Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 24
`Entered: November 19, 2019
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`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.
`_______________
`
`IPR2018-011661
`Patent 7,256,486 B2
`_______________
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
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`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 Cree, Inc., who filed a Petition in IPR2019-00506, has been joined as a
`petitioner in this proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 24
`Entered: November 19, 2019
`
`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.
`_______________
`
`IPR2018-011661
`Patent 7,256,486 B2
`_______________
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 Cree, Inc., who filed a Petition in IPR2019-00506, has been joined as a
`petitioner in this proceeding.
`
`
`
`IPR2018-01166
`Patent 7,256,486 B2
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`INTRODUCTION
`I.
`Nichia Corporation2 filed a Petition (Paper 2, “Pet.”) to institute an
`inter partes review of claims 1–6 (the “challenged claims”) of U.S. Patent
`7,256,486 B2 (Ex. 1001, the “’486 patent”). Document Security Systems,
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
`Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of
`all challenged claims on all grounds presented in the Petition. Paper 9
`(“Inst. Dec.”). Patent Owner filed a Patent Owner Response (Paper 13, “PO
`Resp.”), Petitioner filed a Reply (Paper 15, “Pet. Reply”), and Patent Owner
`filed a Sur-Reply (Paper 17, “PO Sur-Reply”).
`Following institution, Cree, Inc., timely filed a motion for joinder in
`Case IPR2019-00506, in which it challenges the same claims of the ’486
`patent on the same grounds on which we instituted review in this
`proceeding. See IPR2019-00506, Paper 1 (Petition), Paper 3 (Motion for
`Joinder). To administer the proceedings more efficiently, we granted the
`motion, joining Case IPR2019-00506 with the instant proceeding. Paper 14;
`IPR2019-00506, Paper 7. For purposes of this Decision, we refer to Nichia
`Corporation and Cree, Inc., jointly, as “Petitioner.”
`On August 28, 2019, we conducted an oral hearing. A copy of the
`transcript (Paper 23, “Tr.”) is included in the record.
`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–5 of the ’486 patent are unpatentable, but has not
`
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`2 Petitioner, Nichia Corporation, identifies Nichia America Corporation as a
`real party-in-interest. Pet. 1.
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`shown by a preponderance of the evidence that claim 6 is unpatentable. This
`final written decision is issued pursuant to 35 U.S.C. § 318(a).
`
`II. BACKGROUND
`A. Related Proceedings
`Petitioner states the ’486 patent has been asserted by Patent Owner
`
`against Nichia Corporation and Nichia America Corporation in Document
`Security Systems, Inc. v. Nichia America Corp., et al., No. 2:17-cv-08849,
`pending in the Central District of California. Pet. 1; see also Paper 5, 2.
`Petitioner also states the ’486 patent has been asserted by Patent
`Owner in several other court proceedings: Document Security Systems, Inc.
`v. Everlight Americas Inc., et al., No. 2:17-cv-00310 (E.D. Tex.); Document
`Security Systems, Inc. v. Everlight Americas Inc., et al., No. 2:17-cv-04273
`(C.D. Cal.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-
`00309 (E.D. Tex.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-
`cv-04263 (C.D. Cal.); Document Security Systems, Inc. v. Seoul
`Semiconductor Co., Ltd., et al., No. 2:17-cv-00308 (E.D. Tex.); Document
`Security Systems, Inc. v. Seoul Semiconductor Co., Ltd., et al., No. 8:17-cv-
`00981 (C.D. Cal.); Document Security Systems, Inc. v. OSRAM GmbH, et
`al., No. 2:17-cv-05184 (C.D. Cal.); and Document Security Systems, Inc. v.
`Lite-On Tech. Corp., et al., No. 2:17-cv-06050 (C.D. Cal.). Id. at 1–2.
`Patent Owner identifies the same proceedings. Paper 5, 2–3.
