Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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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 No. IPR2018-00437
`Patent 9,537,071
`____________
`
`
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND CLAIMS
`
`
`
`
`
`U.S. Patent No. 9,537,071
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner
`____________
`
`Case No. IPR2018-00437
`Patent 9,537,071
`____________
`
`
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND CLAIMS
`
`
`
`
`
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`TABLE OF CONTENTS
`THE PROPOSED CLAIMS ARE INVALID UNDER §112 ......................... 1
`I.
`IMPROPER BROADENING UNDER 37 C.F.R. §42.121(A)(2)(II)............. 4
`II.
`III. THE PROPOSED CLAIMS ARE UNPATENTABLE UNDER §103 .......... 4
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`
`i
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`GLOSSARY OF ABBREVIATIONS
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`Shorthand
`Claims
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`Description
`Claims 1, 2, 4-9, 11-12, 15-19, 21-23, and 25 of U.S. Patent
`9,537,071
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`Proposed
`Claims
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`Patent Owner’s Proposed Amended Claims 27-34
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`IPR
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`PO
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`Inter Partes Review
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`Patent Owner
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`POSA
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`Person of Ordinary Skill in the Art
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`POR
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`IPR2018-00437, Paper 22, Patent Owner’s Response
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`Mot./Motion
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`IPR2018-00437, Paper 24, Patent Owner’s Contingent Motion to
`Amend Claims
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`Opp.
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`R
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`IPR2018-00437, Paper 32, Petitioner’s Opposition to Patent
`Owner’s Contingent Motion to Amend Claims
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`IPR2018-00437, Paper 34, Reply to Petitioner’s Opposition to
`Patent Owner’s Contingent Motion to Amend Claims
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`Hsu
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`U.S. Patent No. 6,770,498, issued August 3, 2004 (Ex. 1030)
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`Koung
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`U.S. Patent Publication No. 2008/0261339, published October 23,
`2008 (Ex. 1008)
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`Glenn
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`U.S. Patent No. 6,433,277, issued August 13, 2002 (Ex. 1034)
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`Note: All emphasis herein added unless otherwise stated.
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`ii
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`I.
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`THE PROPOSED CLAIMS ARE INVALID UNDER §112
`There is no written description support for the Proposed Claims, which require
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`exactly two metal structures and a specific arrangement of metal and resin. PO
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`ignores Fig. 12, attempts to improperly cobble together unrelated disclosures, and
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`rewrites and contradicts the specification. For this reason alone, PO’s motion fails.
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`PO first argues that Petitioner had to rely on extrinsic evidence (PO Reply at
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`1 (“R1”), but this is incorrect. As Dr. Shanfield explained, “[a] POSITA would have
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`understood from the disclosures of the ’940 and JP ’408 applications that the resin
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`package of Figure 12 does not ‘consist’ of ‘a resin part and first and second metal
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`leads’” because “Figure 12…shows that the metal of the resin package of the fifth
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`embodiment is divided into three separate structures.” Ex. 1017 ¶45. The figure itself
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`shows a central metal structure having a square mounting plate with legs extending
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`to each corner, and wires coming off the central metal structure and going to separate
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`front and rear electrodes. Id.; Ex. 2033, 17:5-19:14. PO argues that resin obscures
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`the leads (R2), but PO ignores the visible portions in Fig. 12. The precise dimensions
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`of the metal under resin are irrelevant; what matters is that three metal structures are
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`disclosed, not two. Ex. 2033, 37:11-39:25, 42:25-43:2. Ichikawa’s notebook merely
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`confirms what is already apparent from Fig. 12. Opp. 3-4; Ex. 1017 ¶¶46-49.
