Filed on behalf of: Nichia Corporation
`
` Paper ____
`
`Date filed: September 18, 2018
`
`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
`_______________
`
`DECLARATION OF DR. E. FRED SCHUBERT
`
`NICHIA EXHIBIT 2011
`Vizio, Inc. v. Nichia Corp.
`Case IPR2018-00386
`
`

`

`TABLE OF CONTENTS
`
`Schubert Declaration
`IPR2018-00386
`
`I.
`
`Introduction .......................................................................................................... 1
`
`II. Qualifications .................................................................................................... 1
`
`III. Materials considered ......................................................................................... 7
`
`IV. Summary of opinions ....................................................................................... 7
`
`V.
`
`Technology background ................................................................................... 8
`
`VI. Definition of one of ordinary skill in the art ..................................................12
`
`VII.
`
`Claim construction ......................................................................................16
`
`The proper scope of the term “wherein both a part of the metal part and a
`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” requires resin below
`metal on four outer lateral surfaces ......................................................................16
`
`1. The plain and ordinary meaning of the term requires resin below metal on
`four outer lateral surfaces of the resin package .................................................17
`
`2. The proper scope of the claimed term is consistent with the ’411
`Specification and the stated benefits of the claimed invention .........................22
`
`3. Petitioner and Dr. Shanfield have misunderstood the significance of the
`claimed term and in doing so, improperly broadened its scope ........................34
`
`4. The prosecution history is consistent with Nichia’s interpretation and
`supports rejecting Petitioner’s broadening construction of the term .................39
`
`The term “a resin package comprising a resin part and a metal part” limits
`B.
`the scope of claim 1 to a post-singulation device .................................................41
`
`1. The term “a resin package comprising a resin part and a metal part” is
`expressly defined in the specification ................................................................42
`
`2. The term “a resin package comprising a resin part and a metal part” is also
`implicitly defined in the specification through its repeated, consistent, and
`exclusive use ......................................................................................................44
`
`VIII. Law ..............................................................................................................49
`
`A. Anticipation .................................................................................................49
`
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`Schubert Declaration
`IPR2018-00386
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`B. Obviousness .................................................................................................49
`
`IX. Prior art references..........................................................................................56
`
`A.
`
`Loh ...............................................................................................................56
`
`B. Mori .............................................................................................................57
`
`C. Wang ............................................................................................................57
`
`D. Oshio ............................................................................................................57
`
`X.
`
`The claims of the ’411 patent are not unpatentable .......................................58
`
`A.
`
`Claim 1 is not anticipated by Loh (Ground 1) ............................................58
`
`1. Loh does not disclose “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.” .........................................59
`
`2. Loh does not disclose a “a resin package” ..................................................68
`
`B.
`
`Claim 1 is not obvious in view of Loh (Ground 2) .....................................69
`
`1. Loh would not have suggested “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.” .......................70
`
`2. Loh would not have suggested “a resin package comprising a resin part and
`a metal part” .......................................................................................................73
`
`XI. Conclusion ......................................................................................................74
`
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`Schubert Declaration
`IPR2018-00386
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is E. Fred Schubert, and I have been retained by counsel for
`
`Patent Owner, Nichia Corporation (“Nichia”), to serve as an expert witness in the
`
`above-captioned proceeding based on a Petition for Inter Partes Review (IPR)
`
`filed by VIZIO, Inc. (the “Vizio Petition” or the “Petition”), which challenges
`
`certain claims in Nichia’s U.S. Patent No. 9,490,411 (the “’411 Patent”).
`
`2.
`
`I understand that this declaration will be submitted in support of the
`
`Patent Owner’s Response in the IPR.
`
`3.
`
`The facts and opinions expressed herein are true and accurate to the
`
`best of my knowledge and understanding based on the information I have reviewed
`
`to date.
`
`II. QUALIFICATIONS
`
`4.
