`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION, and CREE, INC.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`____________
`
`Record of Oral Hearing
`Held: August 28, 2019
`____________
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and BRENT M.
`DOUGAL, Administrative Patent Judges.
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`Case IPR2018-01166
`Patent 7,256,486 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`PATRICK R. COLSHER, ESQUIRE
`THOMAS R. MAKIN, ESQUIRE
`OMAR AMIN, ESQUIRE
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, NY 10022-6069
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`WAYNE M. HELGE, ESQUIRE
`JAMES T. WILSON, ESQUIRE
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, August
`28, 2019, commencing at 1:00 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
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`USHER: All Rise.
`JUDGE DOUGAL: Please be seated, thank you. All right, we’re on
`the record. Just tell me when you’re ready. Okay, we’re good. Good
`afternoon, this is the oral court hearing for IPR 2018-01166, between
`Petitioner Nichia Corporation and Cree Incorporated, and Patent Owner,
`Document Security Systems Incorporated, concerning US Patent 7,256,486.
`Again, I’m Judge Dougal; this is Judge Moore. Via video in Dallas,
`we have Judge Hagy. Even though you’ve already presented yourself to
`Judge Moore and myself, we will go ahead and start over again, since this is
`a new transcript. So, if I can have both parties present themselves.
`MR. COLSHER: Patrick Colsher from Shearman & Sterling for
`Petitioner, Nichia Corp, and I also have with me my co-counsel Tom Makin.
`MR. HELGE: Good afternoon, Your Honor. Wayne Helge for Patent
`Owner, Document Security Systems, and the attorney arguing this case will
`be my colleague Mr. Jim Wilson, also of record. Thank you.
`JUDGE DOUGAL: Thank you. A reminder again, that because we
`have Judge on screen, to please refer to the slide number that you’re on, or
`where you are in the evidence. It will help her to follow along, and also
`helps make a better record for the transcript.
`So, we have 30 minutes per side, and Petitioner, would you like to
`reserve some time for rebuttal?
`MR. COLSHER: I’ll reserve 10 minutes, Your Honor.
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`JUDGE DOUGAL: 10 minutes, okay. I don’t think we need to
`review any other information. So, so any questions from either of the parties
`before we start?
`MR. COLSHER: No, Your Honor.
`MR. HELGE: No, Your Honor.
`JUDGE DOUGAL: Great. All right, Petitioner go ahead when
`you’re ready.
`MR. COLSHER: Good afternoon Your Honors. I’m on Slide
`Number 5. We’re here today to talk about Petitioner’s challenges to Claims
`1 through 6 of the 486 Patent.
`As can be seen from the figures on the screen, the 486 Patent is
`directed to an LED subject package with an LED mounted thereon. The
`LED can be seen in Figure 2A, on the bottom portion of this screen, and it’s
`the element that’s highlighted in blue.
`The claims then add certain details to the package itself, such as the
`interconnect, which is shown on the screen in purple, that extends through
`the substrate, which is shown in red.
`And then also certain details concerning the structural makeup of the
`LED, such as in Claim 1, what it refers to as a metallized bottom major
`surface. And then in Dependent Claim 2, what it refers to as a metallized
`top major surface.
`Although, those structural details are not actually shown in any of the
`figures. The figures themselves show Element 250 as a black box.
`So, if we turn to Slide Number 3, we’ve outlined Petitioner’s
`challenges to Independent Claim 1, and then Dependent Claims 2 through 6.
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`Now, we don’t think there are really any significant disputes that remain for
`the grounds with respect to Claims 1 through 5.
`Those grounds effectively just involve adding a convention of LED
`die with metallized top and bottom major surfaces, such as those of the
`Weeks, Kish, and Edmond prior art references. And then adding those to a
`conventional LED substrate package with pads on the top and bottom of
`substrate that are connected via an interconnect running there through, such
`as those disclosed in the Nakajima, Rohm, and Matsushita References.
`Now, Patent Owner’s only real challenge in this proceeding, and the
`primary focus of its papers, pertains to Dependent Claim 6.
`An issue there, as we understand it, is whether Petitioner has met its
`burden to show that it was obvious to use a known press-fitting technique to
`form the interconnect through the substrates in the prior art packages. And
`we would submit that the record evidence shows that Claim 6 was, in fact,
`obvious.
