Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Entered: July 16, 2018
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`Paper 17
`Entered: July 16, 2018
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2018-00437
`Patent 9,537,071 B2
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`
`I.
`
`INTRODUCTION
`
`
`
`VIZIO, Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
`
`requesting inter partes review of claims 1, 2, 4–9, 11, 12, 15–19, 21–23, and
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`25 of U.S. Patent No. 9,537,017 B2 (Ex. 1001, “the ’071 patent”). Paper 1
`
`(“Pet.”). Nichia Corporation (“Patent Owner”) filed a Preliminary
`
`Response. Paper 8 (“Prelim. Resp.”).
`
`We have authority under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted unless the information presented in
`
`the Petition and the Preliminary Response shows that “there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R
`
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`
`Having considered Petitioner’s Petition and Patent Owner’s Preliminary
`
`Response, we conclude that the information presented in the Petition
`
`establishes a reasonable likelihood that Petitioner would prevail with respect
`
`to at least one of the challenged claims. Accordingly, we institute an inter
`
`partes review for claims 1, 2, 4–9, 11, 12, 15–19, 21–23, and 25 of the ’071
`
`patent.
`
`
`
`II.
`
`BACKGROUND
`
`A. Real Party-in-Interest
`
`Among other requirements, 35 U.S.C. § 312(a)(2) provides that a
`
`petition for inter partes review “may be considered only if . . . the petition
`
`identifies all real parties in interest.” There is no bright line test for
`
`determining whether an unnamed entity qualifies as a real party-in-interest,
`
`although a common consideration is whether the unnamed entity could have
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`2
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`exercised control over a party’s participation in an inter partes review.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 58 (Aug. 14, 2012);
`
`see also Zoll Lifecor Corp. v. Philips Elects. N. Am. Corp., Case IPR2013-
`
`00609 (PTAB Mar. 20, 2014) (Paper 15) (“The non-party’s participation
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`may be overt or covert, and the evidence may be direct or circumstantial, but
`
`the evidence as a whole must show that the non-party possessed effective
`
`control from a practical standpoint.”).
`
`Petitioner identifies VIZIO, Inc. as the sole real party-in-interest. Pet.
`
`5. Patent Owner contends Petitioner failed to disclose all real parties-in-
`
`interest based on a report that lists the same business address and phone
`
`number for VIZIO and AmTRAN Technology Co., Ltd. (Prelim. Resp. 24
`
`(citing Ex. 2006)) and “[d]ocuments filed by V[IZIO] with the SEC in
`
`October 2015 [that] indicate that AmTran is a ‘related party’” (Prelim. Resp.
`
`23–24 (citing Ex. 2005 at 26)). Further, Patent Owner states that “publicly
`
`available information suggest that V[IZIO] does not itself manufacture
`
`televisions.” Prelim. Resp. 23.
`
`The evidence suggesting that VIZIO and AmTRAN may have (or
`
`have had in 2015) a business relationship does not establish that AmTRAN
`
`should have been named a real party-in-interest. Patent Owner has not
`
`directed us to any evidence that AmTRAN assisted in, financed, or exerted
`
`any control over the Petition filed in this proceeding.
`
`We note that Patent Owner has presented substantially the same
`
`evidence and arguments in other inter partes review proceedings. See
`
`VIZIO, Inc. v. Nichia Corp., Case IPR2017-01623, Paper 8 at 60–61 (PTAB
`
`Oct. 13, 2017); VIZIO, Inc. v. Nichia Corp., Case IPR2017-01623, Paper 8
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`at 59–61 (PTAB Oct. 13, 2017). Consistent with previous decisions from
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`the Board and based on the current record in this proceeding, we determine
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`that the evidence currently of record is not sufficient to support an allegation
`
`that Petitioner has failed to satisfy its obligation to name all real parties-in-
`
`interest. See VIZIO, Inc. v. Nichia Corp., Case IPR2017-01608, Paper 10 at
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`2–4 (PTAB Jan. 11, 2018); VIZIO, Inc. v. Nichia Corp., Case IPR2017-
`
`01623, Paper 11 at 3–4 (PTAB Jan. 11, 2018).
`
`B. Related Proceedings
`
`Petitioner identifies the following matters related to the ’071 patent:
`
`Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-1453-JRG (E.D. Tex.) (lead),
`
`consolidated with Nos 2:16-cv-1452-JRG, 2:16-cv-1454-JRG, 2:16-cv-
`
`1455-JRG, 2:16-cv-616-JRG, 2:16-cv-875-JRG, 2:16-cv-00246-JRG, 2:16-
`
`cv-00613-JRG, 2:16-cv-00615-JRG, 2:16-cv-00616-JRG, and 2:16-cv-
`
`00875-JRG. Pet. 5.