`
`My curriculum vitae (CV) detailing my educational background and
`
`professional experience is enclosed as Appendix A. My CV includes a list of all
`
`publications I have authored, including all publications from the previous ten
`
`years.
`
`5.
`
`I am currently a Full Professor in the Department of Electrical,
`
`Computer, and Systems Engineering at Rensselaer Polytechnic Institute (RPI) in
`
`Troy, New York.
`
`1
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`Schubert Declaration
`IPR2018-00386
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`6.
`
`I received a Master’s Degree in Electrical Engineering from the
`
`University of Stuttgart, Germany, in 1981. I received a Ph.D. degree in Electrical
`
`Engineering from the University of Stuttgart, Germany, in 1986. Subsequent to
`
`my education, starting in 1985, I worked in industry at AT&T Bell Laboratories in
`
`Holmdel and Murray Hill, New Jersey, for ten years. In 1995, I joined academia.
`
`My first position was at Boston University (Boston, MA), where I worked as a full
`
`professor for seven years. In 2002, I joined RPI as a distinguished professor, the
`
`Wellfleet Senior Constellation Professor and Head of the Future Chips
`
`Constellation with appointments in the Department for Electrical, Computer, and
`
`Systems Engineering and the Department for Physics, Applied Physics and
`
`Astronomy. I am the founding Director of the Smart Lighting Engineering
`
`Research Center that is funded by the U.S. National Science Foundation at a
`
`volume of $40 million over 10 years.
`
`7.
`
`I am named as co-inventor in more than 30 U.S. patents and have co-
`
`authored more than 300 publications. I authored the books “Doping in III-V
`
`Semiconductors” (1993), “Delta Doping of Semiconductors” (1996), and the first,
`
`second, and third editions of “Light-Emitting Diodes” (2003, 2006, and 2018); the
`
`latter book is known as a standard textbook in the field of LEDs, and the book has
`
`been translated into Russian, Japanese and Korean. My publications have been
`
`
`
`2
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`Schubert Declaration
`IPR2018-00386
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`well recognized by the technical community as illustrated by the more than 30,000
`
`citations that my publications have received.
`
`8.
`
`I received several awards for my technical contributions. They
`
`include: Senior Member IEEE (1993); Literature Prize of Verein Deutscher
`
`Elektrotechniker for my book “Doping in III-V Semiconductors” (1994); Fellow
`
`SPIE (1999); Alexander von Humboldt Senior Research Award (1999); Fellow
`
`IEEE (1999); Fellow OSA (2000); Boston University Provost Innovation Award
`
`(2000); Discover Magazine Award for Technological Innovation (2000); R&D 100
`
`Award for RCLED (2001); Fellow APS (2001); RPI Trustees Award for Faculty
`
`Achievement (2002 and 2008); honorary membership in Eta Kappa Nu (2004); 25
`
`Most Innovative Micro- and Nano-Products of the Year Award of R&D Magazine
`
`(2007); and Scientific American 50 Award (2007).
`
`9. My general expertise is in the field of electrical engineering and
`
`applied physics including semiconductor materials, processing, and devices. My
`
`specific expertise is in the field of light-emitting diodes (LEDs), including the
`
`structure, packaging, and manufacture of LEDs. My work has included the design,
`
`growth, fabrication, manufacturing, and testing of semiconductor devices as well
`
`as the employment of these devices in a variety of applications.
`
`10.
`
`I have been working in the field of semiconductor microelectronic and
`
`optoelectronic devices, including light-emitting diodes (LEDs), for more than 30
`
`
`
`3
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`Schubert Declaration
`IPR2018-00386
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`years. I have conducted and directed research in this field, conducted and directed
`
`development in this field, and have published numerous papers, patents, and books
`
`on the topic of LEDs. My research and development activities have included the
`
`packaging, reliability, life-testing, heat-flow, and encapsulation of LEDs. Specific
`
`packaging-related research topics, which I have personally worked and published
`
`on, include the following:
`
`• The encapsulation of LED chips in an LED package using a transparent
`resin, and the control of the refractive index of the transparent resin by the
`inclusion of TiO2 nanoparticles;
`
`
`• The heat flow in LED packages and the thermal management in LED
`packages;
`
`
`• The development of new approaches for the over-voltage protection of
`packaged LEDs without the use of Zener diodes;
`
`
`• The spatial distribution of phosphor in LED packages including the analysis
`of remote-phosphor distributions;
`
`
`• The reliability of LED packages including the lifetime testing under (i)
`elevated temperatures, (ii) enhanced humidity, and (iii) over-current
`conditions; and
`
`
`• Delamination effects of optical thin films under stress conditions occurring
`in optoelectronic packages.