`So, I’m on Slide Number 9, and we’ve outlined what we see as, sort
`of, the disputes in this proceeding. As I mentioned a little bit ago, we think
`there are largely no disputes that remain, with respect to Claims 1 through 5,
`or at least no disputes, that it’s changed since the Institution Decision. We
`feel that the record is pretty consistent throughout and there’s nothing that’s
`really changed there.
`And so, we would submit that the record evidence for these claims,
`including the unrebutted testimony of Petitioner’s expert, Dr. Shealy, shows
`that these claims are obvious.
`In my opening, my plan is to briefly touch on the first two disputes,
`which concern the LEDs themselves, in particular, the structural makeup of
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`the LEDs. And those disputes are exclusively ones of claim construction
`where Patent Owner has proffered certain claim constructions that were
`rejected in the Institution Decision in this proceeding, and with respect to
`one of them, were actually rejected in a Final Written Decision in the IPR
`2018-00333, which involved the same claims and the same claim term. And
`that claim term is effectively the same claim term, that metallized major
`surface.
`As to the third and the fourth argument which concern Patent Owner’s
`separate elements challenge to the packaging prior art, as well as whether it
`would have been obvious to combine the packaging art and the LED art. I
`don’t plan to address those in my opening remarks. Of course, I’m happy to
`answer any questions there, or any other questions.
`I will say with respect to the separate elements arguments, we would
`submit that the record here shows that it fails for the same reasons as in the
`Final Written Decision in that IPR 2018-00333. We think that the records
`are the same there and that the separate elements argument is, as a matter of
`claim construction, incorrect.
`So, if we turn to Slide Number 7, we can see the LED prior art, and
`Petitioner included three LEDs in its grounds; it’s the Weeks, Kish, and
`Edmond References.
`And now, the issue pertains to the metallized bottom and top major
`surface. And for the Weeks Reference, which is all the way on the left side
`of the Slide Number 7, Patent Owner has argued that the bottom surface is
`not planar enough under its proposed construction.
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`For the Kish and Edmond References, the issue pertains to the top
`surface, and it argues under its proposed construction that the metallization
`on the top does not cover enough of the surface.
`And now, both Patent Owner’s arguments have been rejected as
`matters of claim construction, and we also would submit we think it’s
`contrary to the intrinsic and extrinsic evidence in this case.
`For Weeks in particular, which is shown, again, on the left, what
`Patent Owner says is that that bottom surface needs to be what it calls
`substantially planar, and thus Weeks does not have a metallized bottom
`major surface as in Claim 1. The Board rejected this construction also
`offered by Patent Owner in the Institution Decision, and nothing has
`changed since then.
`And even under its proposed construction, as Dr. Shealy, Petitioner’s
`expert explained in his initial declaration, and as was explained in the
`Petition, and then again in the reply -- and this testimony remains unrebutted
`-- is that consistent with the 486 Patent’s teachings concerning with major
`surfaces, a via or a through-hole, such as Via Number 24 that runs into the
`bottom surface of Weeks’ LED, does not transform a major surface into a
`nonmajor surface.
`Now, with respect to Kish and Edmond -- and those are in the middle
`and right-hand figures on Slide Number 7 -- the issue there is with respect to
`the top surface, and whether under Patent Owner’s construction the metal
`must substantially cover the surface.
`The Board, again, in the Institution Decision in this case, rejected that
`construction. It was also rejected in the 333 Final Written Decision, and we
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`would submit that the intrinsic and extrinsic record here demonstrate that a
`metallized major surface need only be partially covered with metal.
`And so, just to look very quickly -- and I’m on Slide Number 23 -- at
`the record evidence with respect to the metallized major surfaces. And so
`first on Slide Number 23, and if we look at the top, right-hand box, what we
`can see is an excerpt of the 486 Patent.
`The 486 Patent equates metallization to the cathode electrode. And
`we can see that at Column 5 beginning on around Line 20, where the Patent
`says, the metallization on the bottom major surface of Semiconductor Die
`250 -- that is, the LED die -- typically constitutes the cathode electrode of
`the light emitting diode. That is, it equates metallized bottom major surface
`with the cathode electrode.
`If you scroll back a few lines, and you look to the upper, left-hand
`corner of the box, we see at Column 5, Line 7, that this cathode, that it’s just
`equated to being the metallization, it explicitly says it needs only cover part
`of the major surface.
`And so, we think the intrinsic record is clear that metallized major
`surface means a major surface having metal on at least a portion thereof.
`On Slide Number 24, we can also see the extrinsic record. The
`extrinsic evidence demonstrates, for example, with contemporaneous
`dictionaries, that metallization is, among other things, the selected
`deposition of metal film. In other words, covering parts of, consistent with
`the 486 Patent’s teachings.