`
`Petitioner also states that Patent Owner has asserted U.S. Patent No.
`
`8,530,250, which is related to the ’071 patent, against a different party in
`
`Nichia Corp. v. Everlight Electrics Co., No. 2:13-cv-702-JRG (E.D. Tex.);
`
`Appeal No. 16-1585, 16-1618 (Fed. Cir.), and Petitioner has challenged
`
`claims of the ’250 patent in VIZIO, Inc. v. Nichia Corp., IPR2017-01608,
`
`IPR2017-01623. Pet. 5–6. Petitioner has also challenged claims of U.S.
`
`Patent. No. 9,410,411, which is also related to the ’071 patent, in VIZIO, Inc.
`
`v. Nichia Corp., IPR2018-00386.
`
`C. The ’071 Patent (Ex. 1001)
`
`The ’071 patent “relates to a light emitting device . . . and to a method
`
`for manufacturing a light emitting device.” Ex. 1001, 1:18–22. The method
`
`of manufacturing a light emitting device described in the ’071 patent
`
`includes sandwiching a lead frame between two molds and transfer-molding
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`4
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`IPR2018-00437
`Patent 9,537,071 B2
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`a thermosetting resin into the molds to form a “resin-molded body.” The
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`resin-molded body is then cut along notches in the lead frame to “singulate”
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`the resin-molded body into individual “resin packages,” each resin package
`
`having resin molded to leads. Ex. 1001, 3:44–55.
`
`The ’071 patent states that similar methods in the prior art had
`
`problems of inadequate adhesion between the resin and the leads such that
`
`the resin compositions could become detached from the leads after
`
`singulation. Ex. 1001, 1:42–2:37. To improve adhesion between the resin
`
`and the leads, some embodiments described in the ’071 patent include a lead
`
`frame that has been etched. See Prelim. Resp. 5–6. According to Patent
`
`Owner:
`
`This etching may result in concavities in the side surfaces of the
`notches [of the lead frame]. Moreover, when singulated, resin
`is present in the regions below the exposed metal leads at the
`outer lateral surfaces in some embodiments. This improves
`adhesion of the resin part to the metal leads, which is one of the
`stated goals of the ’071 patent.
`
`Prelim. Resp. 5–6 (citing Ex. 1001, 2:32–37, 9:25–47, 16:42–45).
`
`D. Challenged Claims
`
`Petitioner challenges claims 1, 2, 4–9, 11, 12, 15–19, 21–23, and 25 of
`
`the ’071 patent. Claims 1, 15, and 16 are independent claims and are
`
`reproduced below.
`
`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,
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`5
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`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 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
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`6
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`IPR2018-00437
`Patent 9,537,071 B2
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`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,
`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.
`
`
`E. Prior Art and Asserted Grounds
`
`Petitioner asserts the following grounds:
`
`Prior Art
`
`Claims Challenged
`Basis
`Loh1
`Anticipation 1, 4, 8, 9, 11, 12, 15–18, 25
`Obviousness 1, 4, 8, 9, 11, 12, 15–18, 25
`Loh
`Loh and Mori2
`Obviousness 2, 19
`Loh and Wang3
`Obviousness 5–7, 21–23
`Loh, Wang, and Oshio4 Obviousness 5–7, 21–23
`
`
`
`1 U.S. Patent Publication No. 2008/0012036 A1; publ. Jan. 17, 2008.
`2 U.S. Patent Publication No. 2005/0211991 A1; publ. Sept. 29, 2005.
`3 U.S. Patent Publication No. 2008/0073662 A1; publ. Mar. 27, 2008.
`4 U.S. Patent Publication No. 2005/0280017 A1; publ. Dec. 22, 2005.
`
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`III. PATENTABILITY ANALYSIS
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`A. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest
`
`reasonable interpretation standard in Inter Partes Review proceedings).
