UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner
`____________
`
`Case No. IPR2018-00386
`Patent 9,490,411
`____________
`
`DECLARATION OF DR. STANLEY R. SHANFIELD IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`VIZIO Ex. 1017 Page 00001
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`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner
`____________
`
`Case No. IPR2018-00386
`Patent 9,490,411
`____________
`
`DECLARATION OF DR. STANLEY R. SHANFIELD IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`VIZIO Ex. 1017 Page 00001
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`
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`Case No. IPR2018-00386
`U.S. Patent No. 9,490,411
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`TABLE OF CONTENTS
`PRIOR TESTIMONY ..................................................................................... 1
`I.
`II. MATERIALS REVIEWED ............................................................................ 2
`III.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2
`IV. CLAIM CONSTRUCTION ............................................................................ 4
`A.
`Background and Legal Standards .......................................................... 4
`“Wherein Both a Part of the Metal Part and a Part of the Resin
`B.
`Part Are Disposed in a Region Below an Upper Surface of the
`Metal Part, on Four Outer Lateral Surfaces of the Resin
`Package” (Ex. 2011 (Schubert Decl. in Support of PO’s
`Response), ¶¶35-68) .............................................................................. 7
`“Resin Package Comprising a Resin Part and a Metal Part” (Ex.
`2011 (Schubert Decl. in Support of PO’s Response), ¶¶69-82) ......... 22
`THE CHALLENGED CLAIMS 1-3, 5-8, 10, 13, 16-20 OF THE ’411
`PATENT ARE UNPATENTABLE .............................................................. 29
`Legal Standards ................................................................................... 29
`A.
`B.
`Loh Discloses “Wherein Both a Part of the Metal Part and a
`Part of the Resin Part Are Disposed in a Region Below an
`Upper Surface of the Metal Part, on Four Outer Lateral
`Surfaces of the Resin Package” (Ex. 2011 (Schubert Decl. in
`Support of PO’s Response), ¶¶109-123, 129-136) ............................. 29
`Loh Discloses “a Resin Package Comprising a Resin Part and a
`Metal Part” (Ex. 2011 (Schubert Decl. in Support of PO’s
`Response), ¶¶124-128, 137-138) ......................................................... 31
`VI. CONCLUSION .............................................................................................. 36
`
`V.
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`C.
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`C.
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`i
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`I, Dr. Stanley Shanfield, have previously been asked to testify as an expert
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`
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`witness in this action. As part of my work in this action, I have been asked by VI-
`
`ZIO, Inc. (“VIZIO” or “Petitioner”) to respond to certain assertions offered by
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`Nichia Corporation (“Patent Owner”) in connection with U.S. Patent No.
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`9,490,411 (“the ’411 patent”) in IPR2018-00386. I hereby declare under penalty of
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`perjury under the laws of the United States of America, as follows: 1
`
`I.
`
`PRIOR TESTIMONY
`1.
`I am the same Stanley Shanfield who provided a Declaration in this
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`proceeding, Case No. IPR2018-00386 executed on December 22, 2017, as Exhibit
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`1003 (“December 22, 2017 Declaration”), which, including its appendices, is
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`incorporated by reference herein in its entirety. Ex. 1003 (December 22, 2017
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`Declaration), ¶¶ 1-155, Appendices A-B.
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`2.
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`I offer statements and opinions on behalf of Petitioner, generally
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`regarding
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`the validity, novelty, prior art, anticipation and obviousness
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`considerations, and understanding of a person of ordinary skill in the art
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`(“POSITA”) as it relates to the ’411 patent.
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`1 Throughout this Rebuttal Declaration, all emphasis and annotations are added un-
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`less noted.
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`3. My qualifications and the circumstances of my engagement were
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`detailed in ¶¶ 2, 4-15 and Appendix A of the December 22, 2017 Declaration,
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`which I incorporate here by reference.
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`4.
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`I offer this declaration in rebuttal to the arguments raised by Patent
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`Owner in its “Patent Owner’s Response” (“POR”) and the Declaration of Dr. E.
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`Fred Schubert (Ex. 2011).
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`II. MATERIALS REVIEWED
`5.
