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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`NICHIA CORPORATION and CREE, INC.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner
`____________
`
`Case IPR2018-011661
`Patent 7,256,486 B2
`____________
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`
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`PATENT OWNER’S PETITION FOR REVIEW BY THE DIRECTOR
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` 1
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` Cree, Inc., who filed a Petition in IPR2019-00506, has been joined as a petitioner
`in this proceeding. Paper 14.
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`
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`
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`Patent Owner Document Security Systems, Inc. respectfully requests review
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`by the Director of the Final Written Decision issued by the Board in this matter.
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`Pursuant to the Supreme Court’s recent decision in United States v. Arthrex, Inc.,
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`141 S.Ct. 1970 (2021), such review must be conducted by a principal officer
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`properly appointed by the President and confirmed through advice and consent of
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`the Senate. Patent Owner submits that the Board’s Final Written Decision (Paper
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`24, or “FWD”) in this matter must be reviewed and rejected because it improperly
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`relies upon a claim construction that is inconsistent with the broadest reasonable
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`interpretation, and improperly combines references without a proper inquiry into the
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`required motivation to combine. Each of these actions by the Board constitutes legal
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`error, and requires that its Final Written Decision of unpatentability be reversed.
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`I.
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`BACKGROUND
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` In its Final Written Decision, the Board credited only one of Petitioner’s
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`grounds of invalidity in holding challenged claims 1-3 unpatentable2, relying on a
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`prior art reference called Nakajima in combination with one of a group of references.
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`FWD, 57-58. The subject patent (the “’486 patent”) claimed a new design for LED
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` 2
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` The Board’s Final Written decision found that this initial ground also rendered
`dependent claims 4 and 5 unpatentable, and found claims 4 and 5 unpatentable
`under a different ground. The Board found that claim 6 was not shown to be
`unpatentable. FWD, 57-58. To focus the issues here, Patent Owner seeks Director
`review only with respect to the finding as to claims 1-3, without prejudice to any
`rights of appeal regarding claims 4 and 5.
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`
`
`1
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`
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`devices in which the light emitting diode has a metallized bottom major surface and
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`is mounted on a mounting pad located on a major surface of a substrate, a conductive
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`connecting pad on the other major surface of the substrate, and an electrical
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`interconnect between the mounting pad and the connecting pad on the substrate.
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`Additional dependent claims required the addition of a second metallized top major
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`surface of a light emitting diode connected by a bonding wire to a conductive
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`bonding pad in one major surface of the substrate, with an electrical interconnect in
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`the substrate connecting that bonding pad to a connecting pad on the other major
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`surface of the substrate.
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`In its Final Written Decision, the Board adopted claim constructions of the
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`terms “major surface” and “metallized . . . major surface.” For “major surface” the
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`Board held that the term “includes an outer portion that is greater than the surface
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`area of other surface,” and “which need not be substantially planar.” FWD, 14-15.
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`For “metallized major surface,” the Board held that the term “includes a major
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`surface having metal on at least a portion thereof, which need not necessarily be a
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`‘substantial portion’ of the major surface.” FWD, 18. The Board applied the
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`broadest reasonable interpretation standard. FWD, 11. The Board relied on these
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`constructions to find that some combination of references would meet the challenged
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`claims.
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`2
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`Following the Final Written Decision, Patent Owner appealed this
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`determination to the Federal Circuit. Following the Federal Circuit’s Arthrex
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`decision, Patent Owner filed a motion to vacate and remand the Final Written
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`Decision as invalidly issued in conflict with the Appointments Clause. The Federal
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`Circuit denied that motion and briefing on the merits proceeded. Following
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`argument, the Federal Circuit issued an affirmance without opinion. After the
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`Supreme Court’s decision in United States v. Arthrex, Inc., 141 S.Ct. 1970 (2021),
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`the Federal Circuit remanded this matter to permit Patent Owner to seek Director
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`review.
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`II. THE BOARD RELIED ON CLAIM CONSTRUCTIONS
`INCONSISTENT WITH THE CLAIM LANGUAGE
`The claims of the ’486 patent make clear that the kind of objects at issue
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`(essentially rectangular solids) have only two major surfaces. For example, claim 1
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`refers to placing a mounting pad on one major surface of a substrate and locating a
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`connecting pad on “the other” major surface. The language is clear that such objects
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`have only two major surfaces. If one imagines a typical rectangular solid (like a
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`paperback book), the front cover surface would be one major surface and the back
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`cover surface would be the other major surface. The Board’s confusing construction
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`states that a major surface is an outer surface that has a greater area than some other
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`unspecified surface, and even states that the major surface need not be a single
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`surface since it does not need to be planar or substantially planar. FWD, 14-15. This
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`3
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`construction is clearly unreasonable in light of the clear usage in the claims
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`themselves. In the example of the paperback book, under the board’s construction,
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`the rectangular solid of a paperback book would have four major surfaces (the front
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`cover face, the back cover face, and each of the two longer edges). That construction
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`is plainly inconsistent with the explicit usage in the claims clarifying that an object
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`has two major surfaces (one and “the other”). Further, in stating that a “major
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`surface” need not be planar or substantially planar, the Board effectively wrote the
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`word “surface” out of the claims entirely. Under the Board’s construction, the entire
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`surface of a rectangular solid (all six sides) could be considered a major surface since
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`(under the Board’s construction) edges are irrelevant to defining a surface. Indeed,
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`the Board applied its construction to find that a group of at least five surfaces in the
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`Weeks reference was a single major surface under its construction. In Figure 4 from
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`Weeks (reproduced below), the Board found that all of the blue portion 20 (including
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`a left horizontal surface, a left upwardly inclined surface, a higher horizontal surface
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`in the middle, a right downwardly inclined surface, and a right horizontal surface)
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`was a single major surface in Weeks. FWD, 34. Under the law, the broadest
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`reasonable interpretation of a claim term must still be reasonable, and the Board’s
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`construction completely fails that standard.