`Petitioner also states the ’486 patent is subject to the following
`petition for inter partes review: Seoul Semiconductor Co., Ltd. v. Document
`Security Systems, Inc., No. IPR2018-00333 (“the ’333 IPR”). Pet. 2; see
`also Paper 5, 3. In addition to the ’333 IPR, Patent Owner identifies several
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`other inter partes review proceedings as ones that may also affect or be
`affected by a decision in this proceeding. Paper 5, 3–4. The ones involving
`the ’486 patent are: IPR2018-01205 (U.S. Patent No. 7,256,486) (trial
`instituted, joined with IPR2018-00333, Paper 11); IPR2018-01220 (U.S.
`Patent No. 7,256,486) (institution denied, Paper 9); IPR2018-01225 (U.S.
`Patent No. 7,256,486) (trial instituted, joined with IPR2018-00333, Paper
`14). Id.
`On June 10, 2019, the Board issued its final written decision in the
`’333 IPR, in which the Board determined that all challenged claims (claims
`1–3) of the ’486 patent are unpatentable. IPR2018-00333, Paper 33 (“the
`’333 FWD”).
`
`B. The ’486 Patent
`The ’486 patent generally relates to a semiconductor packaging
`device. Ex. 1001, Abstract. The semiconductor packaging device can
`include a light emitting diode (LED). Id. at 5:20–22. A semiconductor
`device is illustrated in Figures 2A and 2B, reproduced below. Id. at 3:5–8.
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`Figure 2A shows a perspective view of semiconductor device 200,
`including semiconductor die/LED 250. Ex. 1001, 3:5–8, 6:5–7. Figure 2B
`is a side view of semiconductor device 200. Id. at 3:5–8. Substrate 110,
`having major surfaces 112, 114, is shown having mounting pad 130 and
`bonding pad 132 on top major surface 112, and connecting pads 140, 142 on
`bottom major surface 114. Id. at 3:43–57, 4:64–66. Interconnecting
`elements 120, 122 pass through substrate 110 and connect mounting pad 130
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`with connecting pad 140, and bonding pad 132 with connecting pad 142. Id.
`at 3:58–67. Wire 254 connects LED 250 with bonding pad 132. Id. at 5:15–
`17. Encapsulant 252 is shown covering top major surface 112 of the
`substrate, including LED 250, wire 254, mounting pad 130 and bonding pad
`132. Id. at 5:12–15, Figures 2A, 2B.
`The Specification also describes LED 250 as including “anode and
`cathode electrodes (not shown) covering at least parts of its opposed major
`surfaces.” Id. at 5:8–10. The “top major surface of [LED] 250 typically
`includes a bonding pad that is typically part of or connected to the anode
`electrode” of the LED. Id. at 8:34–37. LED 250 is mounted on packaging
`device 100 with metallization on its bottom major surface attached to
`mounting pad 130. Id. at 5:10–12. The “metallization on the bottom major
`surface of [LED] 250 typically constitutes the cathode electrode” of the
`LED. Id. at 5:20–22, 8:29–31.
`C. Illustrative Claim
`All claims (1–6) of the ’486 patent are contested. Claim 1 is
`independent, claim 2 depends from claim 1, claim 3 depends from claim 2,
`claim 4 depends from claim 1, and claims 5 and 6 depend from claim 4.
`Claims 1–3 are reproduced below, and the limitations of claims 4, 5, and 6
`are identified in the substantive analysis herein.
`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
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`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.
`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.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable3 based
`on the following grounds (Pet. 4–6):
`Ground Claim(s)
`Challenged
`1
`1–5
`
`35 U.S.C. §
`
`References
`
`103
`
`Nakajima,4 Weeks5
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`1–5
`
`1–5
`
`1–3
`
`1–3
`
`1–3
`
`4, 5
`
`4, 5
`
`4, 5
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Nakajima, Kish6
`
`Nakajima, Edmond7
`
`Rohm,8 Weeks
`
`Rohm, Kish
`
`Rohm, Edmond
`
`Rohm, Weeks, Nakajima
`
`Rohm, Kish, Nakajima
`
`Rohm, Edmond, Nakajima
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`Because the ’486 patent has an effective filing date prior to the effective date
`of the applicable AIA amendments, we refer herein to the pre-AIA version
`of § 103.