`
`
`
`
`
`4
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`Schubert Declaration
`IPR2018-00386
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`11.
`
`I have made pioneering contributions to the following technical fields:
`
`Delta-doping, resonant cavity light-emitting diodes, enhanced spontaneous
`
`emission in Er-doped Si/SiO2 microcavities, elimination of unipolar heterojunction
`
`band discontinuities, p-type superlattice doping in AlGaN, photonic-crystal light-
`
`emitting diodes, crystallographic etching of GaN, polarization-enhanced ohmic
`
`contacts, delta-doped ohmic contacts, non-alloyed ohmic contacts, omni-
`
`directional reflectors, low-refractive index materials, anti-reflection coatings, light-
`
`emitting diodes with remote phosphors, the efficiency droop in GaInN LEDs, and
`
`solid-state lighting.
`
`12.
`
`I have extensive experience related to the packaging of LEDs. I have
`
`conducted research and published articles on the following:
`
`• the design, fabrication, and testing of LED packages with particular attention
`to the spatial phosphor distribution;
`
`• the design and testing of LED packages with particular attention to the
`thermal management of packaged LEDs; and
`
`• the occurrence of trapped optical modes inside the LED packages.
`
`13.
`
`Furthermore, I pioneered what is now known as the “remote
`
`phosphor” distribution in white LEDs; the associated research article (entitled
`
`“Strongly enhanced phosphor efficiency in GaInN white light-emitting diodes
`
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`Schubert Declaration
`IPR2018-00386
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`using remote phosphor configuration and diffuse reflector cup”) has been cited
`
`more than 300 times.
`
`14.
`
`I have written three editions of a book on LEDs with the second
`
`edition published in 2006; the book contains a chapter dedicated to the packaging
`
`of LEDs.
`
`15. At RPI, I regularly teach a course on LEDs which includes extensive
`
`discussions on the packaging of LEDs. I have guided graduate students and post-
`
`doctoral researchers conducting research on the packaging of LEDs. My work in
`
`industry (AT&T Bell Laboratories) included the packaging of LEDs and lasers,
`
`including minimizing the cost of device packaging processes.
`
`16.
`
`I am the founding director of the Smart Lighting Engineering
`
`Research Center funded by the US National Science Foundation; this center
`
`concerns LEDs and the packaging of these devices to make intelligent or “smart”
`
`lighting systems.
`
`17.
`
`In a previous trial involving Nichia and Everlight, I was found by the
`
`district court to be “a qualified expert witness in the field of light-emitting diode
`
`and semiconductor technology, including packaging.” Exhibit 2015, p. 6 (FF15).
`
`18.
`
`I have trained and guided numerous junior engineers (including
`
`graduate students) in the field of LEDs and have collaborated with numerous
`
`engineers active in the field of LEDs. Accordingly, I know from personal
`
`
`
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`Schubert Declaration
`IPR2018-00386
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`experience the level of ordinary skill in the art and I consider myself to have at
`
`least the same level of skill and experience as the person of ordinary skill in the art
`
`(POSITA) to which the ’411 Patent is directed, and had so as of the time of the
`
`invention (approximately 2008).
`
`III. MATERIALS CONSIDERED
`
`19.
`
`In preparation of this declaration and the opinions set forth herein, I
`
`have considered the Petition filed by VIZIO and the supporting exhibits, including
`
`Dr. Shanfield’s declaration, and the references relied on by the Petition and Dr.
