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` Date filed: January 29, 2019
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`Filed on behalf of: Nichia Corporation Paper ____
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`By: Martin M. Zoltick, Lead Counsel
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`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
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` rparker@rfem.com
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` ddahlgren@rfem.com
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` mjones@rfem.com
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` 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 SUR-REPLY
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF CONTENTS ........................................................................................... i
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`I.
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`A.
`
`The Express Lexicography in the Specification Should Be Used ........ 1
`
`B.
`
`C.
`
`Petitioner Misconstrues the Intrinsic Record ........................................ 2
`
`Proposed Construction Does Not Improperly Change the Scope
`of the Apparatus Claims ........................................................................ 4
`
`II.
`
`LOH DOES NOT DISCLOSE THE CLAIMED FEATURES AS
`PROPERLY CONSTRUED ............................................................................ 4
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`
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`
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`
`
`i
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`
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`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) ................................................................................ 1
`
`Advanced Display Sys., Inc. v. Kent State Univ.,
`212 F.3d 1272 (Fed. Cir. 2000) .............................................................................. 5
`
`In re Nordt Development Co., LLC.,
`881 F.3d 1371 (Fed. Cir. 2018) .............................................................................. 4
`
`VIZIO, Inc. v. Nichia Corp.,
`IPR2017-01608, Paper 72 (PTAB Jan. 9, 2019) .................................................... 2
`
`Zenon Envtl., Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .............................................................................. 5
`
`
`
`Rules
`
`37 C.F.R. § 1.56 ......................................................................................................... 2
`
`37 C.F.R. § 1.97 ......................................................................................................... 2
`
`
`
`
`
`ii
`
`
`
`Case IPR2018-00437
`Patent 9,537,071
`
`When properly construed, the claims are not unpatentable over the grounds.
`
`I.
`
`CLAIM CONSTRUCTION
`
`A. The Express Lexicography in the Specification Should Be
`Used
`
`The specification “explicitly redefines” (Reply, 3) the terms it uses: “In this
`
`description, terms such as leads, a resin part, and resin package are used for a
`
`singulated light emitting device….” Ex. 1001, 3:33-36. Petitioner contends that
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`this “merely provides context for the specification’s discussion of the terms by
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`introducing the concept of singulation.” Reply, 5-6. Despite “the language used
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`[being] unequivocal” (Ex. 2008, ¶ 37), Petitioner fails to explain why the context
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`admittedly provided by the specification should be ignored. It should not be: under
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`BRI, the claims must be interpreted in light of the specification.
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`Moreover, Petitioner improperly dismisses the cases cited by Patent Owner
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`because they “involved express definitions.” See Reply, 6. Petitioner does not
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`explain how are used for (the ’071 phrase) is meaningfully different from, or less
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`definitional than is or means (phrases from cited cases). Likewise, Petitioner’s
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`citation to Acumed is misplaced; there, the court found that the term “each defining
`
`a hole axis” introduced a useful abstract concept of a “hole axis.” There is nothing
`
`like that here. Instead, the specification’s discussion of singulation expressly limits
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`(by its own language) how the terms “leads, a resin part, and resin package are
`
`used.” That is, the terms are used to refer to a singulated light emitting device.
`
`1
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`
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`Case IPR2018-00437
`Patent 9,537,071
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`Extrinsic evidence is less significant than the specification, especially where
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`the specification redefines a term. Notwithstanding this, Petitioner introduced a
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`definition from a specialized technical dictionary that is related to a different field
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`than the claimed invention, but never explained the relevance of the different field
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`the dictionary relates to. Reply, 5; Ex. 1039 (IEEE Standard Glossary of Computer
`
`Hardware Terminology). The Board should not give any weight to the dictionary.
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`Petitioner also purports to find the proposed construction inconsistent with
`
`claiming a single device. Reply, 6. In a related IPR proceeding, a different panel
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`rejected a similar argument about a method directed to manufacturing a single
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`device: “Thus, we understand the ’250 patent to describe and claim singulating a
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`resin-molded body into individual resin packages.” IPR2017-01608, Paper 72, 26
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`(PTAB Jan. 9, 2019). Construing resin package, resin part, and metal part to refer
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`to a singulated light emitting device is consistent with claiming a single device.
`
`B.
`
`Petitioner Misconstrues the Intrinsic Record
`
`Petitioner asserts that Patent Owner’s identification of certain references
`
`during prosecution constitute an admission regarding the scope of the claims.
`
`Reply, 5. The Office’s rules flatly dismiss this argument. 37 CFR § 1.97(h) (filing
`
`an IDS “shall not be construed to be an admission that the information cited … is
`
`considered to be, material to patentability”); Ex. 1002, 85-86 (submitting “in
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`accordance with 37 CFR §§ 1.56, 1.97, [etc.]” and submission “not an admission”).