`4 Japanese Patent App. No. 2002-232017, pub. Aug. 16, 2002 (Ex. 1004,
`“Nakajima”).
`5 U.S. Patent No. 6,611,002 B2, filed Feb. 23, 2001, issued Aug. 26, 2003
`(Ex. 1007, “Weeks”).
`6 U.S. Patent No. 5,376,580, Dec. 27, 1994 (Ex. 1008, “Kish”).
`7 U.S. Patent No. 5,523,589, June 4, 1996 (Ex. 1009, “Edmond”).
`8 Japanese Pat. Pub. 2003-17754, Jan. 17, 2003 (Ex. 1005, “Rohm”).
`
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`Ground Claim(s)
`Challenged
`10
`1–3
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`11
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`12
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`13
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`14
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`15
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`16
`
`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`1–3
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`1–3
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`4, 5
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`4, 5
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`4, 5
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`6
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`6
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`6
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`6
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`6
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`6
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`6
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`6
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`6
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`35 U.S.C. §
`
`References
`
`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`103
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`Matsushita,9 Weeks
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`Matsushita, Kish
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`Matsushita, Edmond
`
`Matsushita, Weeks, Nakajima
`
`Matsushita, Kish, Nakajima
`Matsushita, Edmond,
`Nakajima
`Nakajima, Weeks, Jochym10
`
`Nakajima, Kish, Jochym
`
`Nakajima, Edmond, Jochym
`Rohm, Weeks, Nakajima,
`Jochym
`Rohm, Kish, Nakajima,
`Jochym
`Rohm, Edmond, Nakajima,
`Jochym
`Matsushita, Weeks,
`Nakajima, Jochym
`Matsushita, Kish, Nakajima,
`Jochym
`Matsushita, Edmond,
`Nakajima, Jochym
`
`
`9 Japanese Pat. Pub. 2001-352102, Dec. 21, 2001 (Ex. 1006, “Matsushita”).
`10 U.S. Patent No. 6,747,217 B1, filed Nov. 21, 2001, issued June 8, 2004
`(Ex. 1010, “Jochym”).
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`As further support, Petitioner offers the Declaration of James R.
`Shealy, Ph.D. Ex. 1003 (“Shealy Declaration”).
`
`III. ANALYSIS
`Petitioner bears the burden of proving unpatentability, and the burden
`of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v.
`Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail,
`Petitioner must establish the facts supporting its challenge by a
`preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A. Obviousness under 35 U.S.C. § 103
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness.11 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`B. Level of Ordinary Skill
`Relying on the testimony of Dr. James R. Shealy, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`
`
`11 The parties do not direct our attention to any objective evidence of
`nonobviousness.
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`date on the face of the ’486 patent as a person having a “B.S. in mechanical
`or electrical engineering or a related field, and four years’ experience
`designing LED packages.” Pet. 10 (citing Ex. 1003 ¶ 24). Patent Owner
`does not propose an alternative assessment.
`Having reviewed the arguments and evidence, we adopt Petitioner’s
`definition above, as we did in the Institution Decision, as it is consistent with
`the ’486 patent and the asserted prior art.
`C. Claim Construction
`In this inter partes review, which was filed before November 13,
`2018, we construe the claim terms according to their broadest reasonable
`interpretation in light of the Specification. 37 C.F.R. § 42.100(b) (2017)12;
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(affirming that USPTO has statutory authority to construe claims according
`to 37 C.F.R. § 42.100(b)). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as would have been understood by a person of ordinary skill in the
`art at the time of the invention and in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`
`12 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district court.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (amending 37 C.F.R. § 42.100(b) effective November 13, 2018)
`(now codified at 37 C.F.R. § 42.100(b) (2019))
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`1. “major surface”
`Petitioner proposes that we construe the term “major surface,” as
`recited variously in claims 1–6, as “a face that is greater in size than the
`other faces of the element being described.” Pet. 12.
