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` Paper ____
`
` Date filed: March 1, 2019
`
`Filed on behalf of: Nichia Corp.
`
`
`
`
`By: Martin M. Zoltick, Lead Counsel
`
`Robert P. Parker, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`Michael H. Jones, Back-up Counsel
`
`Mark T. Rawls, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: mzoltick@rfem.com
`
` rparker@rfem.com
`
` ddahlgren@rfem.com
`
` mjones@rfem.com
`
` mrawls@rfem.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00386
`Patent 9,490,411 B2
`_______________
`
`PATENT OWNER’S NOTICE OF SUBMISSION OF
`DEMONSTRATIVE EXHIBITS FOR MARCH 5, 2019 ORAL HEARING
`
`
`
`
`
`Case IPR2018-00386
`Patent 9,490,411 B2
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to the Order Granting Oral Hearing, dated February 22, 2019
`
`(Paper No. 36), Patent Owner Nichia Corporation provides notice that it is hereby
`
`submitting the attached demonstrative exhibits for use at the oral hearing scheduled
`
`for March 5, 2019.
`
`Date: March 1, 2019
`
`By:
`
`Respectfully submitted,
`
`/ Martin M. Zoltick /
`Martin M. Zoltick, Reg. No. 35,745
`ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: mzoltick@rfem.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
`1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`VIZIO, INC.,
`Petitioner,
`v.
`NICHIA CORPORATION,
`Patent Owner.
`_________________
`
`Case IPR2018-00386
`Patent 9,490,411 B2
`
`Case IPR2018-00437
`Patent 9,537,071 B2
`_________________
`
`PATENT OWNER NICHIA CORPORATION’S DEMONSTRATIVE EXHIBITS
`FOR MARCH 5, 2019 ORAL HEARING
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`VIZIO, INC.,
`Petitioner,
`v.
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`Case IPR2018-00386
`Patent 9,490,411 B2
`
`1
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Dispositive Issue
`
`(cid:1) The Board’s determination of the meaning of “disposed in a
`region below an upper surface of the metal part” is
`dispositive
`
`(cid:1) No dispute that under PO’s construction of “disposed in a
`region below an upper surface of the metal part” neither
`Loh nor any other prior art reference discloses or suggests
`claimed feature
`
`POR (Paper No. 20), pp. 1, 8, and 42-55; Patent Owner’s Sur-Reply (Paper No. 28), p. 5
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`2
`
`
`
`“Disposed In A Region Below An Upper
`Surface Of The Metal Part”
`
`3
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Claim 1
`
`Ex. 1001
`
`4
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See, e.g., POR (Paper No. 20), pp. 1, 4
`
`
`
`Petitioner’s Proposed Construction
`
`“region below an upper surface of the metal part” means region
`“at a lower level than” the upper surface irrespective of the
`surface’s boundaries
`
`metal part
`
`below an upper surface of a metal part
`
`Response To Petitioner’s Reply To
`Patent Owner’s Sur-Reply (Paper No.
`35), p. 1
`
`(cid:1) Disassociates the claimed region from the upper surface, and
`instead defines a plane that extends at a level of the upper
`surface
`
`(cid:1) Broadens the plain meaning to cover a device with only resin
`between the metal leads, and no resin underneath the metal
`leads
`
`5
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`POR (Paper No. 20), pp. 1-2, 8-25; Petitioner’s Reply (Paper No. 24), pp. 3-17
`
`
`
`Patent Owner’s Proposed Construction
`
`“region below an upper surface of the metal part” means region
`“underneath” an upper surface of the metal part
`
`metal part
`
`below an upper surface of a metal part
`
`Response To Petitioner’s Reply To
`Patent Owner’s Sur-Reply (Paper No.
`35), p. 1
`
`(cid:1) Consistent with the plain meaning, and gives weight to all
`terms of the claim element
`
`(cid:1) Consistent with the specification and provides the advantages
`taught in the specification (e.g., improves adhesion)
`
`6
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`POR (Paper No. 20), pp. 1-2, 8-25; Petitioner’s Reply (Paper No. 24), pp. 3-17
`
`
`
`How Did We Get Here?