`
`Under the broadest reasonable interpretation standard, and absent any
`
`special definitions, claim terms are given their ordinary and customary
`
`meaning as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007); see also Phillips. v. AWH Corp., 415 F.3d 1303, 1315
`
`(Fed. Cir. 2005) (en banc) (“Claims must always be read in light of the
`
`specification.”). Any special definitions for claim terms or phrases must be
`
`set forth in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Although
`
`limitations generally are not to be read from the specification into the claims
`
`(Phillips, 415 F.3d at 1320; In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`
`1993)), “[t]he construction that stays true to the claim language and most
`
`naturally aligns with the patent’s description of the invention will be, in the
`
`end, the correct construction” (Phillips, 415 F.3d at 1316).
`
`Petitioner suggests that no claim terms require construction beyond
`
`their plain and ordinary meaning. Pet 12 (identifying only the phrase “a
`
`notch is formed in the metal part”; stating that the phrase should be given its
`
`plain and ordinary meaning). Patent Owner identifies the phrase “resin
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`package” as the only phrase that requires construction. Prelim. Resp. 9
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`8
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`Patent 9,537,071 B2
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`(stating “[t]here is one phrase used in the Challenged Claims that disposes of
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`the Petition,” referring to the phrase “resin package”).
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`Patent Owner argues the ’071 patent “expressly defines” the term
`
`“resin package” as “referring to ‘a singulated light emitting device.’”
`
`Prelim. Res. 9–10 (citing Ex. 1001, 3:33–36). We disagree.
`
`The portion of the specification cited by Patent Owner states “[i]n 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.” Ex. 1001, 3:33–36.
`
`Just as that sentence does not define the terms “leads” and “a resin part,” the
`
`sentence does not define the term “resin package.” Instead, the sentence
`
`provides context for the specification’s discussions that include those terms,
`
`but we find nothing in the cited portions of the specification that could
`
`require reading “singulation” into the claim or to otherwise limit the scope
`
`of claim 1 to a “post-singulation device,” as argued by Patent Owner (see
`
`Prelim. Resp. 9–11, 15–18). Beyond noting that the term “resin package”
`
`does not require singulation or a post-singulation device, we do not formally
`
`interpret “resin package” at this stage in the proceeding.
`
`B. Claim 1
`
`The Petition includes a limitation-by-limitation comparison of Loh’s
`
`disclosures to independent claim 1, presenting both anticipation arguments
`
`and obviousness arguments, and citing the Declaration of Dr. Stanley R.
`
`Shanfield in support. Pet. 21–34. In part, Petitioner identifies relevant
`
`portions of Loh’s disclosures with reference to the annotated versions of
`
`Loh’s Figures 5, 6, and 7, reproduced below.
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`9
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`IPR2018-00437
`Patent 9,537,071 B2
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`Loh’s Figure 5 (Pet. 23)
`(annotations by Petitioner)
`
`
`
`Loh’s Figure 6 (Pet. 23)
`(annotations by Petitioner)
`
`
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`10
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`Loh’s Figure 7 (Pet. 24)
`(annotations by Petitioner)
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`
`
`Loh’s Figures 5, 6, and 7 depict what Loh refers to as a lighting package 260
`
`(cited by Petitioner as the claimed resin package), a package body 230
`
`(shaded green by Petitioner; cited by Petitioner as the claimed resin part),
`
`and leads 204a–6 and 206a–6 (shaded blue by Petitioner; cited by Petitioner
`
`as the claimed metal part including first and second metal plates). Pet. 22
`
`(citing Ex. 1004 ¶¶ 74–79, Figs. 5–7). Among the annotations added by
`
`Petitioner to Loh’s Figures 5, 6, and 7 are phrases from claim 1 that describe
`
`the resin package along with arrows associating each phrase to structures
`
`depicted in the Figures.
`
`In further support of its arguments that Loh discloses a “resin
`
`package” as claimed, Petitioner cites Loh’s disclosure that package body 230
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`is molded on/around a metal lead frame using a thermoset such as epoxy
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`resins and phenol-novolac resins. Pet. 23 (citing Ex. 1004 ¶¶ 76–77, 79–80,
`
`103 Figs. 5, 7, 8). In addition to the citations to Loh’s disclosures, Petitioner
`
`contends it was well known at the time of the ’071 patent’s invention to
`
`form a resin package as claimed. Pet. 1–2 (citing various paragraphs and
`
`figures of Ex. 1004, Ex. 1005, and Ex. 1007).
`
`Patent Owner argues “Loh fails to disclose a singulated ‘resin
`
`package’ as claimed.” Prelim. Resp. 15. According to Patent Owner, Loh
`
`“describes only a ‘modular’ device and makes no reference to singulation or
`
`a singulated resin package.” Prelim. Resp. 16 (citing Ex. 1004, abstract, ¶ 7
`
`as “referring to a ‘modular package’ for a light emitting device”).