`Patent Owner disagrees with Petitioner’s proposal for several reasons.
`PO Resp. 10–14. First, Patent Owner takes issue with Petitioner’s use of the
`term “face,” asserting “there is no justification . . . for this unsupported
`substitution of ‘surface’ for ‘face’” and “[t]he purpose of claim construction
`is not simply to identify potential synonyms of claim terms and swap them
`out without reason . . . .” Id. at 10. Patent Owner also asserts Petitioner’s
`proposed construction is incorrect and inconsistent with usage in the ’486
`patent because “[u]nder [P]etitioner’s construction, there can be only one
`‘major surface’ of the element being described,” whereas the ’486 patent
`claims refer to a plurality of major surfaces. Id. at 11. Patent Owner states
`that “the ’486 patent consistently uses the term ‘surface’ to refer to an outer,
`substantially planar portion of a substrate or a semiconductor die.” Id. at 10.
`Patent Owner also asserts, as an “additional defect, Petitioner applies its
`proposed construction in a manner that fails to lend any weight to the claim
`term, ‘major.’” Id. at 11. Patent Owner asserts that “[c]onsistent 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.” Id. In an apparent proposed construction,13 Patent Owner further
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`13 Although Patent Owner does not characterize it as such, we discern that
`the statement is intended as a proposed construction, given Patent Owner’s
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`states that “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.’” Id. at 10–11.
`We first address Patent Owner’s challenges to Petitioner’s proposed
`construction. We disagree with Patent Owner’s criticism regarding
`Petitioner’s use of the term “face” in its proposed construction as an
`“unsupported substitution” of one term for another. Petitioner is using the
`term “face” similarly to Patent Owner’s use of the phrase “outer . . .
`portion.” Compare Pet. 11, with PO Resp. 10. Petitioner’s use of the
`synonym “face” is no more an unjustified substitution of terms than is Patent
`Owner’s proposed synonymous phrase. Also contrary to Patent Owner’s
`criticism, we disagree that Petitioner’s proposed construction allows only a
`single “major surface.” See PO Resp. 11. Petitioner expressly
`acknowledges that a device may have more than one major surface—for
`example, Petitioner notes that the ’486 patent describes an LED as having
`both a top and a bottom “major surface.” See Pet. 11–12.
`The parties’ proposed constructions overlap to the extent that a “major
`surface” includes a surface that “is greater in size than the other [surfaces]
`being described.” See Pet. 12; PO Resp. 11. Patent Owner’s proposal is
`narrower than that proposed by Petitioner, however, as Patent Owner asserts
`that a “major surface” must be “the largest surface area of any surface of the
`element.” PO Resp. 11 (emphasis added). Other than relying on the
`modifier “major,” Patent Owner does not, however, provide any support for
`its proposed construction. Indeed, such construction is contradicted by
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`use of quotation marks without any citation to a source.
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`Patent Owner’s own statements in its Response, in which Patent Owner also
`states that an element may have more than one “major surface” as long as
`“those surfaces have substantially similar surface areas, and . . . their surface
`areas are greater than the surface areas of other surfaces.” Id. On this
`record, we do not agree a “major surface” must be the largest surface area of
`any surface of an element.
`Aside from the foregoing, it appears the parties’ proposed
`constructions differ primarily with regard to whether a “major surface” must
`be “substantially planar,” as Patent Owner asserts. See PO Resp. 11. As
`support for that construction, Patent Owner refers only to the language of
`claim 1 itself, which recites “a substantially planar substrate having opposed
`major surfaces.” Id. at 10–11.