`Loh shows resin between metal leads, not in a region
`underneath those leads’ upper surfaces on two sides:
`
`metal parts
`
`between metal parts
`
`Response To Petitioner’s Reply To
`Patent Owner’s Sur-Reply (Paper No. 35), p. 1
`
`Petitioner’s construction is a byproduct of Loh, not the plain
`meaning.
`
`See Petition, pp. 30-32 (“resin fills the gaps between the leads at the outer lateral surfaces”)
`
`See POR (Paper No. 20), pp. 1-2; Institution Decision, pp. 8-9 (“Petitioner’s arguments implicitly advance an interpretation that includes resin
`between the side surfaces of metal leads.”)
`
`7
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Response To Petitioner’s Reply To Patent Owner’s Sur-Reply (Paper No. 35), pp. 1-3
`
`
`
`Petitioner Is Wrong
`
`Petitioner’s construction
`is a byproduct of Loh.
`
`(cid:1) “disposed in a region below at
`a lower level than an upper
`surface of the metal part”
`
`(cid:1) In effect defining a plane that
`extends at the level of an
`upper surface of the metal part
`
`POR (Paper No. 20), pp. 1-2, 8-25; Patent Owner’s Sur-Reply (Paper
`No. 28), pp. 1-5; Response To Petitioner’s Reply
`To Patent Owner’s Sur-Reply (Paper No. 35), pp. 1-3
`
`8
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Wrong because:
`(cid:1) Dismisses the specification’s
`description of resin under metal
`due to concavities and
`convexities
`
`(cid:1) Inconsistent with the intrinsic
`evidence by requiring a “plane”
`that extends at a “level” of an
`upper surface
`
`(cid:1) Causes confusion when
`applying to an upper surface
`with different levels, leading to
`absurd results
`
`(cid:1) Fails to give meaning to all
`claim terms by disassociating
`the claimed “region” from the
`“upper surface”
`
`
`
`Summary of ’411 Patent
`
`9
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`‘411 Patent
`
`(cid:1) In the ‘411 Patent, LEDs are made by providing notches in a
`metal lead frame, molding resin onto the lead frame, and then
`cutting along the notches to form singulated devices:
`
`Ex. 1001
`
`FIG. 3
`
`FIG. 1
`
`(cid:1) This use of notches results in resin-metal interfaces at each
`of the four outer lateral surfaces of the singulated device.
`
`10
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 2-3 and 18-20
`
`
`
`‘411 Patent
`
`(cid:1) In some embodiments, the lead frame used to form the
`devices has etched notches:
`
`(cid:1) This improves adhesion of the resin part to the metal leads,
`which is one of the stated goals of the ʼ411 Patent.
`
`Ex. 1001
`18:51-53
`
`11
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 2-3
`
`
`
`‘411 Patent
`
`Due to these concavities/convexities of the notches, when the
`lead frame is singulated along the notches to form the
`individual devices, resin is present in the regions below the
`exposed metal leads at the outer lateral surfaces of the
`resultant devices.
`
`12
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 2-3
`
`Ex. 2011 (Schubert Decl.), ¶ 54
`
`
`
`Patent Owner’s Construction Is
`Supported By The Specification And
`Purpose Of The ‘411 Patent
`
`13
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Adhesion Problem with Prior Art
`
`(cid:1) As explained in the background of the ’411 Patent, there was a detachment
`problem with certain prior art designs that used a flat, printed-wiring board as the
`substrate. Ex. 1001, 2:32-37 (“a lead frame and thermosetting resin
`composition are likely to be detached upon singulation”).