`In connection with my study of the POR and supporting declarations
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`and reaching the conclusions stated herein, I have reviewed a number of additional
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`documents. In addition to those mentioned in my previous declaration, I have
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`reviewed the following additional documents:
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` POR and its accompanying exhibits
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` All other documents referenced herein.
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`6. My opinions are also based upon my education, training, research,
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`knowledge, and personal and professional experience.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`7. My opinion regarding one of ordinary skill is discussed in the
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`December 22, 2017 Declaration Ex. 1003 ¶¶16-18.
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`8.
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`In my December 22, 2017 Declaration, I opined that a person of
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`ordinary skill in the art (“POSITA”) as of September 3, 2008 (the claimed priority
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`date of the ’411 patent) would have a minimum of a Bachelor’s degree in Physics,
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`Electrical Engineering, Material Science, or a related field, and approximately 5
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`years of professional experience in the field of semiconductor technology,
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`including manufacturing and packaging processes for light emitting devices. Ex.
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`1003 (December 22, 2017 Declaration), ¶ 17. Additional graduate education could
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`substitute for professional experience, or significant experience in the field could
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`substitute for formal education. Id. I have reviewed Dr. Schubert’s opinion
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`regarding the level of skill of a POSITA with respect to the ’411 patent (requiring
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`“(i) a Ph.D. degree in Electrical Engineering, Applied Physics, Materials Science,
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`or a related field, and about 3 years of practical experience in industry; (ii) a
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`Master’s degree in Electrical Engineering, Applied Physics, Materials Science, or a
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`related field, and about 5 years of practical experience in industry; or (iii) a
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`Bachelor’s degree in Electrical Engineering, Applied Physics, Materials Science,
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`or a related field, and about 10 years of practical experience in industry.”). Ex.
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`2011 (Schubert Decl. in Support of PO’s Response), ¶ 29. Under either my
`
`definition or Dr. Schubert’s definition, I met or exceeded the level of skill required
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`as of September 3, 2008, and my opinions are the same.
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`IV. CLAIM CONSTRUCTION
`A. Background and Legal Standards
`9.
`In the December 22, 2017 Declaration, I had been asked to assume
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`that all claim terms have their plain and ordinary meaning under the broadest
`
`reasonable interpretation consistent with the specification. I offered no opinion on
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`the merits of claim constructions; however, I reserved my right to so in the future.
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`See December 22, 2017 Declaration §VI.C. I understand that the Board has since
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`provided claim construction analysis of two terms at institution, but did not
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`formally construe those terms: “wherein both a part of the metal part and a part of
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`the resin part are disposed in a region below an upper surface of the metal part, on
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`four outer lateral surfaces of the resin package” and “resin package.” Inst. Dec.
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`§III.A. I further understand that Dr. Schubert subsequently proposed constructions
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`of those two terms. Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶34-
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`82.
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`10.
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`I have been advised that for purposes of this Inter Partes Review, the
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`standard for claim construction of terms within the claims of the patent is that
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`claim terms are generally given their plain and ordinary meaning under the
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`broadest reasonable interpretation in light of the specification, which is a different
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`standard than federal district court litigation.
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`I have been advised that claims must be construed in light of and
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`11.
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`consistent with the patent’s intrinsic evidence. Intrinsic evidence includes the
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`claims themselves, the written disclosure in the specification, and the patent’s
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`prosecution history, including the prior art that was considered by the United States
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`Patent and Trademark Office (“PTO”).
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`12.
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`I have been advised that the language of the claims helps guide the
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`construction of claim terms. The context in which a term is used in the claims can
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`be highly instructive.
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`13.
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`I have been advised that the specification of the patent is the best
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`guide to the meaning of a disputed claim term. Embodiments disclosed in the
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`specification help teach and enable those of skill in the art to make and use the
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`invention, and are helpful to understanding the meaning of claim terms.
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`Nevertheless, in most cases, preferred embodiments and examples appearing in the
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`specification should not be read into the claims.
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`14. While claim terms are generally given their plain and ordinary
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`meaning, I have been advised that the plain and ordinary meaning may not apply
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`where the patentee disavows the full scope of the claim term either in the
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`specification or during prosecution.
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`I also have been advised that a patentee’s intent to disavow claim
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`15.