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`2
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`Case IPR2018-00437
`Patent 9,537,071
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`Petitioner also points to the description of the third embodiment at column
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`15, lines 9-13, and wrongly concludes that “‘resin package’ can refer to a device
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`that has not yet been singulated.” Reply, 6-7. This passage describes “[a] light
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`emitting device according to a third embodiment.” Ex. 1001, 14:50-51. (The
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`method of manufacturing this device is described later. Id., 15:42-45). In
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`describing the finished light emitting device (as opposed to the method of making
`
`it), the specification explains that “burrs extending in the direction of the outer
`
`bottom surface are likely to be produced in the cutting surface of the lead 222.”
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`Id., 15:9-13. This is because “singulation is started from the outer upper surface of
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`the resin package 220 using the singulation saw.” Id.
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`This does not mean that the resin package can refer to a device that has not
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`yet been singulated. Indeed, the specification confirms that for the third
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`embodiment, “[t]he resin molded body and lead frame are cut [singulated] along
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`the notch parts 221a [and the grooves 221c].” Id., 16:6-8. It is not until after this
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`cutting (singulation) happens that the light emitting device is provided. Id., 16:9-
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`10. The reference to “cutting surface of the lead 222” also implies that singulation
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`has occurred. When explaining why burrs result on the singulated device, the
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`specification describes where the singulation saw impacted the resin with reference
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`to the already-singulated device, i.e. “from the outer upper surface of the resin
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`package 220”.
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`3
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`
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`Case IPR2018-00437
`Patent 9,537,071
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`C.
`
`Proposed Construction Does Not Improperly Change the
`Scope of the Apparatus Claims
`
`Petitioner wrongly asserts that the proposed construction inserts a method
`
`step into an apparatus claim. Reply, 7-8. This is wrong at least because the
`
`proposed construction denotes a structural limitation. See In re Nordt
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`Development Co., LLC., 881 F.3d 1371, 1375 (Fed. Cir. 2018) (“injected molded”
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`limitation imparts structure); id. at 1376 (collecting cases holding “limitations to
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`convey structure even when they also describe a process of manufacture”).
`
`Indeed, the description Petitioner highlighted at column 15—explaining the
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`structural effects of singulation on the singulated device—confirms that Patent
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`Owner’s proposed construction should be given patentable weight. Ex. 1001,
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`15:9-13 (explaining that burrs can result from use of a singulation saw).
`
`II. LOH DOES NOT DISCLOSE THE CLAIMED FEATURES AS
`PROPERLY CONSTRUED
`
`Loh does not disclose the claimed “resin package.” Petitioner points to
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`Loh’s reference to “packages” and the fact that a lead frame may be formed from a
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`strip. Reply, 11. The issue is not whether Loh discloses multiple packages, it is
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`whether any of those packages are a singulated light emitting device as claimed.
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`They are not. Further, whether a lead frame came from a metal strip says nothing
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`about the subsequent processing of that lead frame or if a given device made from
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`the lead frame is a “singulated light emitting device.” In Loh, it is not.
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`4
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`Case IPR2018-00437
`Patent 9,537,071
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`Finally, Petitioner argues that Loh incorporates by reference descriptions of
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`singulated devices. See Reply, 11-12. This argument is legally defective. Only
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`those features expressly and specifically incorporated into the host document are
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`considered part of the reference. See, e.g., Advanced Display Sys., Inc. v. Kent
`
`State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (in order for a patent to
`
`incorporate material by reference, “the host document must identify with detailed
`
`particularity what specific material it incorporates and clearly indicate where that
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`material is found in the various documents”) (emphasis added); Zenon Envtl., Inc.
`
`v. U.S. Filter Corp., 506 F.3d 1370, 1379 (Fed. Cir. 2007) (“sufficient
`
`particularity”). The relied-upon passage in Loh refers to mounting solid state light
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`sources to provide protection, color selection, focusing, and the like, and then
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`refers to packages described in other publications. Ex. 1004, ¶ 3. The lead frames
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`from the incorporated references are not identified with particularity. Rather,
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`LEDs are discussed only generally, without reference to lead frames or singulation.
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`Moreover, the incorporation is in the paragraph describing the background
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`art. The next paragraph explains that there remains a need for improved packages,
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`and then the application proceeds to describe modular devices made one at a time.
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`Even if the references are properly incorporated, nothing suggests that the
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`disclosed embodiments would be modified to incorporate the alleged singulated
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`aspect of the other references. For these reasons, Petitioner has not met its burden.
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`5
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`
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`Date: January 29, 2019
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`By:
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`Case IPR2018-00437
`Patent 9,537,071
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`Respectfully submitted,
`
`
`
`
`
`/ Martin M. Zoltick /
`Martin M. Zoltick, Reg. No. 35,745
`ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: mzoltick@rfem.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
`6
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`
`
`Case IPR2018-00437
`Patent 9,537,071
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 29th day of January, 2019, a true and correct
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`copy of the foregoing PATENT OWNER’S SUR-REPLY 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.
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