`
`(cid:1) There was no resin located below the leads at the outer surfaces of the prior art:
`
`Resin
`Metal
`
`(cid:1) While Urasaki had resin 103 above the metal 105 (see, e.g., Figure 6), and
`between the metal 105 (see, e.g., Figures 2 and 3), there was no resin 103
`below the metal 105
`
`14
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 14-15
`
`
`
`The ‘411 Patent Provides a Solution
`
`(cid:1) Accordingly “an object of the present invention” is to provide
`LED devices with “high adhesion between” the resin part and
`leads. Ex. 1001, 3:26-30.
`
`Ex. 1001, 16:53-54
`
`(cid:1) In other words, as a result of etching notches in the lead
`frame, concavities and/or convexities are formed in the
`regions below the surfaces of the exposed leads, which then
`fill with resin during processing.
`
`15
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 14-16
`
`
`
`Disclosure Of Improved Adhesion
`
`Ex. 1001
`18:51-53
`
`Ex. 1001
`3:51-55
`
`Ex. 1001
`13:37-41
`
`16
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), p. 16
`
`
`
`Improved Adhesion
`
`As explained by Dr. Schubert (Schubert Decl.,
`¶ 47)
`
`The resin below the leads improves adhesion
`between the resin part and the leads because “of a
`greater adhesion area for the resin to surround and
`grip the metal lead frame…. [T]he claim element
`results in a greater mechanical interconnectedness
`between resin and lead frame.”
`
`“Specifically, the type of adhesion that the ’411
`Patent is attempting to provide, is adhesion that
`will avoid having the resin ‘peel off’ of the metal or
`detach upon singulation. This is also referred to as
`delamination.”
`
`Ex. 2011
`
`17
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), p. 16
`
`
`
`Resin Underneath Metal Leads
`
`Ex. 2011, ¶ 54
`
`Ex. 1001, 16:51-54
`
`“[T]here is resin below metal, which provides for additional grip along a vertical
`axis…. This grip along a vertical axis helps to prevent delamination during
`singulation.”
`
`Ex. 2011 (Schubert Decl.), ¶¶ 52-53
`
`18
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 17-18
`
`
`
`Resin Underneath Metal Leads
`
`Ex. 1001, 9:28-42
`
`19
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 16-19
`
`Ex. 1001
`
`
`
`Resin Underneath Metal Leads
`
`Ex. 1001
`18:51-53
`
`Ex. 1001
`
`• The specification does disclose
`resin disposed under metal leads
`at the outside surfaces of a resin
`package.
`
`20
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 18-22; cf. Institution Decision, p. 9
`
`
`
`Resin Underneath Metal Leads
`
`Dr. Schubert explains how, for example, the lead frame shown
`in FIG. 3 of the ’411 Patent would include concave-convex
`shapes in the entire sectional (etched part) part of the lead
`frame:
`
`Ex. 2011
`
`21
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 20-22; Ex. 2011 (Schubert Decl.), ¶ 51
`
`
`
`Resin Underneath Metal Leads
`
`The lead frame would result in
`the following upon singulation:
`
`Dr. Schubert - “a person of ordinary skill in the art would have understood this device
`to be what the ’411 Patent describes by its various disclosures relating to etching a
`lead frame to result in concavities and convexities in the cross-sectional surface of
`the notch part.”
`Ex. 2011 (Schubert Decl.), ¶ 51
`
`Ex. 2011, ¶ 51
`
`22
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 21-22
`
`Ex. 2011, ¶54
`
`
`
`Petitioner’s “New Surface” Argument Is
`Wrong
`
`23
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`A Concavity/Convexity Can Be An Upper Surface
`
`(cid:1) Petitioner improperly dismisses the specification’s description
`of resin under metal due to concavities and convexities.
`(cid:1) Petitioner contends that because the upper surface of the
`metal part is formed by etching, it cannot be the upper
`surface
`(cid:1) This is based on the assertion that the description of another feature (step)
`redefines the ordinary meaning of what a surface is, such that the top of the
`metal part is not an upper surface because it has a concave/convex shape.
`
`(cid:1) Such a redefinition is not supported – there is no rule that concave/convex
`top surfaces cannot be upper surfaces
`
`24
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 3-4
`
`
`
`A Concavity/Convexity Can Be An Upper Surface
`
`(cid:1) Dr. Schubert made no admission contrary to Patent Owner’s
`position.
