recites an “electrically conductive bonding pad,” a
`
`“second electrically conductive connecting pad,” and a “second electrically
`
`conductive interconnecting element.” Similar to claim 1, the “second electrically
`
`conductive interconnecting element” extends through the substrate and electrically
`
`interconnects the “bonding pad” and the “second connecting pad.” Again,
`
`Petitioner has failed to establish the disclosure of these three features in any of the
`
`primary references. Instead, Petitioner points to three different portions of a single
`
`
`4 Ex. 1006, Japanese Patent Application Publication No. 2001-352102 with
`
`Certified Translation (“Matsushita”).
`
`-4-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`structure as allegedly disclosing the three elements of claim 2, without support for
`
`its characterizations.
`
`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 Weeks5, Kish6,
`
`and Edmond7 as allegedly disclosing these claim features. But 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.
`
`Claim 6 recites, in part, that the “first electrically conductive interconnecting
`
`element comprises a slug of electrically conductive material.” Petitioner relies on
`
`Jochym8 as allegedly teaching this claim feature. But 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. 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
`
`5 Ex. 1007, U.S. Patent No. 6,611,002 (“Weeks”)
`
`6 Ex. 1008, U.S. Patent No. 5,376,580 (“Kish”).
`
`7 Ex. 1009, U.S. Patent No. 5,523,589 (“Edmond”).
`
`8 Ex. 1009, U.S. Patent No. 5,523,589 (“Edmond”).
`
`-5-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`semiconductor packaging assemblies. Instead, Petitioner solely relies upon the
`
`unsupported assertions of its expert.
`
`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. The
`
`correct construction, consistent with the ’486 patent, is “an outer, substantially
`
`planar portion of the element being described which has the largest surface area of
`
`any surface of the element.” Petitioner construes “metallized … major surface” to
`
`include any surface so long as it has metal on a small part of the surface. The
`
`correct construction of “metallized … major surface” is “a major surface (as
`
`defined above) substantially covered with metal.”
`
`Petitioner also fail 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 and must
`
`be denied.
`
`II. THE CHALLENGED CLAIMS AND CLAIM CONSTRUCTION
`A. Claim Listing
`Challenged claims 1-6 of the ’486 patent recite (with the highlighting of
`
`elements to be addressed below):
`
`-6-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`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;
`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.
`
`
`-7-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`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.
`
`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
`
`B.
`The ’486 patent was filed in the United States 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
`
`-8-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`construction in light of the specification”9 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.”). While
`
`Patent Owner addresses Petitioner’s claim construction below, this analysis is
`
`limited to the present Preliminary Response. Patent Owner reserves the right to
`
`assert the same or different claim constructions of the following terms and/or other
`
`terms if trial is instituted.
`
`“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
`
`9 This standard is commonly referred to as the broadest reasonable interpretation
`
`standard, or “BRI.”
`
`-9-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`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 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 “major surface” is “an outer,
`
`substantially planar portion 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 portion of something. This is
`
`incorrect and inconsistent with the usage of the term “surface” in the ’486 patent.
`
`-10-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`Petitioner also defines “major surface” as being the one “face that is greater
`
`in size than the other faces of the element being described.” 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
`
`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,
`
`-11-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`and 3, to mean “a major surface having metal on at least
`a portion thereof.
`
`Pet., 12. This construction is wrong because it fails to consider that the claimed
`
`metallized surface must be a “major surface.” In particular, Petitioner fails to
`
`consider that a metallization layer, arranged on only a small fraction of a major
`
`surface, does not constitute a metallized major surface.
`
`
`
`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 include the following annotation in its discussion of Kish:
`
`
`
`Pet., 21. Petitioner offers no explanation why the area covered by electrode 142
`
`should be interpreted as a “major surface” of the LED. Further, there is no reason
`
`that a POSITA would have referred to the top major surface of Kish’s LED as
`
`
`
`-12-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`“metallized” simply because there is an electrode 142 covering a small portion of
`
`the top surface of the LED.