`
`As explained above, we disagree with Patent Owner’s interpretation
`
`of “resin package” as imparting a “singulation” limitation to claim 1, and,
`
`other than its singulation arguments, Patent Owner does not substantively
`
`address Petitioner’s arguments that Loh’s “package” discloses a resin
`
`package as claimed.
`
`In addition to Petitioner’s anticipation arguments, Petitioner presents
`
`“alternative” arguments regarding the limitations requiring that at least a
`
`portion of the resin part is “coplanar” with the metal part and that the resin
`
`part is located at “left and right sides” of a portion of the metal part, arguing
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`that each of those limitations would have been obvious to a person of
`
`ordinary skill in view of Loh. Pet. 29, 33. Patent Owner contends that the
`
`Petition asserts obviousness with only conclusory allegations and without
`
`any analysis. Prelim. Resp. 18–21 (citing numerous cases).
`
`As part of Petitioner’s obviousness arguments, the Petition states
`
`“[t]rimming [external frame 201] results in a metal part and resin part that
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`are co-planar, where the resin part is located at left and right sides of a
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`portion of the metal part at at least two outer lateral surfaces (see Figure 7
`
`above).” Pet. 32 (citing Ex. 1003 ¶¶ 97–11; Ex. 1004 ¶¶ 10, 75–76, 88, 93,
`
`Figs. 5–7); accord Pet. 29. The Petition continues, stating, “[f]urthermore,
`
`at minimum, and alternatively, as discussed (see Element 1.C), it would have
`
`been obvious to a POSITA, that the regions between the leads (see Figure 7)
`
`are filled with resin.” Pet. 33 (citing Ex. 1003 ¶ 101). Referring to filling
`
`the regions between the leads with resin, the Petition states that “[a] POSITA
`
`would have understood doing so improves stability of the package by
`
`increasing the bonding area of the leads to the resin part and serves to
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`practically hold the leads in place and keep them separated, after trimming
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`off external frame 201.” Pet. 29 (citing Ex. 1003 ¶ 94; Ex. 1004 ¶ 75).
`
`Further, the Petition contends that “[f]illing the regions between the leads
`
`with the same resin as the region above the leads would further simplify the
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`manufacturing process, as a single molding step is used to fill resin in the
`
`regions between and above the leads.” Pet. 29 (citing Ex. 1003 ¶ 94).
`
`Moreover, the Petition argues that configuring a resin package to have resin
`
`extending to each of the outer lateral surfaces of the resin package coplanar
`
`with the metal part was common and well known (Pet. 29 (citing Ex. Ex.
`
`1003 ¶94; 1004 ¶¶ 60, 73, 76, 96, Fig. 7; Ex. 1008 ¶¶ 20–21, 24, Fig. 2C;
`
`Ex. 1010 ¶¶ 9, 25, Figs. 2a–2f, 3a, 3b, 4a–4g)) and “would have been routine
`
`and straightforward for a POSITA to do so” (Pet. 29 (citing Ex. 1003 ¶ 94)).
`
`We understand Petitioner’s obviousness arguments to be applicable to
`
`the “coplanar” and “left and right sides” limitations as alternatives to
`
`Petitioner’s position that Loh discloses those limitations as presented in
`
`Petitioner’s anticipation arguments. Other than Patent Owner’s arguments
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`that Petitioner has not adequately articulated its obviousness arguments (see
`
`Prelim. Resp. 18–21), Patent Owner does not substantively address
`
`Petitioner’s arguments that Loh discloses those limitations or that those
`
`limitations would have been obvious to a person of ordinary skill.
`
`At this stage of the proceeding, we have not made a final
`
`determination with respect to the patentability of claim 1 or the construction
`
`of any claim term. However, for the foregoing reasons articulated by the
`
`Petitioner, and in light of the evidence currently of record, we determine that
`
`the information presented in the Petition establishes that there is a reasonable
`
`likelihood that Petitioner would prevail in challenging at least claim 1.
`
`C. Claims 4, 8, 9, 11, 12, 15–18, and 25
`
`Claims 15 and 16 are independent claims. Claim 15 is similar to
`
`claim 1 and additionally includes the limitation “wherein all upper edges of
`
`the metal part are coplanar.” Claim 16 is similar to claim 1, although the
`
`“coplanar” limitation in claim 16 further recites “coplanar at an outer bottom
`
`surface of the resin package,” and claim 16 additionally includes the
`
`limitation “wherein a lower surface of the metal part is exposed from the
`
`resin part in a region directly under the light emitting element.”
