Filed on behalf of: Nichia Corporation Paper ____
`
`
`
`
` Date filed: April 18, 2018
`
`By: Martin M. Zoltick, Lead Counsel
`Robert P. Parker, Back-up Counsel (pro hac vice admission pending)
`
`Derek F. Dahlgren, Back-up Counsel (pro hac vice admission pending)
`
`
`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 PRELIMINARY RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF CONTENTS ........................................................................................... i 
`
`TABLE OF AUTHORITIES ................................................................................... iii 
`
`EXHIBIT LIST .......................................................................................................... v 
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`BACKGROUND OF THE TECHNOLOGY .................................................. 2 
`
`A.  Overview of LED Technology .............................................................. 2 
`
`B. 
`
`The ʼ071 patent ...................................................................................... 4 
`
`III. 
`
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`
`A. 
`
`B. 
`
`Field of the Invention/Relevant Art ...................................................... 8 
`
`Level of Ordinary Skill ......................................................................... 9 
`
`IV.  CLAIM CONSTRUCTION ............................................................................ 9 
`
`V.  ALLEGED PRIOR ART REFERENCES ..................................................... 10 
`
`A. 
`
`Loh ....................................................................................................... 10 
`
`B.  Mori ..................................................................................................... 11 
`
`C.  Wang .................................................................................................... 11 
`
`D.  Oshio .................................................................................................... 12 
`
`VI.  GROUNDS IN THE PETITION ................................................................... 13 
`
`VII.  STATEMENT OF SPECIFIC REASONS WHY NO IPR SHOULD BE
`INSTITUTED FOR THE CHALLENGED CLAIMS .................................. 14 
`
`A.  Ground 1 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 15 
`
`B. 
`
`Ground 2 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 18 
`
`
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`Case IPR2018-00437
`Patent 9,537,071
`Ground 3 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 21 
`
`C. 
`
`D.  Ground 4 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 22 
`
`E. 
`
`Ground 5 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 22 
`
`VIII.  PETITIONER FAILED TO DISCLOSE ALL REAL PARTIES IN
`INTEREST .................................................................................................... 23 
`
`IX.  SHOULD THE SUPREME COURT HOLD THAT PATENTS ARE
`PRIVATE RIGHTS, THE BOARD SHOULD VACATE AND
`TERMINATE THIS PROCEEDING ............................................................ 25 
`
`X. 
`
`CONCLUSION .............................................................................................. 25 
`
`
`
`
`
`
`
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`Case IPR2018-00437
`Patent 9,537,071
`
`Cases 
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 19
`Amazon.com, Inc. v. Appistry, Inc.,
`IPR2015-00480, Paper 18 (PTAB July 13, 2015) ................................................ 24
`AVX Corp. v. Greatbatch, Ltd.,
`IPR2014-00697, Paper 57 (PTAB Oct. 21, 2015) .................................................. 9
`Cohesive Techs., Inc. v. Waters Corp.,
`543 F.3d 1351 (Fed. Cir. 2008) ............................................................................ 21
`Duro-Last, Inc. v. Custom Seal, Inc.,
`321 F.3d 1098 (Fed. Cir. 2003) ............................................................................ 21
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper 12 (PTAB July 31, 2013) ................................................ 19
`In re Cyclobensaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................ 20
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ............................................................................ 20
`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) .............................................................................. 9
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................. 18, 19, 20
`Lake Cable, LLC v. Windy City Wire Cable and Tech. Prods., LLC,
`IPR2013-00528, Paper 11 (PTAB Feb. 19, 2014) ................................................ 19
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014-00488, Paper 61 (PTAB May 22, 2015) ............................................... 24
`Naughty Dog, Inc.,
`IPR2014-00197, Paper 11 (PTAB May 28, 2014) ............................................... 19
`Nestle USA, Inc. v. Steuben Foods, Inc.