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`scope must be clear and unmistakable when considered in the context of the
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`prosecution history as a whole.
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`16.
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`I have been advised that statements made by the inventor during
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`continued prosecution of a related patent application can be relevant to claim
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`construction.
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`17. While dictionaries might be relevant to claim construction, I have
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`been advised that dictionary definitions should not be applied if they conflict with
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`the intrinsic record, including the claims, specification, and prosecution.
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`18.
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`I have been advised that claim constructions that do not exclude
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`preferred embodiments disclosed in the specification are preferred over claim
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`constructions that exclude preferred embodiments.
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`19. For the reasons discussed further below, in my opinion Dr. Schubert’s
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`proposed constructions of “wherein both a part of the metal part and a part of the
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`resin part are disposed in a region below an upper surface of the metal part, on four
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`outer lateral surfaces of the resin package” and “a resin package comprising a resin
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`part and a metal part” are incorrect.
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`B.
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` “Wherein Both a Part of the Metal Part and a Part of the Resin
`Part Are Disposed in a Region Below an Upper Surface of the
`Metal Part, on Four Outer Lateral Surfaces of the Resin Package”
`(Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶35-68)
`20. Dr. Schubert opines that the term “wherein both a part of the metal
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`part and a part of the resin part are disposed in a region below an upper surface of
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`the metal part, on four outer
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`lateral surfaces of
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`the resin package”
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` requires “resin below metal” or resin “below (i.e., underneath) an upper surface of
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`the metal part.” Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶35, 42;
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`see also Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶41 (“below
`
`means underneath”). I disagree. In my opinion, the plain meaning of the term
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`“both a part of the metal part and a part of the resin part are disposed in a region
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`below an upper surface of the metal part” requires resin in a “region” that is
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`“below an upper surface” of the metal part, as recited in the claim.
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`21. The specification supports giving the term “both a part of the metal
`
`part and a part of the resin part are disposed in a region below an upper surface of
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`the metal part, on four outer lateral surfaces of the resin package” its plain meaning.
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`The figures for all of the embodiments in the ’411 patent disclose resin that is
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`disposed in a “region” that is “below an upper surface” of the metal part, and none
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`shows it directly under the upper surface of a metal part. For example, Figure 1,
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`which corresponds to the first embodiment, discloses a part of the metal part
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`(shown in blue) and a part of the resin part (shown in green) are disposed in a
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`region below an upper surface of the metal part (outlined in blue), on four outer
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`lateral surfaces (outlined in red):
`
`"a concave
`portion having a
`bottom surface"
`
`F ig . 1
`
`100
`~
`?-1~Zi-~::;.........;...--=~ 1=------ ~~ } 20
`~....,~
`
`~ - -- 22
`
`"a part of the metal part and
`a part of the resin part
`are disposed in a region below an
`upper surface of the metal part"
`
`"outer
`lateral
`surfaces"
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`
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`Ex. 1001 (’411 patent), Fig. 1. Significantly, no portion of resin part 25 is located
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`directly under metal on the four outer lateral surfaces.
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`22. Consistent with the plain meaning of “below an upper surface,”
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`Figure 1 shows that a part of the metal part and a part of the resin part are below
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`(i.e., at a lower level than) an upper surface of the metal part. The specification
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`repeatedly refers to surfaces of the resin package or leads as having a “level” or
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`“levels.” Ex. 1001 (’411 patent), 4:63-65, 15:2-5, 16:30-33, 17:3-6, 17:44-46.
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`And claim 14 recites “a distance between said surfaces at two or more different
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`levels is in a range of about 1/4 to about 4/5 of a thickness of the metal part” (Ex.
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`1001 (’411 patent), 20:23-26), which confirms that position relative to a surface is
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`determined with respect to the level of that surface. Similarly, a POSITA would
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`have understood that when resin is “below” an upper surface, as in claim 1, it is at
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`a lower level than the upper surface. Dr. Schubert opines that the plain meaning of
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`“below” must be “underneath.” Ex. 2011 (Schubert Decl. in Support of PO’s
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`Response), ¶¶41-43 (“below (i.e., underneath)”). I disagree. Dr. Schubert’s
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`interpretation is too narrow in view of the plain language of the Claims and the
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`disclosure of the patent specification. Consistent with the Claims, the specification,
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`and the usage in the field, contemporaneous dictionaries confirm that there is a
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`broader plain meaning of “below,” i.e., “at a lower level than.” Ex. 1026
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`(Webster’s Third New International Dictionary of the English Language,
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`Unabridged (2002)), 202 (“at a lower level than”); Ex. 1027 (Shorter Oxford
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`English Dictionary on Historical Principles, Sixth Edition (2007)), 217 (“Lower in
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`position than, at less elevation than.”).