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`PO argues a POSA “would consider the description of the first embodiment
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`when understanding the scope of the fifth embodiment” (R3), but the specification
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`states only that “configurations employing the substantially same configuration”
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`pertain to the fifth embodiment (Ex. 2023 ¶98), and the lead frames of the first and
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`fifth embodiments are different. Ex. 1017 ¶63. This is readily apparent from a
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`comparison of Figs. 1 and 12. Tellingly, PO does not attempt to show that the metal
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`structures of the first and fifth embodiments are substantially the same. Combining
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`piecemeal disclosures of different embodiments in a manner disclosed nowhere in
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`the specification is an obviousness analysis insufficient to show written description
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`support. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010).
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` Finally, PO attempts to rely on a disclosure of “jointed” from the specification
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`(R3-4), but rewrites and contradicts that disclosure. PO first admits that the
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`specification discloses “two alternative designs” (R3) in which “[t]he leads 422 may
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`be separated respectively, or jointed” (Ex. 2022 ¶99; Ex. 2023 ¶99). But then PO
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`contradicts the specification by proposing a device where “the leads are separated at
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`the ‘outer side surface 420b,’ but also ‘jointed’ at the package interior.” R3.
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`Likewise, Dr. Schubert improperly rewrites the specification’s disclosure of “[t]he
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`leads 422 may be separated respectively, or jointed” to “a configuration where the
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`leads are separated into six…and…jointed.” Ex. 2030 ¶18. Moreover, the “jointed’
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`disclosure appears only in the patent’s description of the fifth embodiment, and PO
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`improperly applies its interpretation of that disclosure to the lead frame of the first
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`embodiment. Indeed, Dr. Schubert’s illustration of PO’s hypothetical lead frame
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`2
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`contradicts the specification and the metal structures that are visible in Fig. 12.
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`Compare Ex. 2030 ¶20 (altered Fig. 3 with anode and cathode separated by a single
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`notch) to Ex. 2022 (Fig. 12 with square metal structure surrounded by notches on all
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`sides). At best, PO’s theory improperly takes the “jointed” disclosure and injects
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`additional details about the internal configuration not in the four corners of the
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`specification to arrive at “one possible” “re-configuration” of the device (Ex. 2030
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`¶20), which violates the test for written description. Ariad, 598 F.3d at 1351-52.
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`Dependent claim 31 also lacks support. PO incorrectly argues that etched
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`concavity/convexity in Fig. 11 are upper and bottom surfaces. R5. However, the
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`patent nowhere refers to these as “upper” or “bottom” surfaces. Consistent with the
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`patent, “a POSITA would have understood that the etched concavity/convexity
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`shown in Figure 11 is actually a side surface, and is a different surface distinct from
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`the upper or lower surface.” Ex. 1001, 13:37-41; Ex. 1017 ¶83. This is supported by
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`PO’s expert, Dr. Schubert, who explains that concavities/convexities for improving
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`adhesion result from etching notches in the lead frame. IPR2018-00386, Ex. 2011
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`¶50 (quoting Ex. 1001, 18:50-53). The specification makes clear—as quoted by Dr.
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`Schubert regarding etched concavities for improving adhesion—that this etching
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`forms “side surfaces.” Id. (quoting Ex. 1001, 13:37-41). Indeed, Dr. Schubert
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`concedes that “as a result of etching notches in the lead frame, concavities or
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`convexities are formed in the regions below the upper surfaces of the exposed
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`3
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`leads.” Id. Finally, Glenn refers to the same concavity/convexity as “side surfaces,”
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`confirming the understanding of a POSA. Opp. 23; Ex. 1034, Fig. 3, 4:41-54.
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`II.
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`IMPROPER BROADENING UNDER 37 C.F.R. §42.121(A)(2)(II)
`PO argues it has not enlarged scope with new and different wording in the
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`Proposed Claims (R6-8), but the new wording is plainly broader on its face. Opp. 9.
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`III. THE PROPOSED CLAIMS ARE UNPATENTABLE UNDER §103
`PO attacks the Hsu reference in isolation (R9-11), but fails to address the
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`combination of Hsu and Koung (which relies on Koung’s resin part, not Hsu’s).