`We disagree with Patent Owner’s attempt to extend the modifier
`“substantially planar,” which modifies only “substrate” in claim 1, to also
`modify the separate term “major surface[].” The term “major surface” is
`used in claim 1 in conjunction with not only the substrate but also in
`conjunction with the light emitting diode (LED); only the substrate,
`however, is described in the claim as being “substantially planar.” As we
`noted in our Institution Decision (Inst. Dec. 12), it may well be that a
`substrate that is substantially planar will also have substantially planar major
`surfaces. However, nothing in the ’486 patent Specification requires every
`“major surface” be substantially planar.
`Having considered the parties’ arguments and evidence, we maintain
`our construction of this term from the Institution Decision. 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
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`other surfaces,” which need not be substantially planar. See Inst. Dec. 12–
`13.
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`2. “metallized . . . major surface”
`Petitioner proposes that we construe the term “metallized . . . major
`surface,” as recited in claims 1–6, as meaning “a major surface having metal
`on at least a portion thereof.” Pet. 12.
`Patent Owner disagrees with Petitioner’s proposed construction, and
`proposes that the “correct construction of ‘metallized . . . major surface’ is ‘a
`major surface (as defined above) substantially covered with metal.’” PO
`Resp. 14.
`Aside from differing with regard to the proper construction of a
`“major surface” (as addressed above), the parties’ proposed constructions of
`“metallized . . . major surface” differ in terms of what proportion of the
`“major surface” must be “metallized.” Petitioner proposes the metal must be
`“on at least a portion” of the major surface (Pet. 12), whereas Patent Owner
`proposes the major surface must be “substantially covered with metal” (PO
`Resp. 14).
`Petitioner supports its proposed construction first by reference to the
`’486 patent Specification, which refers to “metallization” on a top and on a
`bottom major surface of a semiconductor die as constituting the anode and
`cathode electrodes, respectively, of an LED. See Pet. 13–14 (citing
`Ex. 1001, 1:19–23, 5:10–12, 5:18–22, 8:26–31, 8:34–37). As Petitioner
`further notes, the Specification also states that the LED “has anode and
`cathode electrodes . . . covering at least parts of its opposed major
`surfaces.” Id. at 13 (citing Ex. 1001, 5:7–10, 8:23–26). Thus, the
`Specification describes “metallization” as anode and cathode electrodes that
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`cover at least parts of opposed major surfaces, without specifying whether
`the covered parts are a “substantial portion” of the surface. See also Pet.
`Reply 6–7. We agree this disclosure supports Petitioner’s proposed
`construction of “metallized . . . major surface” as requiring metal to be “on
`at least a portion” of the major surface.
`Petitioner also cites to dictionary definitions in support of its proposed
`construction. See Pet. 14 (citing Ex. 1013 (Modern Dictionary of
`Electronics: “metallization”), Ex. 1014 (Merriam Webster’s Collegiate
`Dictionary: “metallize”)); Pet. Reply 7. These definitions describe
`metallization, essentially, as depositing a film or coat of metal onto a
`substrate, but do not address the parties’ dispute regarding what proportion
`of the substrate surface must be covered in the metal film or coat.
`Patent Owner argues that Petitioner’s construction is “wrong” because
`“[i]t could result in the ‘metallized . . . major surface’ being satisfied by
`nothing more than a major surface having a small metallized pad formed
`thereon.” PO Resp. 12. Patent Owner then asserts such a construction
`would contradict the claims because the claims “separately recite a
`‘mounting pad’ and a ‘connecting pad’ as different elements than a
`‘metallized . . . major surface.’” Id.
`We disagree that Petitioner’s proposed construction conflates a
`mounting pad and/or a connecting pad with a metallized major surface.14 As
`discussed further herein, Petitioner relies on Weeks, Kish, and Edmond as
`
`14 At the same time, the ’486 Specification expressly teaches that the
`mounting and connecting pads can be created by depositing metal on a
`surface (i.e. metallization), but they are not limited to this method of
`creation. See Spec. 10:16–29.