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`23. Additionally, consistent with the plain meaning of “region,” Figure 1
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`shows that the “region” extends beyond the metal leads to include both metal and
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`resin below an upper surface of the metal part (as outlined in blue above). There is
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`no requirement that the metal and resin parts in the region be stacked vertically, or
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`that the region be bounded by a portion of a metal plate.
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`24. All of the preferred embodiments of the patent are in agreement and
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`support the plain meaning of the term. Figures corresponding to each embodiment
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`of the ’411 patent show resin (green) in a “region” that is “below an upper surface”
`
`of the metal part (outlined in blue):
`
`Embodiment
`First
`Embodiment
`
`Figure
`"a concave
`portion having a
`bottom surface"
`
`F ig. 1
`
`26}
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`25
`22
`
`20
`
`22
`"a part of the metal part and
`a part of the resin part
`are disposed in a region below an
`upper surface of the metal part"
`
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`Ex. 1001 (’411 patent), Fig. 1.
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`"outer
`lateral
`surfaces"
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`Second
`Embodiment
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`Fig . 6
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`120c
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`Third
`Embodiment
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`Ex. 1001 (’411 patent), Fig. 6.
`F'g. 9
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`Fourth
`Embodiment
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`Ex. 1001 (’411 patent), Fig. 9.
`1
`Fig .
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`220
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`Ex. 1001 (’411 patent), Fig. 11.
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`11
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`Fifth
`Embodiment
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`Fig . 1.2
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`Sixth
`Embodiment
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`Ex. 1001 (’411 patent), Fig. 12.
`F i,g. 13
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`Ex. 1001 (’411 patent), Fig. 13.
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`420c
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`420b
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`Thus, consistent with the plain meaning, all of the embodiments illustrated in
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`Figures 1, 6, 9, and 11-13 disclose “both a part of the metal part and a part of the
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`resin part are disposed in a region below an upper surface of the metal part,” and
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`none discloses any resin directly under an upper surface of the metal part.
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`25. For these reasons, Dr. Schubert is incorrect that claim 1 requires
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`“resin below metal” or resin “below (i.e., underneath) an upper surface of the metal
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`part.” Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶35, 42. Dr.
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`Schubert’s proposed construction is inconsistent with the specification because it
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`improperly excludes the preferred embodiments of the ’411 patent. As discussed
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`above, and as shown in the figures, none of the preferred embodiments has resin
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`located directly under metal on four outer lateral surfaces of the resin package.
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`E.g., Ex. 1001 (’411 patent), 6:21-18:5, Figs. 1, 6, 9, 11-13.
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`26. Dr. Schubert opines that “it is clear from the detailed description that
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`the concavities and convexities that result from etching the notch parts 21a would
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`result in resin below metal” and that “the concavity/convexity would be on all four
`
`outer lateral surfaces.” Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶
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`44-56. He annotated Fig. 11 of the ’411 patent to show the “concavity/convexity
`
`surrounded by a green circle”:
`
`= ·-
`Fig.
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`·11
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`
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`Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶54 (citing Ex. 1001 (’411
`
`patent), Fig. 11, 16:52-54). I disagree that the concavities and convexities form
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`“an upper surface of the metal part, on four outer lateral surfaces of the resin
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`package.” The concavity/convexity identified by Dr. Schubert is irrelevant
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`because it is not tied to the claim language. Specifically, it is not “an upper surface”
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`of the metal part and is not “on four outer lateral surfaces of the resin package.”