`
`(cid:1) The concavity or convexity on the upper portion of the lead is
`a part of the upper surface of the lead; the concavity or
`convexity on the lower portion of the lead is below that upper
`surface.
`
`25
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Response To Petitioner’s Reply To
`Patent Owner’s Sur-Reply (Paper No. 35), pp. 2-3
`
`
`
`A Concavity/Convexity Can Be An Upper Surface
`
`26
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Response To Petitioner’s Reply To
`Patent Owner’s Sur-Reply (Paper No. 35), pp. 2-3
`
`Ex. 2011 (Schubert Decl.), ¶ 50
`
`
`
`A Concavity/Convexity Can Be An Upper Surface
`
`Ex. 2011 (Schubert Decl.), ¶ 54
`
`27
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 3-4
`
`
`
`Dr. Shanfield’s Testimony
`
`With reference to the image of FIG. 11 below, Dr. Shanfield
`acknowledged that there is resin underneath the concavities of
`the metal part:
`
`And concave/convex top surfaces can be upper surfaces
`
`Ex. 2011, ¶ 54
`
`28
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Patent Owner’s Sur-Reply (Paper No. 28), p. 3
`
`
`
`Dr. Shanfield’s Testimony
`
`Ex. 1001, Fig. 11
`
`A I think "pointy feature" is fine.
`Q Okay. So that -- that pointy feature at the edge of
`the metal part there, that's -- those are concavities
`and convexities that have been etched into the
`metal part, correct?
`A That's right, yes.
`Q And that -- that pointy feature there, the
`concavities and convexities, those are a part of the
`metal part, right?
`A Right, they are, although I disagree that the
`concavities and convexities form an upper surface
`of the metal part on the four outer lateral surfaces
`of the resin package.
`Q Okay.
`A So I want to be clear about that.
`Q I understand your testimony. I was just – just
`taking it in pieces. That -- that feature is a part of
`the metal part, right?
`A Yeah, it is.
`
`Ex. 2021, 89:15-90:8
`
`29
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Patent Owner’s Sur-Reply (Paper No. 28), p. 3
`
`
`
`Dr. Shanfield’s Testimony
`
`Q Okay. So which one is the concave one, and
`which one is the convex one?
`A Depends on how you look at them, but --
`Q Mark --
`A The top -- the top one concave and the bottom
`one convex.
`
`* * * * *
`Q Yeah. So I'm -- I'm asking is there resin under the
`convex surface at the outer side surface shown in
`figure 11?
`A Directly under? Is that what you mean by
`"under"?
`Q Well, let's take those in turn. First, I’m asking
`"under."
`A There's resin directly under that convex surface
`that -- as we described it.
`
`Ex. 2021, 93:13-96:2
`
`Ex. 1001, Fig. 11
`
`30
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Patent Owner’s Sur-Reply (Paper No. 28), p. 3
`
`
`
`Loh Does Not Disclose The Claimed
`Feature As Properly Construed
`
`31
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`No Resin Disposed In A Region Underneath An
`Upper Surface Of The Metal Part
`
`Resin
`Metal
`
`(cid:1) Loh does not have both a
`part of the metal part and a
`part of the resin part
`disposed in a region below
`an upper surface of metal
`part on four outer lateral
`surfaces.
`
`(cid:1) There is no resin that is
`disposed in a region
`underneath the upper
`surface of the metal part on
`at least two of the outer
`lateral surfaces of the
`device, as properly
`construed.
`
`32
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 42-43; Ex. 2011, ¶¶ 109-122
`
`
`
`Loh Has Resin “Next To” and “Between”
`
`Upper surface of the metal part at the
`outer lateral surface
`
`Only metal disposed in a region below
`
`See POR (Paper No. __), pp. 45-46
`
`33
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 45-46
`
`
`
`Resin Disposed To
`“Left And Right” Is Not “Underneath”
`
`(cid:1) A different patent of
`the family –the ’071
`Patent – claims light
`emitting devices with
`resin to the left and
`right of the metal part:
`
`(cid:1) The inventors knew
`how to describe (and
`claim) resin “next to” or
`“between the leads.”