`
`Shanfield. In addition, I have also considered the documents, data, and other
`
`information mentioned and cited to herein, and the Exhibits accompanying
`
`Nichia’s Response. Further, I have reviewed the Board’s Institution Decision. My
`
`opinions are also based upon my knowledge, education, experience, research, and
`
`training in this field that I have accumulated over the course of my career.
`
`IV.
`
`SUMMARY OF OPINIONS
`
`20.
`
`It is my opinion that claims 1-3, 5-8, 10, 13, and 15-20 of U.S. Patent
`
`No. 9,490,411 (“’411 Patent”) are not anticipated or rendered obvious by the
`
`references cited in VIZIO’s petition. First, it is my opinion that proper reading of
`
`the claim phrase “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” shows that the
`
`7
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`Schubert Declaration
`IPR2018-00386
`
`Loh reference does not meet (or suggest) the condition of resin being “in a region
`
`below an upper surface of the metal part”. That is, Loh neither anticipates nor
`
`obviates the claim because it fails to teach the element associated with this phrase.
`
`Second, the ’411 Patent discloses a product made by “singulation” in which
`
`multiple devices are cut to form a plurality of singulated resin packages. All
`
`devices disclosed in the ’411 Patent are such singulated devices. The Loh
`
`reference does not disclose or suggest that its resin package is a singulated resin
`
`package. Accordingly, Loh neither anticipates nor obviates the claim because it
`
`fails to teach a singulated resin package.
`
`V. TECHNOLOGY BACKGROUND
`
`21. The ’411 Patent relates to a fabrication process sequence for the
`
`packaging of light emitting diodes (“LEDs”). LEDs used in lighting applications
`
`are semiconductor devices made from inorganic (non-carbon-based) materials that
`
`produce light when electrical current flows through them. LEDs provide superior
`
`performance and unique benefits over conventional lighting sources (such as
`
`incandescent and fluorescent lighting sources). These unique benefits include their
`
`high efficiency, compact size, long lifespan, resistance to mechanical impact, lack
`
`of ultraviolet emissions, ultra-fast response times, and the ability to control the
`
`brightness and color of the emitted light.
`
`
`
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`Schubert Declaration
`IPR2018-00386
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`22.
`
`I have provided a detailed technology background in several IPRs
`
`regarding a family member of the ’411 Patent. (See my declarations in, for
`
`example, IPR2017-01608 and IPR2017-01623.) I stand by my previous
`
`statements, which show that at the time of the claimed invention, the LED industry
`
`was a complicated field, involving many different competing interests, and for
`
`which even small changes in one area could have profound affects in another,
`
`making predictability of success difficult. This is particularly true for LEDs with
`
`their inherently harsh operating conditions.1
`
`23.
`
`The challenged claims relate to novel, non-obvious singulated light
`
`emitting devices, which are made using a simple, low-cost method that is
`
`significantly more efficient than prior methods. Ex. 1001, 3:25-30 (“In view of the
`
`above problems, an object of the present invention is to provide a simple and low-
`
`cost method for manufacturing, in a short time, multiple light emitting devices
`
`which has high adhesion between a lead frame and a thermosetting resin
`
`composition.”). One reason that the devices are made significantly more efficient
`
`than prior methods is because of the use of array-based processing, where a single
`
`lead frame results in many different singulated devices. See, e.g., FIG. 5
`
`(illustrating an example of bulk-formed LEDs according to the ’411 Patent):
`
`1 The harsh operating conditions include high injection currents, high temperatures
`(>80C), and very high radiation intensities (exceeding the Sun’s intensity by
`hundreds of times).
`
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`Schubert Declaration
`IPR2018-00386
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`
`
`See also Ex. 1001, 3:33-36, 13:25-27 (“The resin-molded body 24 in which a
`
`plurality of concave parts 27 are formed is cut in the longitudinal direction and
`
`lateral direction….”).