`And on Slide Number 25, we have Dr. Shealy’s testimony explaining
`that based on this intrinsic evidence, and based on its extrinsic evidence that
`one of ordinary skill would have understood the metallized major surface to
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`require only a portion of the major surface to be metallized; such as a
`bonding pad or an electrode.
`And again, this is consistent with the Institution Decision here, and
`the Final Written Decision in the parallel IPR. And so, we would submit
`that as properly construed, Weeks, Kish, and Edmond each have a
`metallized bottom major surface, as required by Claim 1, and a metallized
`top major surface, as required by Claim Number 2.
`Now I’ll shift to Slide Number 47, and on Slide Number 47 we reach
`the final dispute. And this is really where the real dispute that Patent Owner
`has put forth in this proceeding.
`And the question is, with respect to Dependent Claim 6 is, would it
`have been obvious to form Nakajima’s first electrically conductive
`interconnecting element, by press-fitting the slug into a through-hole located
`in the substrate. And I’ll explain, we sort of view this as two basic issues.
` Patent Owner is arguing that Petitioner is required to show that the
`obviousness of press-fitting tungsten specifically. And we would submit
`that this wrong, and the wrong inquiry.
`But, even if that was correct, we would submit that Petitioner,
`including through its unrebutted expert testimony of Dr. Shealy, did meet its
`burden of proving that one of skill would have applied Jochym’s press-
`fitting technique to the tungsten interconnects of Nakajima.
`So, if we look to Slide Number 49, we can see the claimed
`dependencies. And so, on Slide Number 49 what we see is that Claim 6
`depends from Claim 4 which depends from Claim 1. But it’s only Claim 5
`that actually has tungsten itself. But regardless, we would submit that the
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`record evidence shows that using Jochym’s press-fitting technique to form
`Nakajima’s interconnects was obvious.
`And so, on Slide Number 51, for example, we have Dr. Shealy’s
`unrebutted testimony explaining that there were a handful of known
`alternative methods to create electrically conductive interconnects, for
`example, through-hole plating, metal depositions, coating and press-fitting.
`Dr. Shealy also testified that one of skill would have used one or the
`other, depending on, for example, the thickness through which the
`interconnect had to reach in the substrate.
`And we would note that this testimony is consistent with the 486
`Patent itself, which does not purport to have invented any press-fitting
`techniques, or any other new techniques, for forming its interconnects
`through the substrate. Instead, it simply relies on admittedly known
`techniques.
`And we would submit that this evidence should be sufficient to render
`Claim 6 obvious under KSR and its progeny.
`JUDGE HAGY: Counselor, I have a question.
`MR. COLSHER: Of course, Your Honor.
`JUDGE HAGY: If it was known -- I mean, the reference that you
`cited for using this is printed circuit board art. If it was known in
`semiconductor die assembly, why didn’t you cite art in that specific subs
`MR. COLSHER: We don’t think it was necessary in order to meet
`our burden here, and we would submit that the question here is analogous
`art. And so, you know, we would submit that the analogous art here, the
`semiconductor art in general, of which a subset could be considered LED
`art.
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`JUDGE HAGY: Well, what about the difference in size. I believe
`Dr. Shealy testified that there’s a difference in the through-holes at
`Nakajima of about 100 microns that were about a third the size of the
`through-holes in Jochym. But he didn’t account for that in his declaration,
`did he?
`MR. COLSHER: Well, what he said in his declaration, Your Honor,
`was that it would have been obvious to use the technique that Jochym
`teaches; so, the press-fitting technique itself as applied to the packages in the
`interconnects of the substrate packages.
`And as he explained during this deposition, you would appropriately
`size the slug within the package itself. And so, there was a large, I think,
`discussion; there was a bunch of Q & A during his deposition talking about
`the sizings of the package.
`But what he also explained -- what we think is important -- is that the
`actual size isn’t all that important. What it is, is, you have a technique, and
`one of skill would have understood that they’re interchangeable or
`alternative techniques, and you would have chosen one or the other
`depending on certain criterion that you’re looking at.
`And so, as Dr. Shealy explained -- and again, his testimony in this
`case is entirely unrebutted -- he explained that you would appropriately size
`the conductive slug, for example, to work in the varying packages.
`And there’s no dispute that the interconnects of Nakajima, for
`example, were known to withstand high temperature, and were known to be
`low-resistance conductors.