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`27. With respect to the “an upper surface” limitation, the specification
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`fails to contain any disclosure of the concavity/convexity as being “an upper
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`surface.” The specification shows the concavity/convexity of etched leads 322 in
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`Figure 11, but does not describe it as “an upper surface” of the metal part. Instead,
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`the specification makes clear that when a feature such as a step, concave, or
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`convex portion is formed, it creates additional, distinct surfaces. For example, the
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`specification discloses that the step in Figure 11 has a “first surface which is
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`provided in the outer bottom surface 320a,” a “second surface which is formed at a
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`substantially right angle from the outer bottom surface,” a “third surface which is
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`formed at a substantially right angle from the second surface,” and “a fourth
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`surface of the outer side surface of the resin package.” Ex. 1001 (’411 patent),
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`16:33-44. The image below has been annotated to show the described first, second,
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`third, and fourth surface, which illustrates how forming a step, concave, or convex
`
`portion creates additional, distinct surfaces:
`
`Fig. 11
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`320c
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`325 } 320
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`~?.2
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`
`
`
`"second surface"
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`Ex. 1001 (’411 patent), Fig. 11.
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`28. Similarly,
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`as
`
`shown
`
`in
`
`annotated
`
`image
`
`below,
`
`the
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`concavity/convexity identified by Dr. Schubert and shown in Figure 11 is a side
`
`surface, and is a different surface distinct from the upper surface:
`
`Fig . 11
`
`"upper surface"
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`
`
`
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`Ex. 1001 (’411 patent), 16:51-54, Fig. 11. Dr. Schubert opines that the “concavity
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`and convexity” shown in his illustration is part of the “upper surface of the metal.”
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`Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶51; see also IPR2018-
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`00437, Ex. 2019 ¶115 (“etched concave portion on an upper surface”). I disagree.
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`Dr. Schubert’s illustration is contrary to the specification. Ex. 2011 (Schubert Decl.
`
`in Support of PO’s Response), ¶51. As discussed above, forming a step, concave,
`
`or convex portion creates additional, distinct surfaces.
`
` In addition, the
`
`specification makes clear that the surface or surfaces in the notch are side surfaces.
`
`See Ex. 1001 (’411 patent), 13:37-41 (disclosing that the “side surfaces
`
`corresponding to the notch parts 21a adhere to the resin-molded body”). I also
`
`understand that in a related ’250 patent proceeding, Patent Owner distinguished
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`“concave portions on ‘a[n] inner side wall surface’” from “a top surface of the lead
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`frame.” IPR2017-02011, Pap. 12 at 7, 46-47 (“Moreover, the Petition appears to
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`rely on plane views showing a top surface, and does not point to an inner side wall
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`surface as claimed.”). Thus, the concavity/convexity identified by Dr. Schubert is
`
`not the claimed “upper surface.”
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`29. The patent also fails to disclose that the concavity/convexity is “on
`
`four outer lateral surfaces” as required by the claims. At most, Figure 11 shows
`
`this feature on only two outer lateral surfaces of the resin package, and none of the
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`other figures show the feature at all. In his declaration, Dr. Schubert speculates
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`about what the devices in the figures “would” have rather than what the figures
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`actually show. Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶54-55.
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`He also created a new figure found nowhere in the specification. Ex. 2011
`
`(Schubert Decl. in Support of PO’s Response), ¶51. Dr. Schubert relies on the
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`specification’s disclosure of “a concavity/convexity…in the cross-sectional surface
`
`of the notch part.” Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶46-
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`55. However, the specification does not disclose what part of the notch part is
`
`etched, or that there is a concavity/convexity on all four outer lateral surfaces.
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`Therefore, contrary to Dr. Schubert’s opinion (Ex. 2011 (Schubert Decl. in Support
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`of PO’s Response), ¶51), a POSITA would not have understood the ’411 patent to
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`disclose that “the resulting device includes resin under metal on four outer lateral
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`sides.”
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`30.
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` Dr. Schubert’s proposed claim construction also omits words from
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`the claim. I have been advised that a claim construction gives meaning to all the
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`terms of the claim is preferred over one that does not do so. Dr. Schubert opines
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`that the claim term “wherein both a part of the metal part and a part of the resin
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`part are disposed in a region below an upper surface of the metal part, on four outer
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`lateral surfaces of the resin package” requires “resin below metal” and that “below
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`means underneath.” Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶¶35,
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`41-42. But Dr. Schubert’s proposed constructions omits the relevant claim
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`language “an upper surface” and “region” contrary to the rule that a proper
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`construction should give meaning to all the terms of the claim.