`686 Fed. Appx. 917 (Fed. Cir. 2017) .................................................................... 10
`Nichia Corp. v. Everlight Ams., Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) ............................................................... 3, 8, 9, 10
`
`
`
`iii
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`

`Case IPR2018-00437
`Patent 9,537,071
`
`Samsung Elecs. Co., Ltd. v. Flamm,
`IPR2016-01510, Paper 6 (PTAB Feb. 14, 2017) ........................................... 18, 21
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 18
`Toshiba Corp. v. Intellectual Ventures II LLC,
`IPR2014-00201, Paper 11 (PTAB May 21, 2014) ............................................... 20
`Wright Med. Tech., Inc. v. Orthophoenix, LLC,
`IPR2014-00912, Paper 9 (PTAB Dec. 16, 2014) ................................................. 19
`Statutes 
`
`35 U.S.C. § 312(a) ................................................................................................... 23
`35 U.S.C. § 314(a) .............................................................................................. 1, 14
`Other Authorities 
`
`37 C.F.R. § 42.104(b) .............................................................................................. 14
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. § 42.108(b) .............................................................................................. 14
`37 C.F.R. § 42.108(c) ............................................................................................... 14
`37 C.F.R. § 42.8(b) .................................................................................................. 23
`MPEP 2111.01 § IV ................................................................................................. 10
`Rules 
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ............................................................... 14, 24
`
`
`
`
`
`
`
`
`iv
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`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`EXHIBIT LIST
`
`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).
`
`v
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`
`
`
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, Nichia Corporation
`
`(“Nichia” or “Patent Owner”), submits this Preliminary Response to the Petition
`
`for Inter Partes Review (“IPR”) of U.S. Patent No. 9,537,071 (the “ʼ071 patent”)
`
`(Ex. 1001) filed by Petitioner, Vizio, Inc. (“Vizio” or “Petitioner”) challenging
`
`claims 1, 2, 4-9, 11-12, 15-19, 21-23 and 25 (the “Challenged Claims”).
`
`As set forth below, Petitioner has failed to meet the threshold required by 35
`
`U.S.C. § 314(a) for instituting an IPR of the Challenged Claims of the ʼ071 patent
`
`for two reasons, and thus institution should be denied.
`
`First, the Challenged Claims of the ʼ071 patent refer to a “resin package.”
`
`That term is expressly defined in the ʼ071 patent to refer to “singulated light
`
`emitting device[s].” Ex. 1001 at 3:33-36. However, Loh does not disclose a
`
`singulated light emitting device. Instead, it describes only an individual modular
`
`device and makes no reference to singulation of multiple devices. Ex. 1004 at ¶ 7
`
`(“Embodiments of the invention provide a modular package for a light emitting
`
`device.”); cf. Ex. 2001 at ¶ 58 (Declaration of Dr. Stanley R. Shanfield dated June
`
`16, 2017 in IPR2017-01608 (Ex. 1003 in the foregoing IPR) (referring to
`
`“singulate” or “individualize”)); Ex. 2002 at ¶ 37 (Declaration of Dr. Stanley R.
`
`Shanfield dated June 16, 2017 in IPR2017-01623 (Ex. 1103 in the foregoing IPR)).
`
`Because of this fundamental difference—which is not surprising given that the
`
`
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`Case IPR2018-00437
`Patent 9,537,071
`ʼ071 patent is focused on a singulated light emitting device, which Loh does not
`
`describe—Loh does not anticipate the Challenged Claims of the ʼ071 patent
`
`(Ground 1). Moreover, Petitioner makes no argument as to why that limitation—
`
`and the Challenged Claims—would have been obvious in view of Loh either alone
`
`(Ground 2) or in combination with other references (Grounds 3-5). As such,
`
`Petitioner has failed to establish a reasonable likelihood that at least one challenged
`
`claim is unpatentable for this first, independent reason.
`
`Second, as explained in more detail below, Patent Owner asserts that
`
`Petitioner has failed to identify all of the real-parties-in-interest. For this
`
`additional, independent reason, the Petition should be denied.
`
`Finally, the Supreme Court is considering the constitutionality of IPRs in Oil
`
`States Energy Services, LLC v. Green’s Energy Group, LLC, No. 16-712. If the
`
`Supreme Court determines that IPRs are unconstitutional, the Petition should be
`
`denied as moot.