`
`24. The following illustration (based on FIG. 5) shows how multiple
`
`singulated devices can result from a single molded lead frame:
`
`(cutting)
`
`
`
`25. Not only is the disclosed method more efficient, but the resultant
`
`devices do not suffer from delamination problems that existed at the time of the
`
`invention. Ex. 1001, 2:32-37. This is because of adhesion benefits that the ’411
`
`
`
`10
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`Schubert Declaration
`IPR2018-00386
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`Patent describes. According to some embodiments, the lead frame used to form
`
`the devices has etched notches, which have concavities/convexities in their
`
`sidewall surfaces. See, e.g., Ex. 1001, 9:37-39. These concavities/convexities can
`
`result in improved adhesion between resin and lead frame. See Ex. 1001, 18:50-53
`
`(“The lead frame is provided with the notch parts 21a by etching. Although not
`
`illustrated, a concavity and convexity are formed in the cross-sectional surface of
`
`the notch part 21a.”), 3:51-55 (“resin is filled in the notch parts …”), 9:28-42
`
`(describing etching the lead frame to form “concave-convex shapes” in the cross-
`
`section to improve adhesion); 13:37-41 (“[N]ot only the upper surface of the lead
`
`frame 21, but also the side surfaces corresponding to the notch parts 21a adhere to
`
`the resin-molded body 24, so that the adhesion strength between the lead frame 21
`
`and resin molded body 24 is improved”).2
`
`26. 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.
`
`See id. This improves adhesion of the resin part to the metal leads, which is one of
`
`2 I note that not all etching generates such concavities/convexities (e.g., reactive
`ion etching does not create concavities). However, the ’411 Patent makes clear
`that the etching it uses results in such concavities/convexities. See, e.g., Ex. 1001,
`9:28-42. The principles of etching, including the formation of concavities are
`taught at universities and are found in various teaching documents. See, e.g.,
`“Wet and Dry Etching,” E. Chen (2004), available at
`https://www.mrsec.harvard.edu/education/ap298r2004/Erli%20chen%20Fabricatio
`n%20III%20-%20Etching.pdf > (Ex. 2014).
`
`11
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`Schubert Declaration
`IPR2018-00386
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`the stated goals of the ʼ411 Patent. See, e.g., Ex. 1001, 16:51-54 (“An etched lead
`
`frame is used for the leads 322. In the cut surface of the resin-molded body, the
`
`etched leads 322 have a concavity and convexity. This concavity and convexity
`
`improve adhesion between the resin part and leads.”); 9:37-42 (“However, etching
`
`can form concave-convex shapes in the entire sectional (etched part) part of the
`
`lead frame, so that it is possible to increase a bonding area between the lead frame
`
`and resin-molded body and mold a resin package of better adhesion”); 2:32-37.
`
`VI. DEFINITION OF ONE OF ORDINARY SKILL IN THE ART
`
`27.
`
`In connection with Nichia’s lawsuit against Everlight in 2013, for a
`
`related patent, I was asked to consider the asserted claims of Nichia’s patents-in-
`
`suit through the eyes of a hypothetical person of ordinary skill in the art. I was
`
`asked by counsel for Nichia to consider factors such as the educational level and
`
`years of experience, not only of the person or persons who have developed the
`
`products that are the subject of the case, but also of others working in the pertinent
`
`art; the types of problems encountered in the art; the teachings of the prior art;
`
`patents and publications of other persons or companies; and the sophistication of
`
`the technology. I understand that one of ordinary skill in the art is not a specific or
`
`real individual, but rather a hypothetical individual having the qualities reflected
`
`by the factors discussed above. Furthermore, one skilled in the art would be
`
`familiar with the entire prior-art literature. I repeat here my opinion concerning the
`
`
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`12
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`Schubert Declaration
`IPR2018-00386
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`hypothetical person of ordinary skill in the art set forth in the Everlight lawsuit, as
`
`set forth below. My opinion in the Everlight lawsuit was with respect to U.S.