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`4
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
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`
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`The Board also erroneously held that a metallized major surface need not even
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`be substantially covered in metal; under the Board’s construction, a major surface is
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`“metallized” even if only a tiny portion of metal is located somewhere on the surface.
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`FWD, 15-19. This construction is roughly akin to asserting that if one places a coin
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`on the floor of a room, the room suddenly has a metallized floor. Once again, the
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`Board’s construction fails the basic test of reasonableness. A tiny spot of metal does
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`not constitute a “metallized surface,” as can be seen when considering that the Board
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`found that the blue portion 30 of Figure 1 of the Edmond reference (reproduced
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`below) for example, constituted a metallized major surface.
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`5
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`The Board’s significantly overreaching claim constructions fail
`the
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`reasonableness test and effectively serve to write elements out of the claims. The
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`Director should not permit such an approach by the Board when reviewing patents
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`that have already been carefully considered and approved by examiners working in
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`this agency.
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` III. THE BOARD FAILED TO PROPERLY ADDRESS THE
`MOTIVATION TO COMBINE
`In holding claims 1-3 unpatentable, the Board combined the portions of the
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`Nakajima reference, which related to the design of a substrate with mounting or
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`bonding pads, with any of three references purportedly showing light emitting diodes
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`with both top and bottom metallized major surfaces. While none of those references
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`actually shows both a top and bottom metallized major surface (as would be required
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`for claims 2 and 3), the Board also failed to properly evaluate the requisite
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`motivation for any of them to be combined with Nakajima.
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`The Board stated that Petitioner had submitted declaration testimony from its
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`expert that the references would be combined in the manner claimed in the ’486
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`patent. FWD, 36-37. It offers little to explain why the bare conclusory assertions
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`of Petitioner’s expert should be credited. Worse, the Board’s approach improperly
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`shifts the burden to Patent Owner to prove that a person skilled in the art would not
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`have been motivated to make the claimed combination. FWD, 37-38.
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`6
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`The Board’s analysis and approach were precisely the opposite of how it
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`should approach such questions. Governing Federal Circuit precedent is clear that,
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`in the obviousness analysis, modifications to prior art must be supported by evidence
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`justifying the actual modification. See generally In re Stepan Co., 868 F.3d 1342,
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`n. 1 (Fed. Cir. 2017); Procter & Gamble Co. v. Teva Phar. USA, Inc., 566 F.3d 989,
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`995 (Fed. Cir. 2009). It is critical that the Board make a particularly searching
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`inquiry for a real motivation to combine or modify in the context of obviousness
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`analysis. Without it, the analysis devolves into little more than a hunt in the prior
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`art for various references that do not teach the actual invention of a challenged claim,
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`but only discreet elements of that invention, or different inventions that came before.
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`Such material could be found for every patented invention, as such inventions are
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`always combining existing elements in new ways to form new inventions.
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`The motivation to modify or combine inquiry is the most susceptible to
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`impermissible use of hindsight because often the new solution of a patented
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`invention may seem obvious after it has been disclosed. But, of course, the correct
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`inquiry is whether it was obvious to persons skilled in the art before it was disclosed
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`in the challenged patent. In considering an obviousness challenge, the Board must
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`always acknowledge that the invention was clearly not so obvious that another
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`artisan actually made the combination of elements in the manner claimed.
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`Presumptively, obviousness contentions should always be regarded with skepticism
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`
`
`7
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`
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`that can only be overcome by a factual showing based in evidence, not merely
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`assertions of a expert, that a person skilled in the art would actually have been
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`motivated to make the combination or modification needed to get from the prior art
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`reference to the challenged invention. The actual evidence must show that the
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`skilled artisan would have been motivated to make the particular changes or
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`combinations needed to yield the challenged claim, not merely that making such
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`changes or combinations were generally possible, or not explicitly discouraged.