`
`II. BACKGROUND OF THE TECHNOLOGY
`
`A. Overview of LED Technology
`
`The ʼ071 patent is directed to the design of a singulated LED device with
`
`particular features and benefits over prior LED technology. See generally Ex.
`
`1001 at 3:26-30. LEDs are used in a variety of applications, including LCD
`
`backlighting for cell phones, laptops computers, and televisions; video display
`
`
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`2
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`Case IPR2018-00437
`Patent 9,537,071
`applications, such as billboards and scoreboards; automotive applications, such as
`
`interior and exterior vehicle lighting; and general lighting, such as lightbulbs. Id.
`
`at 1:18-22.
`
`The light emitting component of an LED is a semiconductor “chip” that
`
`emits light when a current is applied. Id. at 1:26-30. In most instances, one or
`
`more LED chips are encompassed in a larger structure called the LED “package,”
`
`resulting in a packaged “LED device.” See Nichia Corp. v. Everlight Ams., Inc.,
`
`855 F.3d 1328, 1332-33 (Fed. Cir. 2017). The LED package protects the chip(s)
`
`from environmental damage, determines the propagation and color of the emitted
`
`light, provides an electrical and structural connection with the product in which the
`
`LED device is used, manages heat dissipation, and performs other functions. Id.;
`
`see also Ex. 2003 at 93, Zhu and Humphreys, Solid-State Lighting Based on Light
`
`Emitting Diode Technology (2016) (“LED packaging is also critical to achieve
`
`high luminous efficiency, dissipate heat generated from the LED chip, improve
`
`reliability and lifetime and control the colour for specific requirements, as well as
`
`to protect the LED chips from damages due to electrostatic discharge, moisture,
`
`high temperature and chemical oxidation.”). Each element of the package design
`
`can affect the LED device’s operation. Ex. 2003 at 102.
`
`
`
`3
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`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`B.
`
`The ʼ071 patent
`
`
`
`The ʼ071 patent claims novel, non-obvious singulated light emitting devices,
`
`which are made using a simple, low-cost method that is significantly more efficient
`
`than prior methods. See generally Ex. 1001 at 19:17-22:14; 3:26-30. An
`
`embodiment is shown in FIGs 1 and 2, reproduced below:
`
`
`
`
`
`
`
`Id. at FIGs 1 and 2. The specification of the ʼ071 patent describes the light
`
`emitting device 100 as follows:
`
`A light emitting device 100 … has a resin package 20 in which
`a resin part 25 and leads 22 are formed in the substantially same plane
`in outer side surfaces 20b.
`
`
`*
`
`*
`
`*
`
`
`
`
`
`The resin package 20 is formed with the resin part 25 which
`mainly contains a light reflecting material 26, and the leads 22. The
`resin package 20 has the outer bottom surface 20a in which the leads
`22 are arranged, outer side surfaces 20b in which part of the leads 22
`are exposed, and the outer upper surface 20c in which an opening
`concave part 27 is formed. In the resin package 20, the concave part
`27 having an inner bottom surface 27a and inner side surface 27b is
`formed. The leads 22 are exposed in the inner bottom surface 27a of
`4
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`

`

`Case IPR2018-00437
`Patent 9,537,071
`the resin package 20 and the light emitting element 10 is placed on the
`leads 22. In the concave part 27 of the resin package 20, a sealing
`member 30 which covers the light emitting element 10 is arranged.
`The sealing member 30 contains a fluorescent material 40. The light
`emitting element 10 is electrically connected with the leads 22
`through wires 50. The leads 22 are not arranged on the outer upper
`surface 20c of the resin package 20.
`
`
`*
`
`*
`
`*
`
` …
`
` In a method for manufacturing a light emitting device which is
`described below, notch parts 21a are provided in a lead frame 21 and
`the lead frame 21 is cut along the notch parts 21a and, therefore, the
`cut part of the lead frame 21 is a part which is exposed from the resin
`package 20.
