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` Date filed: January 8, 2019
`
`Filed on behalf of: Nichia Corporation Paper ____
`
`
`
`
`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
`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00437
`Patent 9,537,071
`_______________
`
`PATENT OWNER’S EXHIBIT LIST
`(as of January 8, 2019)
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner Nichia Corporation
`
`(“Nichia”) hereby furnishes below a current listing of Patent Owner’s exhibits to
`
`the Board and counsel for Petitioner Vizio, Inc. (“Vizio”). Nichia hereby certifies
`
`that copies of the exhibits listed below have been served on counsel for Vizio.
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Description
`Declaration of Dr. Stanley R. Shanfield, dated June 16, 2017, in
`IPR2017-01608 (Ex. 1003 in that IPR).
`Declaration of Dr. Stanley R. Shanfield, dated June 16, 2017, in
`IPR2017-01623 (Ex. 1103 in that IPR).
`Dandan Zhu and Colin J. Humphreys, Solid-State Lighting Based
`on Light Emitting Diode Technology, Chapter 5 (2016).
`Sheng Liu and Xiaobing Luo, LED Packaging for Lighting
`Applications: Design, Manufacturing and Testing, Chemical
`Industry Press (2011).
`Vizio Holdings, Inc.’s Amendment No. 3 to Form S-1 Registration
`Statement, filed with the Securities and Exchange Commission on
`October 22, 2015 (retrieved from
`http://secfilings.nasdaq.com/filingFrameset.asp?FilingID=1096439
`2&RcvdDate=10/22/2015&CoName=VIZIO%20HOLDINGS%2
`C%20INC.&FormType=S-
`1/A&View=html%20September%2026,%202016%20Disc\Internet
`%20articles\FetchF%20VIZIO(4).pdf).
`Westlaw Company Investigator Reports for Vizio, Inc., AmTran
`Logistics Company and AmTran Logistics Inc. Company.
`Transcript of Teleconference in IPR2017-01608 and IPR2017-
`01623, dated February 28, 2018 (Ex. 2029 and Ex. 2129
`respectively, in those IPRs).
`Declaration of Dr. E. Fred Schubert In Support of Patent Owner’s
`Response, dated September 18, 2018.
`
`
`
`2
`
`

`

`
`
`Exhibit No.
`2009
`
`2010
`
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`
`2020
`
`2021
`2022
`
`2023
`
`2024
`
`2025
`2026
`2027
`2028
`2029
`2030
`
`Case IPR2018-00437
`Patent 9,537,071
`
`Description
`Transcript of Stanley R. Shanfield, Ph.D. Deposition, dated May
`21, 2018, taken in IPR2017-01608, IPR2017-01623, IPR2018-
`00893, IPR2017-02011, IPR2017-02014 (Ex. 2710 in IPR2017-
`01608 and IPR2017-01623).
`E. Chen, “III. Wet and Dry Etching,” Harvard University Center
`for Imaging and Mesoscale Structures (2004) (retrieved from
`https://www.mrsec.harvard.edu/education/ap298r2004/Erli%20che
`n%20Fabrication%20III%20-%20Etching.pdf).
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`Declaration of Dr. E. Fred Schubert in Support of Patent Owner’s
`Contingent Motion to Amend, dated September 18, 2018.
`Claims Appendix for Patent Owner’s Contingent Motion to
`Amend.
`Japanese Patent Publication No. JP 2008-225408.
`Certified Translation of Japanese Patent Publication No. JP 2008-
`225408.
`U.S. Patent Application Serial No. 12/737,940, filed on March 2,
`2011.
`Exhibit B to Complaint for Patent Infringement, Nichia Corp. v.
`Vizio, Inc., Case No. 2:16-cv-00246, Dkt. 1-2 (E.D. Tex. Mar. 21,
`2016 ) [Copy of Memorandum Opinion and Order, Nichia Corp. v.
`Everlight Elecs. Co., Case No. 2:13-cv-00702-JGR, Dkt. 193 (E.D.
`Tex. Jan. 26, 2016)].
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`EXHIBIT NUMBER NOT BEING USED
`Second Declaration of Dr. E. Fred Schubert In Support of Patent
`Owner’s Contingent Motion to Amend, dated January 8, 2019.
`
`
`
`3
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`
`
`Exhibit No.
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`
`
`Description
`Excerpts from Second Declaration of Dr. E. Fred Schubert, dated
`June 8, 2018, in IPR2017-01608 (Ex. 2030 in that IPR).
`Excerpts from Second Declaration of Dr. E. Fred Schubert, dated
`June 8, 2018, in IPR2017-01623 (Ex. 2724 in that IPR).
`Transcript of Stanley R. Shanfield, Ph.D. Deposition, dated
`December 19, 2018.
`Exhibit S8 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`Exhibit S9 from December 19, 2018 Deposition of Stanley R.
`Shanfield, Ph.D.
`Opinion and Judgment, Nichia Corp. v. Everlight Americas, Inc.,
`Appeal Nos. 16-1585 & 16-1618 (Fed. Cir. Apr. 28, 2017).
`
`By:
`
`Dated: January 8, 2019
`
`
`
`
`
`
`
`
`
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`
`
`
`
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`
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`
`
`
`/ 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
`
`
`
`
`
`4
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 8th day of January, 2019, a true and correct copy
`
`of the foregoing PATENT OWNER’S EXHIBIT LIST was served, via electronic
`
`mail, upon the following counsel of record for Petitioner Vizio, Inc.:
`
`
`Gabrielle E. Higgins
`James L. Davis, Jr.
`Christopher M. Bonny
`James F. Mack
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: 650-617-4000
`Facsimile: 650-566-4090
`Emails: Gabrielle.Higgins@ropesgray.com
`James.L.Davis@ropesgray.com
`Christopher.Bonny@ropesgray.com
`James.Mack@ropesgray.com
`VIZIO2NichiaIPRs@ropesgray.com
`
`
`Scott McKeown
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006-6807
`Phone: 202-508-4740
`Facsimile: 617-235-9492
`Email: Scott.McKeown@ropesgray.com
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`
`
`1
`
`

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