`Ex. 1001, 4:52-5.
`
`34
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 22-25
`
`Ex. 2006, 19:17-35
`
`
`
`Resin Disposed To
`“Left And Right” Is Not “Underneath”
`
`The terms “disposed in a region below” and “is located at left
`and right sides of” should have different meanings.
`
`Ex. 2005 (‘071 Petition), p. 16
`
`’411 Petition, p. 30
`
`35
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 22-25
`
`
`
`Loh’s Disclosure Of “Etching”
`
`(cid:1) In the Institution Decision, the Board noted that “Loh discloses etching a lead
`frame,” citing Loh at ¶¶[0027], [0076]. Decision, p. 16. Loh’s references to
`etching, however, do not disclose the claimed “in a region below…, on four outer
`lateral surfaces …” feature
`
`(cid:1) Loh uses a dual-gauge lead frame, which provides for an interior region of the lead
`frame having a reduced thickness relative to the remainder of the lead frame.
`See, e.g., Ex. 1004, ¶ [0076] and FIG. 5
`
`36
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 47-49; Institution Decision, p. 6
`
`
`
`Loh’s Disclosure Of “Etching”
`
`(cid:1) Loh describes that the reduced thickness regions 224, 226 in
`the interior of the lead frame (shown in FIG. 5) may be formed
`by selectively etching the lead frame
`(cid:1) This selective etching would not result in any etched features
`on the outer lateral surfaces of the resin package.
`Schubert Decl., ¶¶ 119-122 (“the selective etching discussed in Loh is
`fundamentally different from the etching of the notch parts that the ’411 Patent
`describes”)
`(cid:1) Not contested by Petitioner in its Reply or sur-sur Reply
`(cid:1) Not all etching generates concavities and convexities
`
`Ex. 2011 (Schubert Decl.), ¶ 25
`
`37
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 47-49; Institution Decision, p. 6
`
`
`
`Petitioner’s Construction Is Inconsistent
`With The Intrinsic Record
`
`38
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Inconsistent With Intrinsic Record
`
`(cid:1) Petitioner’s construction requires a plane that extends at a
`“level” of an upper surface and fails to account for an upper
`surface having multiple levels
`
`(cid:1) Specification discloses a metal part with an upper surface
`having multiple levels
`
`(cid:1) Encompassed by claim 1 via claim differentiation
`
`(cid:1) Petitioner’s construction leads to absurd results for non-flat metal parts
`
`39
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 27-29
`
`
`
`Inconsistent With Intrinsic Record
`
`Ex. 1001, 9:24-33
`
`40
`
`POR (Paper No. 20), pp. 27-31; Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-3
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Inconsistent With Intrinsic Record
`
`Claim 4 requires that the metal part has one or more upper
`surfaces that are coplanar which means that the metal part of
`claim 1 may have one or more upper surfaces that are not
`coplanar:
`
`41
`
`POR (Paper No. 20), pp. 27-31; Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-3
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Ex. 1001, Claim 4
`
`
`
`Inconsistent With Intrinsic Record
`
`Claim 3 requires that each of the at least two metal plates of
`the metal part are substantially flat which means that one or
`more of the metal plates need not be flat:
`
`See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“[T]he
`presence of a dependent claim that adds a particular limitation raises a presumption
`that the limitation in question is not found in the independent claim”).
`
`Ex. 1001, Claim 3
`
`42
`
`POR (Paper No. 20), pp. 27-31; Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-3
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Petitioner’s Construction
`Leads to Absurd Results
`
`(cid:1) For example, resin above the upper surface of the metal part
`being considered below the upper surface:
`
`(cid:1) Indeed petitioner affirmed that these “hypotheticals show
`resin disposed in a region below ‘an’ upper surface of the
`metal part.”