`So, the only real question is whether, you know, when we get it into
`the sizing of the diameter of the slugs that are then press-fit in there; and as
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`he explained, I mean, that’s all Claim 6 required, is to size it appropriately.
`To press-fit it through.
`JUDGE HAGY: I mean, maybe, you say he said that in his
`deposition, but is that in the record as part of Petitioner’s showing in the
`Petition? I mean, how is this not a new theory in reply that you’re getting
`use of -- well, I mean, I guess what you’re saying is Claim 6 doesn’t
`necessarily require tungsten, but it does require -- you’re saying that the
`conductive stake of Jochym can be used. But does he connect the dots for
`us?
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`Does he tell us what material we would use for that stake, and that it
`would meet all these limitations, and that you could size it down and that it
`would work? Does he connect the dots for us?
`MR. COLSHER: Well, I think what he does in his initial declaration
`is he explains that they were known alternatives, and that one of skill would
`have taken that technique and applied the technique generally to press-fit the
`interconnects in Nakajima, or by extension Rohm, or Matsushita.
`And I think as to the question regarding new evidence or new
`argument, we don’t really see it that way. What we see is the record
`develops, and the record in consistence with cases like Yeda Research and
`Genzyme, as the Federal Circuit has instructed us, the record is expected to
`develop throughout the proceedings.
`And so, the theory remains the same, but the evidence has developed,
`including through deposition testimony. And I’m sure that Patent Owner
`will point out certain issues that it believes it has raised with respect to Dr.
`Shealy’s theory in Patent Owner’s testimony.
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`And so, for example, to try to turn back to the core, we can see in
`Slide Number 52, and we can see in particular Paragraph 227, which is
`included in the Petition as well, Dr. Shealy expressly explains his opinion
`that it would have been obvious for one of skill to press-fit a conductor slug
`into the through-holes of Nakajima to form Nakajima’s first electrically
`conductive interconnecting element, as it would be merely require
`substituting one known technique for another, that is forming an
`interconnect by press-fitting into a through-hole, for example.
`And so, we think that the record does show on this, and his testimony
`is unrebutted, that Claim 6 would have been obvious.
`JUDGE HAGY: I still have just maybe a lingering question on this. I
`see that in Paragraph 227 that he doesn’t say what the material would be
`comprised of. And, if you’re saying it doesn’t have to be tungsten, maybe
`he doesn’t make -- what material would we take away from this would be
`used as that conductive slug, and where does he connect the dots of the
`materials satisfying the limitations of Claim 4?
`MR. COLSHER: Well, I’ll turn back to Slide Number 50. Again, as I
`mentioned awhile ago, Claim 6 depends from Claim 4; so, it is true that Dr.
`Shealy used the exemplary identification of tungsten as the interconnects
`that was known in Nakajima, and that tungsten was known to be able to
`withstand high temperatures and be a low-resistance conductor.
`So, we are to some extent looking back to Claim 4, and Dr. Shealy’s
`testimony on Claim 4, and building on that in order to reach Claim 6.
`And so, what Dr. Shealy ultimately said, we would submit, is that it
`would have been obvious to press-fit the interconnects such as the tungsten
`interconnects used in Nakajima’s package.
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`JUDGE HAGY: And we know from what source that you can use
`tungsten as a conductive slug?
`MR. COLSHER: As a conductive slug?
`JUDGE HAGY: I mean it sounds like -- from what you replied in
`your reply, you said that it would have been obvious to press-fit a tungsten
`interconnect – your sur-reply at Page 26.
`And then you cite to Dr. Shealy, but Dr. Shealy never actually says --
`he says you can cut through the slug, but he never actually says the slug
`would be tungsten. And, I don’t know what we have in the record that you
`could use tungsten as a slug.
`What we have is a paste, but how would we expect like, you could
`make it as a slug?
`MR. COLSHER: Well, two things on that point. First, Dr. Shealy
`testified that the interconnects, for example, in Nakajima, met Claim 4.
`So, when we get to Claim 6, when we get to that discussion in
`Paragraph 227, and Dr. Shealy saying it would have been obvious to press-
`fit the interconnects of Nakajima; what he’s really saying there, right, is that
`he’s saying, these are the Nakajima’s interconnects, and so his testimony is
`that it would have been obvious to use the technique from Jochym, and
`apply it to the interconnects in Nakajima.
`And that is what we would submit that as sufficient in order to meet
`the burden here. So, unless there’s any further questions, I will yield the rest
`of my time.