`
`Each of claims 4, 8, 9, 11, and 12 depends directly or indirectly from
`
`independent claim 1, and claims 17, 18, and 25 depend from claim 16.
`
`Claim 4 additionally recites “wherein at least a portion of the light emitting
`
`element is exposed from the resin part.” Claims 8, 9, 11, 17, and 25
`
`additionally recite limitations regarding the composition of the resin part.
`
`Claims 12 and 18 additionally recite “wherein the metal part has a step
`
`portion, a concave portion, and/or a convex portion.”
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`For each of claims 4, 8, 9, 11, 12, 15–18, and 25, the Petition includes
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`a limitation-by-limitation, claim-by-claim comparison of each limitation to
`
`the disclosures of Loh, citing portions of Loh and the Declaration of Dr.
`
`Stanley R. Shanfield in support. For claims 15 and 16, the Petition relies on
`
`essentially the same arguments and evidence presented for claim 1, with
`
`additional citations to Loh and arguments directed to the limitations unique
`
`to each claim. See Pet. 37–39 (addressing the limitations of claim 15 by
`
`citing the Petition’s discussions of similar limitations of claim 1;
`
`additionally presenting annotated versions of Loh’s Figures 5 and 7 and
`
`additional citations), 39–42 (addressing the limitations of claim 16 by citing
`
`the Petition’s discussions of similar limitations of claim 1; additionally
`
`presenting an annotated version of Loh’s Figure 5 and additional citations).
`
`Similarly, for each of claims 4, 8, 9, 11, 12, 17, 18, and 25, Petitioner cites
`
`the Petition’s discussion of the relevant base claims and addresses the
`
`additional limitations by citing portions of Loh and the Declaration of Dr.
`
`Stanley R. Shanfield in support. Pet. 34–35 (addressing claim 4), 35
`
`(addressing claim 8), 36 (addressing claims 9 and 11), 36–37 (addressing
`
`claim 12), 43 (addressing claims 17, 18, and 25).
`
`The Preliminary Response does not substantively address Petitioner’s
`
`citations and arguments regarding these claims beyond the arguments
`
`advanced for claim 1. At this stage of the proceeding, we have not made a
`
`final determination with respect to the patentability of any of these claims or
`
`the construction of any claim term. However, based on our review of the
`
`parties’ positions, the evidence of record, and our discussion of claim 1
`
`above, we determine that the information presented in the Petition
`
`15
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`IPR2018-00437
`Patent 9,537,071 B2
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`establishes that there is a reasonable likelihood that Petitioner would prevail
`
`in challenging claims 4, 8, 9, 11, 12, 15–18, and 25.
`
`D. Claims 2 and 19
`
`Claim 2 depends from claim 1 and claim 19 depends from claim 16,
`
`with each claim further reciting “wherein the light emitting device further
`
`comprises a sealing member that contains two or more kinds of phosphors.”
`
`In addition to the Petition’s analysis of claim 1 (and claim 16), the Petition
`
`includes a comparison of Loh and Mori to dependent claims 2 and 19, citing
`
`disclosures of phosphors in each reference and the Declaration of Dr.
`
`Stanley R. Shanfield in support. Pet. 43–47 (citing, e.g., Ex. 1003 ¶¶ 134–
`
`136; Ex. 1004 ¶¶ 5, 79 (describing “a wavelength conversion material, such
`
`as a phosphor”), Figs. 5, 7; Ex. 1005 ¶¶ 5 (describing a “conventional design
`
`in which any color lights are emitted by two kinds of phosphors”), 7, 10–11,
`
`71 (describing “phosphors 6 for performing wavelength conversion on the
`
`light emitted”), 84, 87–94, Figs. 1–3, 8, 9). Petitioner also argues, among
`
`other things, that a person of ordinary skill would have been motivated and
`
`found it routine and straightforward to use two or more kinds of phosphors
`
`as taught in Mori with Loh’s teachings to yield the claimed invention. Pet.
`
`45–47.