`(cid:1) This is because “region below an upper surface of the metal
`part” is not bounded by the upper surface of the metal part
`
`43
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-2; Response To Petitioner’s
`Reply To Patent Owner’s Sur-Reply (Paper No. 35), pp. 1-2
`
`
`
`Dr. Shanfield Could Not Apply
`
`(cid:1) Petitioner’s construction fails to account for a metal part
`having differences in level.
`To apply Petitioner’s construction to an upper surface having differences in level,
`one must arbitrarily select a level.
`(cid:1) During cross examination, Dr. Shanfield was not comfortable
`applying Petitioner’s construction to an example like this.
`
`44
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-2
`
`
`
`Dr. Shanfield Could Not Apply
`
`Ex. 1001
`
`Q … Can your claim construction be applied to an
`LED device in which the upper surfaces of the
`metal part are not coplanar? Yes or no?
`* * * * *
`A … I can't take a geometric creation that does not
`represent the context of the '411 patent and doesn't
`fit into anything I've ever seen and that is ever
`referred to as -- from what I know of the patent. So
`in that case, I'm no longer comfortable applying it.
`Ex. 2021, 68:15-69:4
`
`* * * * *
`86:2-6 (“Q. … Is an upper surface, singular upper
`surface, which has two different levels – A. That
`makes no sense.”);
`87:16-88:13 (“Q. Is it your testimony that a metal
`part having an upper surface that is at different
`levels at different places in the lead of the metal
`part is outside the scope of the '411 patent? A.
`Question makes no sense.”)
`
`45
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), p. 2 n1
`
`
`
`Petitioner’s Construction Fails To Give
`Meaning To All Terms Of The Claim
`
`46
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Petitioner’s Construction
`Does Not Give Meaning to All Terms
`
`(cid:1) Petitioner’s construction disassociates the claimed region
`from the upper surface.
`(cid:1) As recognized in the Institution Decision (p. 9):
`(cid:1) “claim 1 was written to recite ‘disposed in a region’ below an upper surface,
`which differs from simply ‘disposed below’ an upper surface”
`
`(cid:1) “the claim language recites ‘below an upper surface of the metal part,’ which
`differs from simply ‘below a metal part’”
`(cid:1) Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372
`(Fed. Cir. 2005) (“A claim construction that gives meaning to
`all the terms of the claim is preferred over one that does not
`do so.”)
`
`47
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE) See Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-3; Institution Decision, p. 9
`
`
`
`Petitioner’s Construction
`Does Not Give Meaning to All Terms
`
`Petitioner’s construction is that metal and resin are at a lower
`level than an upper surface of the metal part, anywhere on the
`outer lateral surface, irrespective of where the upper surface
`stops.
`Reply, 5 (“no requirement … that the region be bounded by ... the metal plate….”)
`
`48
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 1-3
`
`
`
`Dr. Shanfield Confirmed
`
`Dr. Shanfield drew the “upper surface” (red) in places where
`there is no metal (between the leads, blue). See, e.g.:
`
`Ex. 2022 (S1); Ex. 2021, 18:4-19 (“what I’ve indicated … is the upper surface of the
`metal part on the outer lateral surface”); Ex. 1017 (Shanfield Decl.), p. 8 (same)
`
`49
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 2-3; Ex. 2021, 18:4-19
`
`
`
`Dr. Shanfield Confirmed
`
`Ex. 1001
`
`Q … Are you able to identify with the red pen the
`upper surfaces of the metal part at the outer lateral
`surfaces shown in [FIG. 1]?
`
`* * * * *
`
`A You are asking me to opine on something I
`haven't opined on, and I'm simply not comfortable
`opining on it.
`
`Ex. 2021, 23:11-18
`
`Q … Were you able to identify the upper surface of
`the metal part when you prepared your declaration?
`
`* * * * *
`
`A You're asking now for a theoretical entity
`which I haven't opined on.
