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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Date filed: February 15, 2019
`
`
`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
`_______________
`
`
`RESPONSE TO PETITIONER’S REPLY TO
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Date filed: February 15, 2019
`
`
`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
`_______________
`
`
`RESPONSE TO PETITIONER’S REPLY TO
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF CONTENTS ........................................................................................... i
`
`I.
`
`
`Patent Owner’s construction of “in a region below” is more faithful
`to the specification and plain meaning ............................................................. 1
`
`II.
`
`Patent Owner’s construction of “resin package” is correct .............................. 3
`
`
`
`
`
`
`
`i
`
`
`
`Case IPR2018-00437
`Patent 9,537,071
`I. Patent Owner’s construction of “in a region below” is more faithful to
`the specification and plain meaning
`
`As the Board noted, figures are particularly apt to illustrate “relative spatial
`
`positions of structures;” and thus inform the disputed issue. Paper 45, 3. Is a
`
`region “below an upper surface of the metal part” only if it is underneath the upper
`
`surface of the metal part (left, Patent Owner)? Or can it also be “at a lower level
`
`than” the upper surface irrespective of the surface’s boundaries (right), as
`
`Petitioner contends in its latest filing? The figures below illustrate the positions:
`
`
`
`The issue is significant because Loh (Petitioner’s primary reference) shows resin
`
`between metal leads (not underneath those leads’ upper surface) on two sides:
`
`
`
`
`Patent Owner’s construction is a natural reading of “in a region below,” is
`
`Side view figures show
`one side of a device. Each
`of the four sides must
`have a region as claimed.
`
`consistent with the specification, and improves adhesion as the specification
`
`teaches. Petitioner’s construction leads to awkward results, and does not provide
`
`the same advantages. It is a byproduct of Loh, not the plain meaning.
`
`Moreover, Petitioner confirms that (as shown in Patent Owner’s sur-reply)
`
`its construction means that resin entirely above the upper surface of the metal part
`
`1
`
`
`
`Case IPR2018-00437
`Patent 9,537,071
`
`is considered in a region below that surface. SSR, 2 (“the hypotheticals show resin
`
`disposed in a region below ‘an’ upper surface of the metal part.”). Further, rather
`
`than take multiple levels into account, Petitioner insists that such levels are not in
`
`“the patent figures [or] in Loh.” Id. Notwithstanding that FIG. 11 shows a lead
`
`having multiple levels due to a concavity, Petitioner’s response misses the point.
`
`Irrespective of the patent figures, the patent specification and claims describe and
`
`encompass differences in level on an upper surface of the metal part. SR, 1.
`
`Petitioner also disputes the relevance of the “notch” limitation because it
`
`“does not refer to resin or its location.” SSR, 2. The specification explains that—
`
`unlike a hole, which also penetrates the lead, or a step which does not—a notch is
`
`filled with resin. SR, 4-5. Because the notch is formed in the metal part in the
`
`outer lateral surface of the resin package, that means resin is present in the portion
`
`where the notch is formed, i.e. resin at a lower level than an upper surface of the
`
`metal part. Id. Thus, Petitioner gives no meaning to “in a region below”.
`
`Finally, Petitioner again challenges the support for below meaning
`
`underneath. Dr. Schubert has explained that the specification describes concavities
`
`and convexities (which improve adhesion between the metal part and the resin
`
`part) that result in resin underneath metal on four outer side surfaces of the resin
`
`package. Ex. 2011, §VII(A)(2). Mischaracterizing Dr. Schubert’s testimony,
`
`Petitioner refers to an “admission[]” that “concavities or convexities are formed in
`
`2
`
`
`
`the regions below the upper surfaces of the exposed leads.” SSR, 1-2 (quoting Ex.
`
`2011, ¶50). Dr. Schubert made no admission contrary to Patent Owner’s position.
`
`Case IPR2018-00437
`Patent 9,537,071
`
`
`The concavity or convexity on the upper portion of the lead is a part of the upper
`
`surface of the lead; the concavity or convexity on the lower portion of the lead is
`
`
`
`below that upper surface. The remainder of the quoted sentence (elided by
`
`Petitioner) further explains that the concavities/convexities “fill with resin during
`
`processing.” Dr. Schubert also explains that a “concave profile with respect to the
`
`leads” is “mirrored by the convex profile in the resin”. Id. ¶54. In sum, Dr.
`
`Schubert’s position is consistently that there are resin-filled regions below an upper
`
`surface of the metal part.
`
`II. Patent Owner’s construction of “resin package” is correct
`
`The specification defines (expressly and through repeated and consistent
`
`usage) the terms resin package, resin part, and metal part to refer to a singulated
`
`light emitting device. Terms such as “singulated” do not render an apparatus claim
`
`invalid per se; courts routinely permit them. The claimed device is singulated.
`
`Irrespective of incorporation of background art, Loh does not describe its
`
`invention as encompassing singulated devices. Nothing Petitioner says fixes this.
`
`
`
`
`
`3
`
`
`
`Case IPR2018-00437
`Patent 9,537,071
`
`
`
`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
`
`Date: February 15, 2019
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2018-00437
`Patent 9,537,071
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 15th day of February, 2019, a true and correct
`
`copy of the foregoing RESPONSE TO PETITIONER’S REPLY TO 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.
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