`JUDGE DOUGAL: Thank you. Mr. Wilson, would you like to
`reserve any time for rebuttal at the end.
`MR. WILSON: Yes, Your Honor. Three minutes, please.
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`JUDGE DOUGAL: Three minutes, okay; whenever you’re ready.
`MR. WILSON: May it please the Board. I’d like to focus on Claim
`6, and with Claim 6, it’s a Dependent Claim. It depends from Claim 4, and
`it depends from Claim 1.
`Claim 1 recites an electrically conductive interconnecting element that
`connects two pads on a substrate.
`Claim 4 further requires that the interconnect can withstand the
`operating temperature of an LED and provide a low-resistance electrical
`connection.
`Those are limitations, structural limitations on the interconnecting
`elements. There’s been a suggestion that that’s simply an intended use. I
`didn’t hear that today, but it’s simply not the case.
`I would point to the decision in Matthews International versus Vandor
`Corporation, IPR 2016-112, which dealt with a limitation that wasn’t alleged
`to be intended use, and it was rejected by the Board. Ultimately, a non-
`precedential decision was affirmed by the Federal Circuit.
`Claim 4 requires that interconnects have certain properties, and at
`Claim 6 it is further required that --
`JUDGE HAGY: Counsel, can you tell me the slide numbers that
`you’re on?
`MR. WILSON: Oh, sorry, Slide 5, yes 5.
`JUDGE HAGY: Okay.
`MR. WILSON: Claim 6 further requires that the interconnect is a
`slug of electrically conductive material that is then press-fit through a
`substrate.
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`Patent 7,256,486 B2
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`Now, what the Federal Circuit teaches us for an obviousness case is
`that you have to show how a combination meets the claim limitations. How
`the combination is put together. And also, why a person of ordinary skill in
`the art would put it together. And support that -- as how, and why -- with
`reasoning.
`You can find that guidance in the Federal Circuit in Personal Web
`Technologies, and integrated base of their other cases. But you have to
`show how and why a combination is put together in order to establish
`obviousness.
`And if I can turn to Slide 6, we’ll see that Petitioner has failed on both
`the “how” and the “why” requirement.
`In the “how” requirement, they noted that tungsten could possibly
`meet the limitations of Claim 4, and that’s in Nakajima there’s a tungsten
`paste. Then on Slide 7, to try to meet the requirements of Claim 6, they
`looked at Jochym and its teaching of a conductive slug.
`And what their theory was, was that it would be a substitution. So,
`the “how” and the “why” are a separate question of whether a person or
`ordinary skill in the art could do something.
`The “could” -- if something is a substitute, that’s a “could” issue. It’s
`not a “how” or “why.” So, then they have a suggestion to substitute a slug
`into Nakajima and the other references.
`And going to Your Honor’s question, what is the material of that slug
`that is being substituted? It’s never specified. They never connect the dots.
`They never tell you what are the properties of that slug. And they never tell
`you whether that slug that is substituted would satisfy the properties of
`Claim 4. So that “how” is clearly missing.
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`And then later on they say they give you a “why.” And in the bottom
`of Slide 7, they give you a “why,” and then the “why” -- I think I heard
`counsel say, size wasn’t very important.
`Well, size in their “why” in their Petition was very important. They
`said it would allow the through-hole to maintain a small diameter. That’s a
`size requirement, and that’s been completely abandoned here. And I think
`that essentially concedes their case on “why” a person of ordinary skill in the
`art would make this combination.
`But that’s the theory in (inaudible) to Slide 7 is their Petition. Later,
`their expert explains something else.
`When we turn to their expert, it’s contained on Slide 8, Paragraph
`227, it’s parroting what’s in the Petition. There’s no more analysis. There’s
`no reasoning to any of the “hows” or “whys” that are presented. It’s the
`same theory. There’s just no there, there.
`Now, again, if it’s just a substitution of using Jochym’s conductive
`stake into Nakajima, there’s been no showing that Jochym’s stake can
`satisfy the requirements of Claim 4. None at all.
`Slide 10, testimony from Dr. Shealy, can’t find tungsten in Jochym.
`Slide 11 -- and this is a key slide -- Slide 11 is Dr. Shealy’s testimony
`where he admits that he did not look as to whether you could use tungsten
`for his material for the conductive stake in Jochym. So, it’s clear there’s no
`record evidence that you could use tungsten as a conductive stake.
`There are other problems with the “how” and understanding how this
`combination is behaving in Slide 12 and 19, but I think it’s critically, again,
`on Slide 11, there really is no tungsten conductive stake. There’s no theory
`to meet the limitations in Claim 4.