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`31. First, claim 1 recites “below an upper surface of the metal part,”
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`rather than simply “below a metal part.” Therefore, to give meaning to the phrase
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`“upper surface,” a part of the resin part need only be at a lower level than the upper
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`surface of the metal part. As explained above, this interpretation is consistent with
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`all of the preferred embodiments of the patent.
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`32. Second, claim 1
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`recites
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`that
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`the
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`resin
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`is disposed
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`in a
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`“region below an upper surface of the metal part.” The “region” need only be
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`“below an upper surface” of the metal part on four outer lateral surfaces of the
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`resin package. As explained above, the preferred embodiments confirm that the
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`“region” extends beyond the upper surface of the metal leads in order to include
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`both metal and resin below an upper surface of the metal part. There is no
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`requirement that the metal and resin parts in the region be stacked vertically, or
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`that the region be bounded by a portion of a metal plate. Thus, Dr. Schubert’s
`
`proposal fails to give meaning to all words of the claim.
`
`33.
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`In addition, claim 6 expressly uses a different term—“in a region
`
`directly under”—when requiring that the claimed region be located directly
`
`underneath another structure, as opposed to merely below an upper surface. Ex.
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`1001 (’411 patent), 19:65-67. Claim 1, on the other hand, does not require that the
`
`claimed region be located “directly under,” yet Dr. Schubert’s proposed
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`construction would read such a requirement into the claim. The difference in the
`
`words used in the patent for claims 6 and 1 confirm that Dr. Schubert’s proposed
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`construction is incorrect.
`
`34. Dr. Schubert asserts that I “appear to implicitly assume that resin
`
`between the leads satisfies the claim’s requirement that there be both a part of the
`
`resin part and a part of the metal part disposed in a region below an upper surface
`
`of the metal part.” Ex. 2011 (Schubert Decl. in Support of PO’s Response), ¶57.
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`Similarly, Patent Owner asserts that I equated “region below” with “region
`
`between” in my analysis of Loh. POR 9. This is incorrect. Contrary to these
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`assertions, as I expressly set forth in the December 22, 2017 Declaration, and
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`consistent with the proposed construction described in this Declaration, Loh
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`discloses part of the resin part disposed in a region “below” an upper surface of the
`
`metal part. See, e.g., Ex. 1003 (December 22, 2017 Declaration), ¶¶85-90. I did
`
`not equate “region below” with “region between.”
`
`35. Patent Owner argues that “[b]y way of analogy, one would not say
`
`that their next-door neighbor’s basement is ‘disposed in a region below’ their own
`
`house.” POR 12-14. However, this analogy is neither relevant nor comparable to
`
`the light emitting device of the ’411 patent. For example, the analogy as depicted
`
`by Patent Owner contradicts every figure and preferred embodiment of the patent.
`
`As discussed above, the actual figures of the ’411 patent show that all of the
`
`preferred embodiments are consistent with my interpretation of the claim.
`
`Moreover, Patent Owner’s depiction of its analogy ignores that the claims include
`
`the terms “region” and “an upper surface.” For example, Patent Owner’s house
`
`analogy incorrectly depicts two separate houses with two separate regions, as
`
`opposed to “a region” that extends beyond the metal leads to include both metal
`
`and resin in a region below an upper surface of “the metal part” as shown in all the
`
`figures of the ’411 patent. The analogy further incorrectly requires metal (sub-
`
`floor) directly under the upper surface of a metal plate and resin (basement)
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`directly under that metal.
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`36. Dr. Schubert’s opinions regarding adhesion (Ex. 2011 (Schubert Decl.
`
`in Support of PO’s Response), ¶¶44-57) are irrelevant because the prior art Loh
`
`reference he attempts to distinguish provides the same benefit. The ’411 patent
`
`explains that concavities and convexities provide “better adhesion” by “increas[ing]
`
`a bonding area.” Ex. 1001 (’411 patent), 9:28-41. Loh provides this same benefit
`
`by having resin in a region below an upper surface of the metal part, which
`
`improves the stability of the package by increasing the bonding area of the leads to
`
`the resin part. Ex. 1004 (Loh), Fig. 7; Ex. 1003 (December 22, 2017 Declaration),
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`¶84. Similarly and contrary to Dr. Schubert’s assertion (Ex. 2011 (Schubert Decl.