`
`
`In the resin package 20, the leads 22 are exposed from the four
`corners. The leads 22 are exposed in the outer side surfaces 20b, and
`are not subjected to plating processing….
`
`Id. at 6:34– 7:9.
`
`The Detailed Description of the invention provides a definition of various
`
`terms that are used in the disclosure:
`
`In this description, terms such as leads, a resin part, and resin
`package are used for a singulated light emitting device, and terms
`such as a lead frame and resin molded body are used in the stage prior
`to singulation.
`
`
`Id. at 3:33-36.
`
`According to some embodiments, the lead frame used to form the singulated
`
`light emitting devices is etched. This etching may result in concavities in the side
`
`surfaces of the notches. Id. at 9:25-47. Moreover, when singulated, resin is
`
`present in the regions below the exposed metal leads at the outer lateral surfaces in
`5
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`

`Case IPR2018-00437
`Patent 9,537,071
`some embodiments. This improves adhesion of the resin part to the metal leads,
`
`which is one of the stated goals of the ʼ071 patent. See, e.g., id. at 16:42-45 (“An
`
`etched lead frame is used for the leads 322. In the cut surface of the resin-molded
`
`body, the etched leads 322 have a concavity and convexity. This concavity and
`
`convexity improve adhesion between the resin part and leads.”); 9:34-39
`
`(“However, etching can form concave-convex shapes in the entire sectional (etched
`
`part) part of the lead frame, so that it is possible to increase a bonding area between
`
`the lead frame and resin-molded body and mold a resin package of better
`
`adhesion”); and 2:32-37.
`
`Claims 1, 15 and 16 are the only challenged independent claims and recite
`
`respectively
`
`1. A light emitting device comprising:
`
`a resin package comprising a resin part and a metal part including first and
`second metal plates, said resin package having four outer lateral surfaces and
`having a concave portion having a bottom surface; and
`
`a light emitting element mounted on the bottom surface of the concave
`portion and electrically connected to the metal part,
`
`wherein at least a portion of an outer lateral surface of the resin part and at
`least a portion of an outer lateral surface of the metal part are coplanar at
`each of the four outer lateral surfaces of the resin package,
`
`wherein a notch is formed in the metal part at each of the four outer lateral
`surfaces of the resin package,
`
`wherein the resin part is located at left and right sides of a portion of the
`metal part at at least two of the four outer lateral surfaces of the resin
`package, and
`
`
`
`6
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`

`Case IPR2018-00437
`Patent 9,537,071
`wherein each of the first and second metal plates is substantially flat.
`
`*
`
`*
`
`*
`
`15. A light emitting device comprising:
`
`a resin package comprising a resin part and a metal part including first and
`second metal plates, said resin package having four outer lateral surfaces and
`having a concave portion having a bottom surface; and
`
`a light emitting element mounted on the bottom surface of the concave
`portion and electrically connected to the metal part,
`
`wherein at least a portion of an outer lateral surface of the resin part and at
`least a portion of an outer lateral surface of the metal part are coplanar at
`each of the four outer lateral surfaces of the resin package,
`
`wherein a notch is formed in the metal part at each of the four outer lateral
`surfaces of the resin package,
`
`wherein the resin part is located at left and right sides of a portion of the
`metal part at at least two of the four outer lateral surfaces of the resin
`package, and
`
`wherein all upper edges of the metal part are coplanar.
`
`*
`
`*
`
`*
`
`16. A light emitting device comprising:
`
`a resin package comprising a resin part and a metal part including at least
`two metal plates, said resin package having four outer lateral surfaces and
`having a concave portion having a bottom surface; and
`
`a light emitting element mounted on the bottom surface of the concave
`portion and electrically connected to the metal part,
`
`wherein at least a portion of an outer surface of the resin part and at least a
`portion of an outer surface of the metal part are coplanar at an outer bottom
`surface of the resin package,
`
`
`
`7
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`Case IPR2018-00437
`Patent 9,537,071
`wherein at least a portion of an outer lateral surface of the resin part and at
`least a portion of an outer lateral surface of the metal part are coplanar at
`each of the four outer lateral surfaces of the resin package,
`
`wherein a notch is formed in the metal part at each of the four outer lateral
`surfaces of the resin package,
`
`wherein the resin part is located at left and right sides of a portion of the
`metal part at at least two of the four outer lateral surfaces of the resin
`package, and
`
`wherein a lower surface of the metal part is exposed from the resin part in a
`region directly under the light emitting element.
