Case No. IPR2018-00437
`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. 2018-00437
`Patent 9,537,071
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`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. 2018-00437
`Patent 9,537,071
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`GLOSSARY OF ABBREVIATIONS
`
`Shorthand
`IPR
`
`Inter Partes Review
`
`Description
`
`BRI
`
`PO
`
`POSA
`
`POPR
`
`POR
`
`R
`
`SR
`
`Pap.
`
`Loh
`
`Broadest Reasonable Interpretation
`
`Patent Owner
`
`Person of Ordinary Skill in the Art
`
`IPR2018-00386, Paper 8, Patent Owner’s Preliminary Response
`
`IPR2018-00386, Paper 20, Patent Owner’s Response
`
`IPR2018-00386, Paper 24, Petitioner’s Reply to Patent Owner’s
`Response
`
`IPR2018-00386, Paper 28, Patent Owner’s Sur-Reply (for brief
`section I)
`IPR2018-00437, Paper 39, Patent Owner’s Sur-Reply (for brief
`section II)
`
`Paper
`
`U.S. Patent Publication No. 2008/0012036 (Ex. 1004)
`
`
`Note: All emphasis herein added unless otherwise stated. All citations are to exhibits
`in IPR2018-00386.
`
`
`
`
`
`i
`
`
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`I.
`
`PO IMPROPERLY NARROWS THE TERM “…DISPOSED IN A
`REGION BELOW AN UPPER SURFACE OF THE METAL PART, ON
`FOUR OUTER LATERAL SURFACES OF THE RESIN PACKAGE”
`PO argues incorrectly that under Petitioner’s construction the claimed region
`
`is “not bounded by the upper surface of the metal part.” PO’s Sur-Reply (“SR”) 1-
`
`3. To the contrary, the claim itself expressly sets forth the bounds of the region, as
`
`reflected in Petitioner’s construction. The “region” must be “below” (i.e., at a lower
`
`level than) “an upper surface of the metal part.” In addition, the “region” is “on four
`
`outer lateral surfaces of the resin package,” and is thus bounded by the resin package.
`
`Conversely, PO’s narrowed proposed bounds—which limit the region to a single
`
`metal plate—are inconsistent with the claims and unsupported by the intrinsic
`
`record. During prosecution PO amended this limitation from “at least one metal
`
`plate” to “metal part” and cannot now narrow the claimed region. Ex. 1002, 165.
`
`PO’s only purported intrinsic support is the incorrect premise that the
`
`specification’s concavities/convexities are an upper surface (SR3-4), but the
`
`specification and admissions by PO and its expert belie this argument. The
`
`specification expressly describes “side surfaces corresponding to the notch parts”
`
`(Ex. 1001, 13:37-41), and PO admits “etching may result in concavities in the side
`
`surfaces of the notches” (POPR 7; Ex. 2011 ¶50 (quoting Ex. 1001, 13:37-41)).
`
`Indeed, Dr. Schubert admits that “as a result of etching notches in the lead frame,
`
`concavities or convexities are formed in the regions below the upper surfaces of the
`
`1
`
`
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`exposed leads.” Id. Thus, PO’s proposal has no intrinsic support, whereas
`
`Petitioner’s construction is shown in all embodiments. R 3-7.
`
`Contrary to PO (SR4), the different terms in the claims—“in a region below”
`
`(Cl. 1) and “in a region directly under” (Cl. 6)—connote different meaning. R 13.
`
`PO’s assertion that Petitioner’s construction “fails to account for” differences
`
`in level (SR1-2) is incorrect. As an initial matter, neither the patent figures nor Loh
`
`(Ex. 1004) show differences in level “on an upper surface.” PO’s hypothetical
`
`illustrations and exhibits (SR2) are irrelevant extrinsic attorney arguments that do
`
`not make sense. Ex. 2021, 62:20-63:17. The first illustration depicts a single lead
`
`instead of a complete device, the second illustration depicts two leads with no resin
`
`adhering them together, and both illustrations fail to satisfy multiple other claim
`
`elements. Regardless, Petitioner’s construction is consistent with PO’s hypotheticals
`
`having differences in level. As in the claim, the hypotheticals show resin disposed
`
`in a region below “an” upper surface of the metal part. Thus, to the extent PO argues
`
`there are multiple upper surfaces, the claim only requires that resin be disposed in a
`
`region below (i.e., at a lower level than) one of the upper surfaces of the metal part.
`
`PO’s discussion of the “notch” limitation (SR4-5) is incorrect and irrelevant.
`
`The “notch” limitation does not refer to resin or its location. Ex. 1001, 19:49 (“a
`
`notch is formed in the metal part”), 4:13-15; Ex. 1012, 16 (“opening or indentation”).
`
`Thus, Petitioner’s construction does not render the disputed limitation superfluous.
`
`2
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`
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`II.
`
`PO IMPROPERLY READS “SINGULATED” INTO THE CLAIM
`PO’s assertion that it defined the term “resin package” to mean “a singulated
`
`light emitted device” formed from “multiple devices” (SR1-3; POR 31) improperly
`
`reads a process step into apparatus claims that recite the structure of a light emitting
`
`device. Vanguard, 234 F.3d at 1372-73. PO’s cite to Nordt is inapposite because the
`
`claim in that case explicitly contained the term “injection molded” and the patent
`
`described “clear structural differences.” 881 F.3d 1371, 1375. In contrast, here PO
`
`improperly construes a structural limitation as a process limitation and fails to
`
`identify any structural differences. Indeed, PO does not dispute that the same resin
`
`package can be formed without singulation. Contrary to PO (SR3), burrs are merely
`
`defects that can result from processes other than singulating. Ex. 1001, 4:30-34,
`
`12:52-13:3. PO’s reliance on the Board’s statement regarding ’250 patent method
`
`claim 1 with a “cutting” step (SR2) is irrelevant. PO ignores the Board’s statement
`
`that the different apparatus claim 17 is “drawn to the light emitting device itself”
`
`and “does not recite limitations concerning assembly methods, such as... cutting the
`
`resin package.” IPR2017-01608, Pap. 72, 41. The claims here are apparatus claims.
`
`Contrary to PO (SR4-5), Loh discloses a “resin package” even under PO’s
`
`incorrect construction because a “metal strip” leadframe connotes multiple devices;
`
`and the language in Loh is sufficient to incorporate the confirming references in their
`
`entirety. Paice LLC v. Ford Motor Company, 881 F.3d 894, 907-10 (Fed. Cir. 2018).
`
`3
`
`
`
`Respectfully submitted by:
`
`/Gabrielle E. Higgins/
`Gabrielle E. Higgins
`
`
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`February 11, 2019
`
`
`
`
`
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER’S REPLY TO
`
`PATENT OWNER’S SUR-REPLY was served by filing this document through the
`
`Patent Trial and Appeal Board End to End (PTAB E2E) as well as providing a
`
`courtesy copy via electronic mail to the following attorneys of record for the Patent
`
`Owner listed below:
`
`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: February 11, 2019
`
`
`By: /Crena Pacheco/
`Name: Crena Pacheco
`ROPES & GRAY LLP
`
`
`
`
`
`
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