`
`in Support of PO’s Response), ¶¶48-50), Urasaki improves adhesion by having
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`resin filled notches—thereby increasing the bonding area. Ex. 2012 (Urasaki), Fig.
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`2, Fig. 3.
`
`37. Finally, Dr. Schubert opines that in the prosecution history “the
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`Examiner’s statement in his explanation for why the claims are allowable supports
`
`the plain and ordinary meaning of the claim term requiring resin below metal.” Ex.
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`2011 (Schubert Decl. in Support of PO’s Response), ¶¶66-68. I disagree. Dr.
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`Schubert cites the Examiner’s discussion of U.S. Patent Application No.
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`2004/0106234 (“Sorg”), but Sorg discloses chip encapsulation 6 and carrier 9 (i.e.,
`
`resin part) (in green), which are located entirely above the upper surface of
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`connection conductors 2 and 3 (i.e., metal part) (in blue):
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`11
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`Ex. 1024 (Sorg), Fig. 1, ¶¶7-8, 41, 48. Indeed, during prosecution of the ’411
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`patent, the Examiner explained that “Sorg et al disclose in Fig. 1 the resin part 6
`
`which is an encapsulation material (paragraph 0008)…above the metal part 2 and 3
`
`(paragraph 0007).” Ex. 1002 (’411 file history), 243. Therefore, the Examiner
`
`found that Sorg “does not disclose or suggest the limitation ‘wherein both a part of
`
`the metal part and a part of the resin part are disposed in a region below an upper
`
`surface of the metal part on four outer lateral surfaces of the resin package.’” Ex.
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`1002 (’411 file history), 243. The file history is consistent with my reading of the
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`claim.
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`38. For these reasons, the plain meaning of the term “both a part of the
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`metal part and a part of the resin part are disposed in a region below an upper
`
`surface of the metal part” requires resin in a “region” that is “below an upper
`
`surface” of the metal part, as recited in the claim.
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`C.
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` “Resin Package Comprising a Resin Part and a Metal Part” (Ex.
`2011 (Schubert Decl. in Support of PO’s Response), ¶¶69-82)
`39. Dr. Schubert opines that the term “a resin package comprising a resin
`
`part and a metal part” is defined as referring to a resin package, a resin part, and a
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`metal part for “a singulated light emitting device” both expressly (Ex. 2011
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`(Schubert Decl. in Support of PO’s Response), ¶¶69-72), and implicitly (Ex. 2011
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`(Schubert Decl. in Support of PO’s Response), ¶¶73-82). For the reasons
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`explained below, I disagree. The term “resin package comprising a resin part and a
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`metal part” should be given its plain and ordinary meaning because the claims and
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`specification uses the term consistent with that meaning.
`
`40. The claim language supports the plain meaning. All of the challenged
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`claims (claims 1-3, 5–8, 10 13, 15-20) are apparatus claims that recite the structure
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`of “a light emitting device” comprising “a resin package comprising a resin part
`
`and a metal part.” Ex. 1001 (’411 patent), 19:33-50. The claims do not recite
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`“singulated” and do not recite forming a light emitting device from “multiple
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`devices.” The applicant was clearly aware of the word “singulated” and the
`
`concept of forming a single LED device from multiple LED devices, because those
`
`concepts are discussed in the specification, but the applicant did not include the
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`word or concept in the claims. Because the claims do not recite singulation, or the
`
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`general concept of cutting to obtain multiple devices, the claim language does not
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`support Dr. Schubert’s proposed construction.
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`41. The intrinsic record also supports the plain meaning. The terms “resin
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`package,” “resin part,” or “metal part” are not defined anywhere in the ’411
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`patent’s specification. In addition, the figures in the specification that show “a
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`resin package,” are consistent with my understanding of the plain meaning of the
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`term as used in the field. E.g., Ex. 1001 (’411 patent), 6:41 (“a resin package 20”),
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`Figs. 1, 2, 6, 9, 11, 12, 13; Ex. 1039 (IEEE Standard Glossary of
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