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`JUDGE MOORE: You don’t think the disclosure of Nakajima is
`sufficient?
`MR. WILSON: Nakajima has a conductive paste, and they’re relying
`on the properties of the tungsten paste to meet Claim 4. But the issue is the
`tungsten in their combination never gets into -- they substituted, in their
`combination, they’ve gotten rid of the paste of Nakajima.
`What they put in is undefined. It’s not explained. What the properties
`of the conductive stake that their combination ends up with -- the “how” -- is
`never really defined. The dots are not connected.
`JUDGE MOORE: Thank you.
`MR. WILSON: So, let’s again turn to the “why” issue. The “why” is
`to maintain a small diameter when a substrate gets thick.
`They’ve gone to Jochym. They filed this printed circuit board
`disclosure, and short of, it’s almost a quote out of Jochym, that as the
`thickness of a printed circuit board raises, his techniques allow the diameters
`of the through-holes to stay the same. That’s in the printed circuit board
`(inaudible)
`JUDGE DOUGAL: Not Slide 14?
`MR. WILSON: That’s Slide 14, yes. And Slide 15, again, they’re
`just reproducing their expert’s argument, also in the Petition, that’s their
`motivation: allow something to maintain a small diameter.
`The issue is, on Slide 16, 17, and 18, is that the through-holes of
`Nakajima are already smaller than the through-holes in Jochym. So, a
`person of ordinary skill in the art wanting to maintain a small diameter of a
`through-hole wouldn’t need to go to Jochym; it’s already small.
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`And there’s also no evidence about the thickness of the substrate in
`the LED art, compared to the PCB art.
`The reasoning -- they give this quote from Jochym -- sort of out
`context, but they don’t back that up with any reasoning of adaptability to the
`LED art; it’s simply absent.
`And, in their reply there’s a suggestion that you might want to make
`the through-holes bigger in the LED art. Well, that’s not in the Petition,
`that’s clearly their theory, to make something bigger -- and I heard today,
`size doesn’t matter. Again, that was their theory. With that, I think that
`addresses the issues with Claim 6.
`I’ll go on to the next issue, which is the metallized major surface.
`This is Slide 21. In the 486 Patent there’s a difference between major
`surfaces and pads. Those are different terms. It’s consistent throughout the
`486 Patent. It’s in the claims, on Slide 22, it’s in the abstract. It’s in the
`drawings, Slide 23. Slide 24, again the drawings; pads, major surfaces; two
`different things.
`The issue, and the problem, on Slide 25, is that what Petitioner has
`defined a metallized major surface to be, is a pad. They say a major surface
`has a metal on at least a portion of thereof.
`So, a metal on at least a portion of major surface. That’s a pad.
`That’s the definition in the 486 Patent of a pad. It’s not the definition of a
`metallized major surface.
`And I think the way this construction came about is that they tried to
`break it apart, and they tried to analyze; first, we’re to going to say what a
`major surface is, and then next we’re going to define what metallized is.
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`And that led to error, in my opinion, because whole term is metallized
`major surface. If you start breaking it apart, you’re going to start leaving out
`the word major.
`In their construction, it doesn’t matter how small the portion of metal
`is, it’s -- under their definition -- a major surface. You have to read the
`limitation in its entirety.
`And, another point is throughout the specification of the 486 Patent,
`metallization is referred to as a layer on the bottom surface of the die. It’s
`always a layer. So, when you see the word metallized or metallization, in
`the 486 Patent, it’s a layer.
`I’ll point you to Column 5, Lines 49 to 51. So, it’s the bottom major
`surface is coated with a metallization layer. That coating is consistent with
`the extrinsic evidence that Petitioner is relying on.
`Metallization is a coating. That’s entirely consistent with how the 486
`Patent is using the term.
`Now, the Petitioner relies on a statement on their Slide 23, and that
`statement, on Column 5, Line to 12, says that the semiconductor die has
`anode and cathode electrodes covering at least parts of its supposed major
`surfaces. And they contend that’s some inconsistency. Well, there’s no
`inconsistency.
`Claim 1 requires a metallized bottom major surface. In Claim 1 the
`surface is entirely covered with metal. The top surface in Claim 1 is not
`defined. So, the requirement to have at least parts of its post major surfaces
`with electrodes is still satisfied. There is no inconsistency.
`JUDGE MOORE: But Column 5 is talking about the bottom major
`surfaces?
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