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`16
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`teaching LEDs having metallized top and bottom major surfaces comprising
`anodes and cathodes. Pet. 30–34. Petitioner relies on Nakajima, Rohm, and
`Matsushita as teaching the packaging limitations of the claims, including the
`mounting pad and connecting pad. E.g., Pet. 27 (discussing Nakajima’s
`teaching of a mounting pad), 34 (discussing Nakajima’s teaching of a
`connecting pad). Petitioner argues that the ordinarily skilled artisan would
`have combined the teachings of the prior art to result in the claimed
`invention—thus including metallized major surfaces as well as mounting
`and connecting pads. E.g., Pet. 36–38. As such, Petitioner’s analysis of the
`prior art does not blur together the “metallized . . . major surface” limitations
`with the “connecting pad” or “mounting pad” limitations, and we do not read
`Petitioner’s proposed claim construction as doing so either.
`In its Sur-Reply, Patent Owner argues that Petitioner’s construction
`improperly allows for “any ‘portion’ of the major surface—not the major
`surface itself—to be metallized.’” PO Sur-Reply 6. Although Patent
`Owner’s contention is not entirely clear, Patent Owner appears to be
`arguing, as it did in the Preliminary Response, that the term “major”
`modifies not only “surface,” but also imparts a quantification to the
`metallization, resulting in a “major surface . . . substantially covered with
`metal.” See id.; see also Prelim. Resp. 13. Patent Owner does not, however,
`provide any support for this analysis, nor do we agree it is compelled or
`suggested by the claim language itself. In that regard, we also disagree with
`Patent Owner’s contention that Petitioner’s proposal fails to account for the
`surface being a “major” surface. As we note above, Petitioner’s proposal
`and accompanying discussion explicitly recognize this. See Pet. 12–14.
`
`
`17
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`Having considered the parties’ arguments and evidence, we maintain
`our construction of this term from the Institution Decision, and determine
`the broadest reasonable construction of the term “metallized . . . major
`surface,” consistent with the ’486 patent, includes “a major surface having
`metal on at least a portion thereof,” which need not necessarily be a
`“substantial portion” of the major surface. See Inst. Dec. 15. We also note
`that this construction is consistent with the construction of “metallized . . .
`surface” in the ’333 Final Written Decision as meaning “a metal layer on at
`least a portion of the surface.” ’333 FWD at 11.
`For purposes of this Decision, we need not provide an express
`construction for any other terms in the ’486 patent. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that
`“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(applying Vivid Techs. in the context of an inter partes review).
`For our analysis, however, it is necessary to explain why we do not
`read the claim terms “electrically conductive mounting pad,” “first
`electrically conductive connecting pad,” and “first electrically conductive
`interconnecting element” in the context of the ’486 patent as requiring three
`separate structures. The explanation is provided below within the context of
`our analysis. See infra Section III.D.5.a.3). It suffices here simply to note
`that we determine the recitation of these limitations in claim 1 does not
`exclude reading them onto different parts of an integrated structure.
`We also discuss below, in our analysis, the parties’ dispute over
`whether claim 4, which recites that the “first electrically interconnecting
`
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`element” be “selected to withstand an operating temperature when the LED
`is mounted on the electrically conductive mounting pad,” recites a required
`characteristic of the element (as Patent Owner contends) or merely recites an
`intended use (as Petitioner contends). See infra Section III.D.5.b.
`D. Grounds 1–3: Obviousness of Claims 1–5 Over Nakajima
`in view of Weeks, Kish, or Edmond
`1. Overview of Nakajima (Ex. 1004)
`Nakajima was published on August 16, 2002 (Ex. 1004, at code (43));
`accordingly, it is prior art under 35 U.S.C. § 102(a). Patent Owner does not
`dispute the prior-art status of Nakajima.
`Nakajima describes a “package for housing light emitting elements for
`accommodating a light emitting element such as a light emitting diode . . . .”
`Ex. 1004 ¶ 1.15 Figure 1 of Nakajima, as annotated by Petitioner, is
`provided below.