`
`Ex. 2021, 27:13-18
`
`50
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), p. 3; Ex. 2023 (S2)
`
`
`
`Dr. Shanfield Confirmed
`
`When shown the image below with red lines, Dr. Shanfield
`stated “I don’t know what these are, these red lines. I don’t
`know what you were indicating”:
`
`Ex. 2021, 32: 7-8
`
`See also Ex. 2021, 35:4-14 (Q … do those red lines accurately depict the upper
`surface of the metal part on that outer lateral surface…? A … I haven’t opined on
`that….”).
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 2-3; Ex. 2024 (S3)
`
`51
`
`
`
`Petitioner’s “Plane” Argument
`Should Be Rejected
`
`(cid:1) The Institution Decision notes that, though not express,
`Petitioner’s arguments may “turn on an interpretation of the
`claimed ‘upper surface of the metal part’ as defining a plane.”
`Decision, p. 9 n.5
`(cid:1) Petitioner’s “level” argument is the “plane” argument - a plane
`that extends at a level of an upper surface.
`Wrong:
`(cid:1) The claim does not say “region below the plane of the upper surface of the metal
`part”
`
`(cid:1) The “upper surface” of the metal part in the ’411 Patent is an actual, physical
`surface and not a theoretical plane
`
`(cid:1) Causes confusion when applying to upper surfaces with different levels
`
`52
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE) See POR (Paper No. 20), pp. 27-29; Patent Owner’s Sur-Reply (Paper No. 28), p. 1
`
`
`
`“Upper Surface”
`
`An actual, physical surface:
`(cid:1) Plating processing is applied to at least one surface of the bottom surface (an
`outer bottom surface 20a of the resin package 20) and the upper surface (an
`inner bottom surface 27a of a concave part 27) of the leads 22. (Ex. 1001,
`6:43-47)
`
`(cid:1) Plating processing is applied to the upper surfaces, outer bottom surfaces 120a
`and arc-shaped curved parts of the projecting leads 122. (Ex. 1001, 13:62-64)
`
`(cid:1) Plating processing is applied to the bottom surface and upper surface of the
`leads 222, and is not applied to the outer side surfaces. (Ex. 1001, 14:67-15:2)
`
`53
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 27-28; see also Ex. 2011, ¶ 39
`
`
`
`“Upper Surface” Has Meaning
`In Patent Owner’s Construction
`
`The “upper surface” language is included to account for the fact
`that the metal part has a thickness, and that both metal and
`resin are below the upper surface of the metal part. To recite
`both a portion of the metal part and a portion of the resin part
`below the metal part (as opposed to the upper surface of the
`metal part) could be confusing. In other words, the “upper
`surface” language provides clarity for the claim’s requirement
`that both metal and resin are disposed in the region below.
`
`54
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 27-28; see also Ex. 2011, ¶ 39
`
`
`
`“Region” Has Meaning
`In Patent Owner’s Construction
`
`(cid:1) Reciting the term “region” re-enforces Patent Owner’s position by
`emphasizing that the resin is not merely “in between” the leads; rather,
`there must actually be a specific region, that is below the upper surface
`of the metal part, and that has both metal and resin.
`
`(cid:1) When something is described as a “region,” it typically refers to a
`subdivision of a whole, and to refer to a subdivision, the region must be
`defined or bounded in some way. See Ex. 2011 (Schubert Decl.), ¶ 64.
`As the context of the claim makes clear, the claimed region is bounded
`by the prepositional-phrase “below an upper surface of the metal part.”
`
`(cid:1) Use of the word “region” gives appropriate emphasis to the geometric
`arrangement required by the claim.
`
`55
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 29-31
`
`
`
`Petitioner’s Extrinsic Evidence Cannot
`Resolve The Dispute
`
`56
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Petitioner’s Dictionaries
`Do Not Clarify the Meaning
`
`Petitioner offers definitions from two dictionaries to support its
`preferred meaning.
`But, the dictionaries Petitioner provides also define below as meaning underneath.
`
`57
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), p. 3; Ex. 1026; Ex. 1027.