`
`Patent No. 8,530,250 (“’250 Patent); that patent is related to the ’411 Patent by a
`
`series of continuation applications.
`
`28. The field relevant to the inventions of the ’411 Patent is
`
`semiconductor and light emitting devices, packaging for such devices, and
`
`manufacturing of such devices. I have trained and guided junior engineers
`
`(including graduate students) in the field of LEDs and have collaborated with
`
`engineers active in the field of LEDs. Accordingly, I know from personal
`
`experience the level of ordinary skill in the art.
`
`29. A person of ordinary skill in the relevant field as of the September
`
`2008 priority date of the ’411 Patent would have had (i) a Ph.D. degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 3 years of practical experience in industry; (ii) a Master’s degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 5 years of practical experience in industry; or (iii) a Bachelor’s degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 10 years of practical experience in industry. These descriptions are
`
`approximate, and a higher level of education might make up for less experience,
`
`and vice versa.
`
`
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`13
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`Schubert Declaration
`IPR2018-00386
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`30. My understanding is that the Institution Decision does not specifically
`
`define the level of skill and education of a Person of Skill in the Art (“POSITA”) at
`
`the time of the invention. I also understand that Patent Owner does not challenge
`
`Petitioner’s definition for purposes of this proceeding. See Pet., p. 13.
`
`31.
`
`I stand by my previous description of a person of ordinary skill in the
`
`art. Indeed, it is the definition that was adopted by the district court for the ’250
`
`Patent. See Exhibit 2015 at 11 (FF24). I see no reason why the level of skill
`
`would be different between the ’250 Patent and the ’411 Patent, having reviewed
`
`the specification and claims of each. However, I understand that the definition
`
`used by Dr. Shanfield involves a lower level of skill. I also understand that Nichia
`
`does not challenge Dr. Shanfield’s definition for purposes of this proceeding. I
`
`continue to base my opinion on the nonobviousness of the ’411 Patent claims on
`
`the higher level of skill that I have identified. It is my opinion that a lower level of
`
`skill favors a determination of nonobviousness, because, although the person
`
`having a lower level of skill would have been fully aware of the complex
`
`assessments of all of the relevant factors that would be taken into account when
`
`designing an LED package (as discussed above), that person would generally be
`
`less sophisticated than a more skilled person and less capable of making those
`
`complex assessments when designing an LED package and its fabrication process
`
`sequence.
`
`
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`14
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`Schubert Declaration
`IPR2018-00386
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`32. With over 30 years of experience in the field of semiconductor and
`
`light emitting devices, packaging for such devices and manufacturing of such
`
`devices, I am well acquainted with the level of ordinary skill that would have been
`
`required to design, develop, and/or implement the subject matter of the ’411
`
`Patent. I have direct experience with the relevant subject matter and am capable of
`
`rendering an informed opinion regarding what the level of ordinary skill in the art
`
`was for the relevant field as of the relevant time period, as further discussed below.
`
`I am also capable of rendering an informed opinion regarding what one of ordinary
`
`skill in the art would have understood as of the relevant time period, including the
`
`meaning of the claim limitations discussed below from the perspective of one of
`
`ordinary skill in the art. I personally qualify as a person of at least ordinary skill in
`
`the art as of the relevant time period, whether using the lower level of skill
`
`proposed by Dr. Shanfield or the higher level of skill that I have articulated.
`
`33. Regardless of the level of skill adopted, in my opinion, the skilled
`
`person in the art, at the time of the ’411 Patent, would have been fully aware of the
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`complexities of LED package design, and their inherent problems, that I describe
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`above (although, as I point out, persons of different skill levels would have
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`different capabilities to deal with these problems). Accordingly, the skilled person
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`in the art, when viewing the references cited in the Petition, would have had to
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`consider these oft competing and conflicting design considerations before
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`Schubert Declaration
`IPR2018-00386
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`modifying any of them.