`
`Id. at 19:17-35 and 20: 29-21:3 (emphasis added).
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`A.
`
`Field of the Invention/Relevant Art
`
`The field of invention relates to LED package design. Multiple design
`
`challenges must be addressed, including electrical, optical, heat conduction,
`
`adhesion, and mechanical challenges, which can be contradictory and can pull the
`
`design in different directions. See Nichia Corp., 855 F.3d at 1332-33. This was
`
`particularly true as of the time of the invention. Moreover, at the time of the
`
`invention, textbooks on LED package design were very limited, and Patent Owner
`
`is not aware of any seminal text focusing on LED packaging applications. Ex.
`
`2004 at 15. Indeed, the field of invention was very unpredictable at the time of the
`
`invention of the ʼ071 patent. Nichia Corp., 855 F.3d at 1339 (district court’s
`
`finding on a motivation to combine was not clearly erroneous because “artisans in
`
`this field face myriad design challenges because small design changes may cause
`
`
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`Case IPR2018-00437
`Patent 9,537,071
`unpredictable results and because design considerations often pull in multiple
`
`directions.”).
`
`B.
`
`Level of Ordinary Skill
`
`The definition adopted by the district court in the Everlight case involves a
`
`higher level of skill than indicated by the Petitioner. Nevertheless, Patent Owner
`
`does not challenge Petitioner’s definition for purposes of this preliminary response.
`
`Indeed, “in general, a lower level of skill in the art favors a determination of
`
`nonobviousness, while a higher level of skill favors a finding of obviousness.”
`
`AVX Corp. v. Greatbatch, Ltd., IPR2014-00697, Paper 57 at 8 n.4 (PTAB Oct. 21,
`
`2015) (citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323
`
`(Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a
`
`determination of nonobviousness, and thus the patentee, while a higher level of
`
`skill favors the reverse.”)). This is particularly true in a challenging field like LED
`
`design where a multitude of considerations ranging from heat, optical and
`
`electrical conduction and mechanical challenges, not to mention manufacturing
`
`issues. Nichia Corp., 855 F.3d at 1332-33 and 1337.
`
`IV. CLAIM CONSTRUCTION
`
`
`
`There is one phrase used in the Challenged Claims that disposes of the
`
`Petition. Specifically, the Challenged Claims refer to a “resin package.” As
`
`described above, that phrase is expressly defined in the ʼ071 patent as referring to
`
`
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`9
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`Case IPR2018-00437
`Patent 9,537,071
`“a singulated light emitting device.” Ex. 1001 at 3:33-36. Lexicography, such as
`
`the foregoing, applies even under the broadest reasonable interpretation (“BRI”)
`
`standard used by the PTAB. Nestle USA, Inc. v. Steuben Foods, Inc. 686 Fed.
`
`Appx. 917, 918-19 (Fed. Cir. 2017); MPEP 2111.01 § IV. Moreover, the reference
`
`to a singulated light emitting device is not trivial. The ʼ071 patent addresses issues
`
`with singulated devices such as adhesion after singulation, see, e.g., Ex. 1001 at
`
`2:35-37, and provides significant improvements over existing LED technology.
`
`See, e.g., Nichia Corp., 855 F.3d at 1332-33 and 1336-37; Ex. 1001 at 3:26-30.
`
`
`
`Additionally, as the PTAB applies the BRI standard, Patent Owner does not
`
`concede any particular construction under the Phillips standard applicable in other
`
`forums, either expressly or implicitly through any arguments contained herein and
`
`reserves the right to take different positions on claim construction under the
`
`different claim construction standard used in other forums.