`
`Patent Owner states that Petitioner’s citations of Mori do not address
`
`the limitations discussed above with respect to claim 1, but the Preliminary
`
`Response does not otherwise substantively address Petitioner’s citations and
`
`arguments regarding Mori and claim 10. Prelim. Resp. 21 (“Petitioner
`
`relies on Mori only for the disclosure of the use of two kinds of phosphors in
`
`a sealing member”). At this stage of the proceeding, we have not made a
`
`final determination with respect to the patentability of claims 2 and 19 or the
`
`16
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`IPR2018-00437
`Patent 9,537,071 B2
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`construction of any claim term. However, based on our review of the
`
`parties’ positions, the evidence of record, and our discussion of claim 1
`
`above, we determine that the information presented in the Petition
`
`establishes that there is a reasonable likelihood that Petitioner would prevail
`
`in challenging claims 2 and 19.
`
`E. Claims 5–7 and 21–23
`
`Claim 5 depends from claim 1 and claim 21 depends from claim 16,
`
`with each claim further reciting “wherein the metal part includes a base
`
`portion and a metal layer disposed on each of an upper surface and a lower
`
`surface of the base portion, the metal layers being made of a material that is
`
`different from that of the base portion.” Claims 6 and 7 depend from claim
`
`5, and claims 22 and 23 depend from claim 21, with each claim further
`
`reciting limitations of the claimed metal part and resin part. In addition to
`
`the Petition’s analysis of claim 1 (and claim 16), the Petition includes a
`
`claim-by-claim, element-by-element comparison of Loh and Wang, and
`
`“alternatively,” Loh, Wang, and Oshio to dependent claims 5–7 and 21–23,
`
`citing Wang’s and Oshio’s disclosures of electroplating a lead frame and the
`
`Declaration of Dr. Stanley R. Shanfield in support. Pet. 47–66 (citing, e.g.,
`
`Ex. 1003 ¶¶ 122–129; Ex. 1006 ¶¶ 40, 41 (describing “electroplating a layer
`
`of metal on each . . . outer surface of the lead frames”), 54; Ex. 1007 ¶ 69
`
`(describing coating leads with different metals and metal alloys, including
`
`copper, silver, nickel, palladium, and gold).
`
`Patent Owner states that Petitioner’s citations of Wang and Oshio do
`
`not address the limitations discussed above with respect to claim 1, but the
`
`Preliminary Response does not otherwise substantively address Petitioner’s
`
`citations and arguments regarding Wang, Oshio, and claims 5–7 and 21–23.
`
`17
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`IPR2018-00437
`Patent 9,537,071 B2
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`Prelim. Resp. 22–23 (stating that Petitioner relies on Wang as allegedly
`
`teaching electroplating the entire lead frame and Oshio as allegedly teaching
`
`using a metal plating that is different than the base metal and plating all
`
`surfaces of the metal lead except an outer lateral surface). At this stage of
`
`the proceeding, we have not made a final determination with respect to the
`
`patentability of claims 5–7 and 21–23 or the construction of any claim term.
`
`However, based on our review of the parties’ positions, the evidence of
`
`record, and our discussion of claim 1 above, we determine that the
`
`information presented in the Petition establishes that there is a reasonable
`
`likelihood that Petitioner would prevail in challenging claim 5–7 and 21–23.
`
`In summary, for the foregoing reasons, we determine that the
`
`information presented in the Petition establishes that there is a reasonable
`
`likelihood that Petitioner would prevail in challenging at least one of claims
`
`1, 2, 4–9, 11, 12, 15–19, 21–23, and 25 of the ’071 patent.
`
`
`
`IV. CONCLUSION
`
`We have determined that Petitioner has shown a reasonable likelihood
`
`of success. We have addressed all issues raised by the parties in the pre-trial
`
`briefing. We have made no findings of fact under the preponderance of the
`
`evidence standard.
`
`V. ORDER
`
`In view of the foregoing, it is hereby:
`
`ORDERED that an inter partes review of claims 1, 2, 4–9, 11, 12, 15–
`
`19, 21–23, and 25 of the ’071 patent is instituted with respect to all grounds
`
`set forth in the Petition; and
`
`18
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`IPR2018-00437
`Patent 9,537,071 B2
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`
`FURTHER ORDERED that commencing on the entry date of this
`
`Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is
`
`hereby given of the institution of a trial.
`
`
`
`PETITIONER:
`
`Gabrielle E. Higgins
`Gabrielle.higgins@ropesgray.com
`
`Kathryn N. Hong
`Kathryn.hong@ropesgray.com
`
`
`PATENT OWNER:
`
`Martin Zoltick
`mzoltick@rfem.com
`
`Michael Jones
`mjones@rfem.com
`
`Mark Rawls
`mrawls@rfem.com
`
`
`19
`
`
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