`
`
`
`Petitioner’s Construction Renders The
`Disputed Term Superfluous
`
`58
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`Disputed Term Becomes Superfluous
`In View Of The Claimed “Notch”
`
`(cid:1) Claim 1 requires that “a notch is formed in the metal part at
`each of the four outer lateral surfaces of the resin package.”
`(cid:1) A notch in a singulated device results from cutting a resin-
`filled notch in a lead frame.
`(cid:1) The resin-filled notch at each of the four outer lateral surfaces
`of the resin package means that there is necessarily resin at
`a lower level than an upper surface of the metal part
`(because the notch was formed in the metal part).
`
`59
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 4-5; Ex. 2011, ¶50.
`
`
`
`Illustration of Notch
`
`“the ’411 Patent use[s] lead frames with etched singulation
`notches such that after cutting, the singulated devices have
`resin-filled concavities or convexities at their outer surfaces”
`
`“resin is filled in the notch parts”
`
`Ex. 2011, ¶ 50
`
`Ex. 1001, 4:11-15
`
`60
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Patent Owner’s Sur-Reply (Paper No. 28), pp. 4-5; see also Ex.
`1001, 3:51-55, 6:49-52, 13:31-41, 19:7-8
`
`
`
`Institution Decision
`
`61
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`Institution Decision, p. 9 n. 5
`
`
`
`Appendix
`
`62
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`
`
`House Example With
`Patent Owner’s Construction
`
`63
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), p. 13
`
`
`
`House Example With
`Petitioner’s Construction
`
`64
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), p. 13
`
`
`
`Legal Citations
`
`(cid:1) In re Power Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (quoting
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006))
`(“[C]laim construction must begin with the words of the claims themselves.”)
`
`Here, by its plain terms, claim 1 requires that there be resin “disposed in a region below” the
`upper surface of the metal part.
`
`(cid:1) Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
`claim construction that gives meaning to all the terms of the claim is preferred over
`one that does not do so.”)
`
`This specific requirement of the claim would be rendered superfluous if resin next to and
`“between” the leads were somehow encompassed by “below.”
`
`(cid:1) Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372-73 (Fed. Cir. 2004)
`(“[O]rdinary, simple English words whose meaning is clear and unquestionable,”
`absent any indication that their use in a particular context changes their meaning,
`are construed to “mean exactly what they say.”).
`
`65
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 10-11
`
`
`
`Legal Citations
`
`(cid:1) Nystrom v. Trex Co., Inc., 424 F.3d 1136, 1145-46 (Fed. Cir. 2005) (“Broadening
`of the ordinary meaning of a term in the absence of support in the intrinsic
`record indicating that such a broad meaning was intended violates the principles
`articulated in Phillips.”).
`
`(cid:1) Phillips v. AWH Corp., 415 F.3d 1303, 1317-19 (Fed. Cir. 2005) (when
`considered in the context of the intrinsic record, “extrinsic evidence in the form of
`expert testimony can be useful to a court for a variety of purposes, such as to
`provide background on the technology at issue, to explain how an invention
`works, [and] to ensure that the court's understanding of the technical aspects of
`the patent is consistent with that of a person of skill in the art”).
`
`(cid:1) See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)
`(“[T]he presence of a dependent claim that adds a particular limitation raises a
`presumption that the limitation in question is not found in the independent
`claim”).
`
`66
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See POR (Paper No. 20), pp. 10-11; Patent Owner’s Sur-Reply (Paper No. 28), p. 1.
`
`
`
`Claim 6
`
`Ex. 1001
`
`(cid:1) Claim 6 is directed to a different feature (and different portion
`of the device)
`(cid:1) Claim 6 uses different words
`(cid:1) Claim 6 does not modify the disputed claim term, and the
`features have different purposes.
`(cid:1) Claim differentiation therefore does not inform the dispute.
`
`67
`
`(DEMONSTRATIVE EXHIBIT – NOT EVIDENCE)
`
`See Pat
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