`
`
`Figure 1 of Nakajima, reproduced above with colorized annotations
`provided by Petitioner (Pet. 16), depicts a “cross-sectional view of a
`
`
`15 Cites to Exhibit 1004 are to the certified translation portion.
`
`19
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`conventional package for housing light emitting elements.” Ex. 1004, 6.16
`As annotated by Petitioner, the “substrate” (1) of Nakajima is colored red;
`the portions of “mounting unit” (1a) and metallized wiring conductor (4b)
`that correspond to the claimed “mounting and bonding pads” are colored
`green; the “LED” is colored blue; the “bonding wire” (5) is colored gold; the
`portions of metallized wiring conductors 4a and 4b that correspond to the
`claimed “interconnecting elements” are colored purple; and the portions of
`metallized wiring conductors 4a and 4b that correspond to the claimed
`“connecting pads” are colored orange. See Pet. 15.
`2. Overview of Weeks (Ex. 1007)
`Weeks was filed on February 23, 2001, and issued on August 26,
`2003 (Ex. 1007, at codes (22), (45)); accordingly, it is prior art under 35
`U.S.C. § 102(e). Patent Owner does not dispute the prior-art status of
`Weeks.
`Weeks discloses a semiconductor device (e.g., an LED) with
`“topside” and “backside” electrical contacts for connection to an external
`power supply that powers the device. Ex. 1007 at 2:7–8, 3:48–51. Weeks
`explains that “[t]opside contact 16 is formed of a p-type metal and backside
`contact 20 is formed of an n-type metal.” Id. at 9:45–46. Weeks further
`explains that “[b]ackside contact 20 and topside contact 16 may be deposited
`using known techniques suitable for depositing conducting materials such as
`metals” (id. at 8:43–45), and that “the phrase ‘electrical contact’ or ‘contact’
`
`
`16 Cites to page numbers in Exhibit 1004 are to the page numbers at the top
`of the certified translation portion, and not to the page numbers at the bottom
`added by Petitioner.
`
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`20
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`refers to any conducting structure on the semiconductor device that may be
`effectively contacted by a power source including electrodes, terminals,
`contact pads, contact areas, contact regions and the like” (id. at 6:7–11).
`Weeks explains that “the term ‘topside’ refers to the upper surface of the
`device and the term ‘backside’ refers to the bottom surface of the device.
`Thus, the topside is opposite the backside of the device.” Id. at 4:19–22.
`Topside contact 16 and backside contact 20 are shown in Figure 4 of Weeks,
`reproduced below as annotated by Petitioner.
`
`
`Figure 4 of Weeks, depicted above with colorized annotations provided by
`Petitioner, shows an LED 32 with topside contact 16 and backside contact
`20 colored blue. Pet. 20 (citing Ex. 1007, 4:19–22); see also Ex. 1007,
`3:21–22.
`Regarding the material that comprises its contacts, Weeks states:
`Backside contact 20 and topside contact 16 are formed of
`conducting materials including certain metals . . . . For example,
`contacts 16, 20 may contact n-type material or p-type material.
`
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`Suitable metals for n-type contacts include titanium, nickel,
`aluminum, gold, copper, and alloys thereof. Suitable metals for
`p-type contacts include nickel, gold and titanium, and alloys
`thereof.
`Ex. 1007 at 6:7–21.
`
`3. Overview of Kish (Ex. 1008)
`Kish issued on December 27, 1994 (Ex. 1008, at code (45));
`accordingly, it is prior art under 35 U.S.C. § 102(b). Patent Owner does not
`dispute the prior-art status of Kish.
`Kish discloses an LED device comprising a substrate with
`“[e]lectrodes 142 and 144” that are “formed on the upper surface of the
`patterned wafer 126 and the lower surface of the substrate 136.” Ex. 1008 at
`10:53–55, Fig. 14. Kish further describes the use of “metallized electrodes”
`for applying electricity to the active region of LEDs.
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