`
`For a metal electrode to constitute a “metallized top major surface” of an
`
`LED as recited in the claims, it must be metallized and it must constitute a top
`
`major surface of the claimed LED. Petitioner’s construction—a major surface
`
`having metal on at least a portion thereof—fails to account for the claim language
`
`requiring that the surface must be a “major” surface, i.e., the greatest surface in
`
`area, and this major surface must be metallized. Petitioner’s constructions and
`
`analyses of the asserted art improperly write these features out of the claims and
`
`cannot be correct. 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
`In order to justify the institution of an inter partes review, a petitioner must
`
`establish that there is a “reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §
`
`314(a). Further, prior to SAS Institute Inc. v. Iancu, 584 U.S. ___, 138 S. Ct. 1348
`
`(2018), the Director, as required by 35 U.S.C. § 316, implemented regulations in a
`
`manner that required claim-by-claim and ground-by-ground evaluation and
`
`permitted claim-by-claim and ground-by-ground institution. See 37 C.F.R. § 42.
`
`-13-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`In particular, 37 C.F.R. § 42.108(a) allowed the Board to “authorize the
`
`review to proceed on all or some of the challenged claims and on all or some of the
`
`grounds of unpatentability asserted for each claim.” Additionally, 37 C.F.R. §
`
`42.108(b) allowed the Board to “deny some or all grounds for unpatentability for
`
`some or all of the challenged claims” prior to institution of inter partes review.
`
`When denying a ground, 37 C.F.R. § 42.108(b) stated that such a “[d]enial of a
`
`ground is a Board decision not to institute inter partes review on that ground.”
`
`Moreover, under the heading “Sufficient grounds,” 37 C.F.R. § 42.108(c) provided
`
`that “Inter partes review shall not be instituted for a ground of unpatentability
`
`unless the Board decides that the petition supporting the ground would demonstrate
`
`that there is a reasonable likelihood that at least one of the claims challenged in the
`
`petition is unpatentable.” (emphasis added).
`
`In implementing these final rules, the Agency stated, “[t]he Board will
`
`identify the grounds upon which the review will proceed on a claim-by-claim
`
`basis. Any claim or issue not included in the authorization for review is not part of
`
`the review.” See 77 Fed. Reg. 48,689. Indeed, the Agency specifically stated that
`
`the regulations did not adopt comments requesting that “all challenged claims to
`
`be included in the inter partes review when there is a reasonable likelihood of
`
`prevailing with respect to one challenged claim.” See 77 Fed. Reg. 48,702-03.
`
`-14-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`Post-SAS, and though required under 35 U.S.C. § 316(a)-(b), the Agency has
`
`not issued new rules that would permit the Board to institute all grounds against all
`
`challenged claims even though a petitioner failed to establish a reasonable
`
`likelihood of prevailing on all challenged claims and all grounds. Therefore,
`
`should the Board find any challenge to any claim deficient, the sole permissible
`
`outcome, consistent with both the binary decision required under SAS and the
`
`Board’s governing regulations, is for the Board to deny institution of this inter
`
`partes review.
`
`Here, Petitioner has failed to establish that each of the challenged ’486
`
`patent claims are unpatentable over the asserted art. For the reasons discussed
`
`below, the Board should deny the Petition and decline to institute the inter partes
`
`review.
`
`A. The Board Should Deny Institution of This IPR—One of Five
`IPRs Filed Against the ’486 Patent—Based on the General Plastic
`Factors
`
`This IPR is the second of five IPR petitions filed to date against the claims
`
`of the ’486 patent. Seoul Semiconductor Corp. filed IPR2018-00333 against the
`
`’486 patent on December 21, 2017. The present Petition was filed by Nichia Corp.
`
`on May 30, 2018. Cree, Inc. filed IPR2018-01205 and IPR2018-01220 on June 6
`
`and 7, 2018, respectively. Everlight Electronics filed IPR2018-01225 against the
`
`’486 patent on June 8, 2018.
`
`-15-
`
`

`

`IPR2018-01166 Patent Owner’s Preliminary Response
`
`In General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357 (PTAB Sep. 6, 2017) (Paper 19), an expanded panel identified
`
`seven non-exclusive factors that bear on the issue of whether the Board should
`
`invoke its discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R. §
`
`42.108(a). These factors include:
`
`1.
`
`whether the same petitioner previously filed a petition directed to the
`
`same claims of the same patent;
`
`2.
`
`whether at the time of filing of the first petition the peti