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`VII. CLAIM CONSTRUCTION
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`34.
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`I have been asked to provide testimony regarding two terms of the
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`challenged claims below. Specifically, I provide testimony regarding both (A)
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`“wherein both a part of the metal part and a part of the resin part are disposed in a
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`region below an upper surface of the metal part, on four outer lateral surfaces of
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`the resin package” and (B) “a resin package comprising a resin part and a metal
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`part.” As I explain in Section X below, proper construction of these terms resolves
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`the instituted grounds, ultimately confirming the patentability of the challenged
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`claims.
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`A. The proper scope of the term “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” requires resin below metal on four outer
`lateral surfaces
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`35. Claim 1 of the ’411 Patent requires “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 lateral surfaces of the resin package.” As I explain
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`below, it would be clear to one of skill in the art that this requires that there be
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`resin below metal on the four outer lateral surfaces of the resin package.
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`Schubert Declaration
`IPR2018-00386
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`1. The plain and ordinary meaning of the term requires resin
`below metal on four outer lateral surfaces of the resin
`package
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`36. As an initial matter, this claim element means that the condition
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`described by “both a part of the metal part and a part of the resin part are disposed
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`in a region below an upper surface of the metal part” must be met on four outer
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`lateral surfaces of the resin package. That is, each of the four outer lateral surfaces
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`must meet this condition, and if any one of the four outer lateral surfaces does not
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`meet this condition, then the claim’s requirements are not met.
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`37. Further parsing the language, the condition that must be met on the
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`four outer lateral surfaces, is that
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`[condition] both [1] a part of the metal part and [2] a part of the
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`resin part are disposed in [3] a region below [4] an upper surface of
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`the metal part
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`I have color-coded the phrase above (labeled as the “condition”), in order to better
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`explain the claim’s meaning. As I explained above, this condition must be
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`satisfied on the four outer lateral surfaces of the resin package. Several of the sub-
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`components of the condition above are explained elsewhere in the claim, and given
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`further context in the specification. For example, the claimed light emitting device
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`comprises a resin package comprising a resin part and a metal part. The metal part
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`has at least two metal plates. The specification also provides additional context for
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`how these terms are used.
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`38. For example, the specification explains that there is an upper surface
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`of the leads, and that it is the upper surface where (among other places) plating
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`processing is applied:
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`Plating processing is applied to at least one surface of the bottom
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`surface (an outer bottom surface 20a of the resin package 20) and
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`the upper surface (an inner bottom surface 27a of a concave part
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`27) of the leads 22. (Ex. 1001, 6:43-47.)
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`…
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`Plating processing is applied to the upper surfaces, outer bottom
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`surfaces 120a and arc-shaped curved parts of the projecting leads
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`122. (Id., 13:62-64.)
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`…
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`Plating processing is applied to the bottom surface and upper
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`surface of the leads 222, and is not applied to the outer side
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`surfaces. (Id., 14:67-15:2.)
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`The specification further explains that the leads are exposed in the inner bottom
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`surface of the resin package: “The leads 22 are exposed in the inner bottom surface
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`27a of the resin package 20 and the light emitting element 10 is placed on the leads
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`22.” Id., 6:61-63. The specification also explains that the leads result from
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`singulation when the lead frame is cut, and that the lead frame is formed from
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`metal. Id., 9:24-10:11. The specification also explains that the resin package
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`includes a resin part and a metal part, such as leads 22. ’411 Patent, 8:17-8:61.
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`39. From the description in the specification, and the context of the
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`claims, it is clear that an upper surface of the metal part refers to the top of the at
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`least two metal plates (or leads) that comprise the metal part. The specification
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`explains that plating is applied to the upper surface of the leads; it is clear that
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`plating is applied only on the leads, and not, for example, to all surfaces along a
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`plane defined by the upper surface of the leads (which would include, for instance,
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`resin surfaces).3 The specification also suggests a relationship between the inner
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`bottom surface 27a of the concave part 27 and the upper surf