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`Rather than following the approach mandated by applicable precedent, the
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`Board ignored the points Patent Owner identified as calling into question the
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`supposed combinations. The Board improperly dismissed those points as lacking
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`sufficient evidentiary support (imposing an improper burden of proof on Patent
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`Owner) rather than seriously inquiring whether the conclusory rationale offered by
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`Petitioner could survive serious scrutiny. It is the job of the Board to perform such
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`serious scrutiny, and to question the assertions made by a Petitioner with skepticism,
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`even if the Patent Owner submitted no response. That is the nature of the petitioner’s
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`burden of proof in inter partes review. The Board failed to perform its proper role
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`here.
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`IV. THE DIRECTOR SHOULD REVIEW AND REVERSE THE
`BOARD’S FINAL WRITTEN DECISION
`As discussed above, the Board failed to follow the appropriate principles of
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`claim interpretation and failed to properly consider Petitioner’s obviousness
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`
`
`8
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`
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`challenge without improper reliance on hindsight. It simply accepted conclusory
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`assertions regarding a motivation to combine asserted art without performing a
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`proper inquiry into those assertions. In performing its analysis, the Board appears
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`to have simply accepted Petitioner’s assertion of obviousness of the challenged
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`claims, and then improperly shifted the burden of persuasion to Patent Owner to
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`rebut that assumption.
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`All of these actions constitute legal error. More importantly, they were errors
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`that the Director should remedy. The Board’s analysis reflects an improperly
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`uncritical examination of the assertions of Petitioners, particularly with respect to
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`the most important aspect of an obviousness challenge. Finding the individual
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`elements of a challenged claim in disparate places in the universe of prior art can be
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`relatively easy. Further, it is always dangerous, in hindsight, to conclude that a
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`modification to a reference would meet an element of a challenged claim. But to
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`avoid improper hindsight analysis, and to properly apply the presumption that this
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`agency actually performed its duty when examining a subject patent in the first
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`instance, the Board must be more rigorous in requiring a real and proper showing of
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`obviousness based on real evidence, and not merely the hindsight say-so of experts
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`founded upon no evidence.
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`While it is true that cases not reviewed by the Director can be appealed to the
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`Federal Circuit, that Court must apply a deferential standard to the findings made by
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`
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`9
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`the Board. Only the Director can review the entirety of the Board’s analysis de novo
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`and evaluate whether the Board is utilizing the appropriate level of rigor when
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`considering the multitude of obviousness assertions that Petitioners advance before
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`the PTAB.
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`Finally, Patent Owner respectfully submits that, consistent with the Supreme
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`Court’s holding, the review requested herein must be conducted by a properly
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`appointed principal officer appointed by the President. Because Andrew Hirshfeld
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`is not an appointed principal officer, he may not conduct the requested review
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`without creating the same Constitutional infirmity held to exist in United States v.
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`Arthrex, 141 S.Ct. 1970 (2021).3
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`
`Dated: August 30, 2021
`
` Respectfully submitted,
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`James T. Wilson (Reg. No. 41,439)
`Aldo Noto (Reg. No. 35,628)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax: (571) 765-7200
`Email: whelge@dbjg.com
`Email: jwilson@dbjg.com
`
`
`
` 3
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` While the Supreme Court suggested in Arthrex that such reviews could be
`conducted by the “Acting Director,” (Arthrex, 141 S.Ct. at 1987), there is no
`Acting Director at present within the meaning of the Federal Vacancies Reform
`Act of 1998. 5 U.S.C. §§ 3345, et seq.
`
`
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`10
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`Email: anoto@dbjg.com
`
`Counsel for Patent Owner
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`11
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on August 30, 2021, a true and correct copy of the
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`foregoing PATENT OWNER’S PETITION FOR REVIEW BY THE DIRECTOR is
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`being served electronically to the Petitioners at the correspondence email addresses
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`of record as follows:
`
`
`Patrick R. Colsher (Reg. No. 74,955)
`patrick.colsher@shearman.com
`Eric S. Lucas (Reg. No. 76,434)
`eric.lucas@shearman.com
`Thomas R. Makin
`thomas.makin@shearman.com
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, New York 10022
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`matthew.berkowitz@shearman.com
`Shearman & Sterling LLP
`1460 El Camino Real
`Menlo Park, California 94025
`
`Email: nichia-dss@shearman.com
`
`
`Blaney Harper (Reg. No. 33,897)
`bharper@jonesday.com
`Douglas H. Pearson (Reg. No. 47,851)
`dhpearson@jonesday.com
`Yury Kalish (Reg. No. 72,538)
`ykalish@jonesday.com
`JONES DAY
`51 Louisiana Ave., N.W.
`Washington, DC 20001
`
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`12
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`
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`IPR2018-01166
`U.S. Patent No. 7,256,486 B2
`
`
`Dated: August 30, 2021
`
`
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Counsel for Patent Owner
`
`
`Joseph M. Sauer (Reg. No. 47,919)
`jmsauer@jonesday.com
`David B. Cochran (Reg. No. 39,142)
`dcochran@jonesday.com
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`
`Matthew W. Johnson (Reg. No. 59,108)
`mwjohnson@jonesday.com
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`
`
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`13
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`
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