`
`V. ALLEGED PRIOR ART REFERENCES
`
`A. Loh
`
`The device described in Loh is fundamentally different than the device
`
`recited by the Challenged Claims. Whereas the ʼ071 patent claims singulated light
`
`emitting devices, Loh discloses only individually manufactured LEDs. Ex. 1004 at
`
`abst. and ¶ 7 (referring to a “modular package” for a light emitting device). Loh is
`
`completely silent regarding singulation. The differences in the designs are
`
`
`
`10
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`Case IPR2018-00437
`Patent 9,537,071
`deliberate. In Loh, the concern is how to get heat away from the device using a
`
`heat sink. Ex. 1004 at ¶ 63. In contrast, the ʼ071 patent claims novel, non-obvious
`
`singulated light emitting devices that allow for significant manufacturing volumes,
`
`efficiently, at low cost and without sacrificing adhesion between the resin and
`
`metal parts. See, e.g., Ex. 1001 at 19:17-22:14.
`
`B. Mori
`
`Mori discloses a light emitting device, but one that is different than recited
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`in the Challenged Claims. Petitioner’s reliance on Mori is for one narrow, alleged
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`teaching. Specifically, in the Petition, Petitioner relies on Mori for the disclosure
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`of the use of two kinds of phosphors in a sealing member. Paper 1 at 17-18, 44,
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`46. Petitioner does not assert that Mori cures the above-described deficiency of
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`Loh.
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`C. Wang
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`Wang also discloses an LED package, but one that is different than that
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`
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`claimed in the ʼ071 patent. This is illustrated below in Figure 4:
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`Ex. 1006 at FIG 4. In the Petition, Petitioner relies on Wang for the disclosure of
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`electroplating the entire lead frame on all surfaces and cutting the lead frame after
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`molding to separate the light emitting device. Paper 1 at 19, 47-48. Again,
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`Petitioner does not assert that Wang cures the above-described deficiency of Loh.
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`D. Oshio
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`Oshio also discloses an LED package, but one that is different than that
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`claimed in the ʼ071 patent. This is again shown in Figure 4:
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`Ex. 1007 at FIG 4. In the Petition, Petitioner relies on the disclosure in Oshio of
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`plating the entire lead frame on all surfaces and cutting the plated lead frame to
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`form an unplated outer side surface on the lead in manufacturing an LED package,
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`and using a different type of metal for the plating. Paper 1 at 21, 51-52, 57, 63-64.
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`Once again, Petitioner does not assert that Oshio cures the above-described
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`deficiency of Loh.
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`VI. GROUNDS IN THE PETITION
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`
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`There are five different grounds in the present Petition. Each fails to meet
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`the threshold for instituting an IPR as discussed in more detail herein.
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`A. Ground 1 - Claims 1, 4, 8-9, 11-12, 15-18, and 25 anticipated by Loh
`(§ 102)
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`B. Ground 2 – Claims 1, 4, 8-9, 11-12, 15-18, and 25 rendered obvious
`by Loh (§ 103)
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`C. Ground 3 – Claims 2 and 19 rendered obvious by Loh in view of Mori
`(§ 103)
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`D. Ground 4 – Claims 5-7 and 21-23 rendered obvious by Loh in view of
`Wang (§ 103)
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`E. Ground 5 – Claims 5-7, 21-23 rendered obvious by Loh in view of
`Wang and Oshio (§ 103)
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`VII. STATEMENT OF SPECIFIC REASONS WHY NO IPR SHOULD BE
`INSTITUTED FOR THE CHALLENGED CLAIMS
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`A petition for IPR may be granted when “the information presented in the
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`petition … shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
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`§ 314(a); see 37 C.F.R. § 42.108(c). Petitioner bears the burden of showing that
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`this statutory threshold has been met. See 37 C.F.R. § 42.104(b); Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) (hereinafter
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`“Practice Guide”) (“The Board … may institute a trial where the petitioner
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`establishes that the standards for instituting the requested trial are met….”). In
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`determining whether to institute an IPR, the Board may “deny some or all grounds
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`for unpatentability for some or all of the challenged claims.” 37 C.F.R.