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`Thus, PO’s arguments regarding Hsu’s resin part are irrelevant to the combination.
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`PO does not dispute that the combination of Hsu and Koung yields the Proposed
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`Claims, or that a POSA would have been motivated to combine the references and
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`would have had a reasonable expectation of success. Instead, PO merely asserts that
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`the Opposition improperly incorporated by reference Dr. Shanfield’s explanations
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`of motivation to combine and reasonable expectation of success. Id. But the
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`Opposition itself expressly stated that “[a] POSA…would have been motivated and
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`found it obvious and straightforward to use Koung’s advantageous teaching of a
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`resin part with four outer lateral surfaces having coplanar resin and metal formed by
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`a ‘once-molding technique,’ as expressly taught by Koung, in implementing Hsu’s
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`device to provide for ‘a packaging method that can save time and cost.’” Opp. 11-
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`23 (citing Ex. 1008 ¶¶24-25, Figs. 2C, 4F; Ex. 1017 ¶129). The Opposition further
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`4
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`explained that “[a] POSA would have been motivated and found it obvious and
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`straightforward to use Koung’s teachings of a resin part…to beneficially (1) direct
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`light vertically, increasing brightness and luminance, (2) shield the phosphors,
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`reducing cross-talk, and (3) simplify the mold….” Id. (citing Ex. 1035 ¶¶8, 14; Ex.
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`1017 ¶¶126-29). This is more than sufficient, and is supported by Dr. Shanfield, who
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`explains the basis for his opinions as required by 37 C.F.R. § 42.65; Aqua Products,
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`Inc. v. Matal, 872 F.3d 1290, 1296 (Fed. Cir. 2017) (consider entirety of record).
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`With respect to claim 31, to the extent it is found that PO’s cited disclosures
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`provide written description support (they do not), Glenn discloses the same structure.
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`Opp. 23. Contrary to PO’s argument (R12), Glenn is analogous art. The ’071 patent
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`and Glenn are both in the field of semiconductor technology, and are directed to the
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`same problem of adhesion between resin and lead frame. Ex. 1017 ¶¶118-19. Indeed,
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`PO cited Glenn during prosecution in an IDS (Ex. 1002, 86), which is “informative
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`as to the field of endeavor.” Apple v. Samsung Elecs., 816 F.3d 788, 803 (Fed. Cir.
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`2016). Further, Dr. Schubert agrees general “principles of etching” of semiconductor
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`lead frames are applicable to LED lead frames. Ex. 2008, 11 n.2. Finally, PO’s
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`reliance on Nichia v. Everlight (R12) is misplaced because the underlying litigation
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`involved a different claim limitation, different patent, and different disclosures in
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`Glenn from the teaching of etched concavities/convexities relied on here. For each
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`of these independent reasons, PO’s Proposed Claims are invalid.
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`5
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`Respectfully submitted:
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`/Gabrielle E. Higgins/
`Gabrielle E. Higgins
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`January 29, 2019
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing PETITIONER’S SUR-REPLY
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`TO PATENT OWNER’S CONTINGENT MOTION TO AMEND CLAIMS was
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`served by filing this document through the Patent Trial and Appeal Board End to
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`End (PTAB E2E) as well as providing a courtesy copy via electronic mail to the
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`following attorneys of record for the Patent Owner listed below:
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`Martin M. Zoltick
`mzoltick@rfem.com
`Robert P. Parker
`rparker@rfem.com
`Derek F. Dahlgren
`ddahlgren@rfem.com
`Michael H. Jones
`mjones@rfem.com
`Mark T. Rawls
`mrawls@rfem.com
`
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: +1-202-783-6040
`Fax: +1-202-783-6031
`litigationparalegals@rothwellfigg.com
`
`
`Dated: January 29, 2019
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`
`By: /Crena Pacheco/
`Name: Crena Pacheco
`ROPES & GRAY LLP
`
`
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`1
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