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`§ 42.108(b); see also 35 U.S.C. § 314(a).
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`Here, Petitioner has failed to make the requisite showing. As discussed in
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`more detail below, Ground 1 fails because Petitioner has not identified every
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`limitation of the ʼ071 patent in Loh. Specifically, Petitioner has not shown that
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`Loh discloses a singulated light emitting device.
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`Ground 2 likewise fails because Petitioner has not engaged in any
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`obviousness analysis, including discussing the scope and content of the prior art,
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`the differences between the claimed invention and the prior art, any specific
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`modifications to correspond to the limitations of the Challenged Claims, and any
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`motivation for making such a change along with establishing a reasonable
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`expectation of success.
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`Grounds 3-5 similarly fail. Petitioner never asserts that the additional
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`references—Mori, Wang and Oshio—cure the deficiency of Loh. As Petitioner
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`has not established that the singulated light emitting device limitation is present in
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`any of the references, or would have been obvious in view of the same, it has failed
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`to carry its burden.
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`A. Ground 1 Fails to Demonstrate a Reasonable Likelihood that any
`Challenged Claim Would be Found Unpatentable
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`Petitioner alleges that claims 1, 4, 8-9, 11-12, 15-18, and 25 are anticipated
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`by Loh. Petitioner is wrong.
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`Claims 1, 15 and 16—the only challenged independent claims—require a
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`singulated light emitting device. Loh fails to disclose a singulated “resin package”
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`as claimed in the ʼ071 patent. As noted above, a resin package is defined in the
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`ʼ071 patent as a post-singulation device. Ex. 1001 at 3:33-36. Loh does not
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`disclose a singulated light emitting device. Instead, it describes only a “modular”
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`device and makes no reference to singulation or a singulated resin package. Ex.
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`1004 at abst. and ¶ 7 (referring to a “modular package” for a light emitting device);
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`see also Ex. 2001 at ¶ 58 ; Ex. 2002 at ¶ 37. Figure 12 of Loh shows such a
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`modular device:
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`Ex. 1004 at FIG 12, ¶ 116; see also Ex. 1004 at abstract, claim 1, and ¶¶ 13-16.
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`Because Loh is silent regarding a post-singulation device, Petitioner has not met its
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`burden.
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`
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`The testimony of Petitioner’s expert, Dr. Shanfield, is similarly unhelpful to
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`Petitioner on this issue (and obviousness for Ground 2). For instance, at ¶¶ 23 and
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`83 respectively, Dr. Shanfield states the following:
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`It was also well-known and conventional in the art before the claimed
`priority date of the ’071 patent to form a resin package for an LED
`comprising a resin part and a metal part including first and second
`metal plates (known in the art as leads). E.g., Ex. 1004 (Loh),
`Abstract, ¶¶ 60, 73, 76, 96, Figs. 5-8 (disclosing a “package for a light
`emitting device” comprising “a leadframe … includ[ing] … a
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`plurality of leads” formed of “copper, aluminum or another metal”
`and “package body 230 … formed on/around the leadframe” using
`“thermosets such as epoxy or phenolic resin”); Ex. 1005 (Mori) ¶¶ 5-7,
`Figs. 1-3, 8-9 (disclosing a “light-emitting apparatus” comprising “a
`molded lead terminal made of copper (Cu) or an iron (Fe)-nickel (Ni)
`alloy [that] is fixedly arranged within the base bod[y]” and a “frame
`bod[y]” made of “a resin material such as epoxy resin”); Ex. 1007
`(Oshio) ¶ 49, Figs. 1-10 (disclosing a “semiconductor light emitting
`device” that “comprises a pair of leads 20 and 30, and embedding
`resin 40”) . . . .
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`*
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`*
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`*
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`For example, Loh discloses “package 260” is a resin package that
`comprises a resin part and a metal part. E.g., Ex. 1004 (Loh) ¶¶ 74-
`82, Figs. 5-7. Loh discloses that “package 260” comprises a metal part
`including first and second metal plates, as shown in blue in