Date filed: September 18, 2018
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`Filed on behalf of: Nichia Corporation Paper ____
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`By: Martin M. Zoltick, Lead Counsel
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`Robert P. Parker, Back-up Counsel
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`Derek F. Dahlgren, Back-up Counsel
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`Michael H. Jones, Back-up Counsel
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`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
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` rparker@rfem.com
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` ddahlgren@rfem.com
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` mjones@rfem.com
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` 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 CONTINGENT MOTION TO AMEND CLAIMS
`
`

`

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`
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`TABLE OF CONTENTS
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`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF AUTHORITIES ................................................................................... iv
`
`EXHIBIT LIST .......................................................................................................... v
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`
`III. THE SUBSTITUTE CLAIMS SATISFY 37 C.F.R. § 42.121 ....................... 1
`
`A.
`
`The Number of Substitute Claims is Reasonable .................................. 1
`
`B.
`
`C.
`
`The Substitute Claims Do Not Enlarge the Scope of the Claims ......... 1
`
`The Substitute Claims are Supported in the Foreign Priority
`Application and the Original U.S. Non-provisional Application ......... 2
`
`1.
`
`Independent Claim 27 ................................................................. 3
`
`(1)
`
`(2)
`
`(3)
`
`“a resin package consisting of a resin part and first and
`second metal leads, the resin part including a
`thermosetting resin” .......................................................... 5
`
`“the first metal lead is exposed at three outer lateral
`surfaces of the resin package” .......................................... 5
`
`“at a first [second] of the four outer lateral surfaces of the
`resin package, the resin part is located at left and right
`sides of an exposed surface of the first [second] metal
`lead” .................................................................................. 6
`
`2.
`
`Independent Claim 28 ................................................................. 7
`
`(1)
`
`“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”
` .......................................................................................... 8
`
`(2)
`
`“at a first [second] of the four outer lateral surfaces of the
`resin package, portions of the outer lateral surface of the
`
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`Case IPR2018-00437
`Patent 9,537,071
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`resin part are located above and at left and right sides of
`an exposed surface of the first [second] metal plate” ....... 8
`
`(3)
`
`“the portions of the outer lateral surface of the resin part
`that are located above and at left and right sides of the
`exposed outer lateral surface of the first [second] metal
`plate are integrally formed and are coplanar with the
`exposed outer lateral surface of the first [second] metal
`plate” ................................................................................. 9
`
`3.
`
`Dependent Claims 29-34 ...........................................................10
`
`D.
`
`The Substitute Claims are Responsive to One or More Grounds
`of Unpatentability Involved in this Proceeding .................................. 12
`
`1.
`
`Person of Ordinary Skill in the Art ...........................................12
`
`(1) Claim Construction .........................................................13
`
`(2) Alleged Prior Art References .........................................13
`
`(3) Grounds in the Petition ...................................................13
`
`IV. The Claims are Patentable Over the Grounds in this IPR .............................13
`
`A. None of Petitioner’s Grounds Teach or Suggest the Additional
`Limitations Recited in Claims 27 and 28 ............................................ 14
`
`1.
`
`Substitute Claim 27 ...................................................................14
`
`(1)
`
`(2)
`
`(3)
`
`Loh does not disclose a resin package consisting of a
`resin part and first and second metal leads .....................15
`
`Loh does not disclose a first lead exposed on three outer
`lateral surfaces of the resin package ...............................16
`
`The secondary references do not cure the deficiencies of
`Loh ..................................................................................17
`
`2.
`
`Substitute Claim 28 ...................................................................17
`
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`(1)
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`(2)
`
`(3)
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`Case IPR2018-00437
`Patent 9,537,071
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`Loh does not disclose a package with a metal part
`consisting of first and second metal plates .....................18
`
`Loh does not disclose a device in which portions of the
`outer lateral surface of the resin part are located above
`and to the left and right of the respective metal plates. ..18
`
`Loh does not disclose portions of the outer lateral surface
`of the resin part located above and to left and right of a
`respective metal plate being formed integrally and being
`coplanar with the respective metal plate. .......................20
`
`(4)
`
`The secondary references do not cure the deficiencies of
`Loh ..................................................................................21
`
`B.
`
`Substitute Dependent Claims 30 and 31 ............................................. 22
`
`V.
`
`CONCLUSION ..............................................................................................24
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`iii
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`Other Authorities
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`Case IPR2018-00437
`Patent 9,537,071
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`TABLE OF AUTHORITIES
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`37 C.F.R. § 42.121 ..................................................................................................... 1
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`37 C.F.R. § 42.121(a)(3) ............................................................................................ 1
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`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`Case IPR2018-00437
`Patent 9,537,071
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`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).
`
`Declaration of Dr. E. Fred Schubert In Support of Patent Owner’s
`Response, dated September 18, 2018.
`
`Transcript of Stanley R. Shanfield, Ph.D. Deposition, dated May
`21, 2018, taken in IPR2017-01608, IPR2017-01623, IPR2018-
`00893, IPR2017-02011, IPR2017-02014 (Ex. 2710 in IPR2017-
`01608 and IPR2017-01623).
`
`
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`v
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`
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`Exhibit
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`Case IPR2018-00437
`Patent 9,537,071
`
`
`
`
`
`Description
`
`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
`
`2023
`
`2024
`
`E. Chen, “III. Wet and Dry Etching,” Harvard University Center
`for Imaging and Mesoscale Structures (2004) (retrieved from
`https://www.mrsec.harvard.edu/education/ap298r2004/Erli%20che
`n%20Fabrication%20III%20-%20Etching.pdf).
`
`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`EXHIBIT NUMBER NOT BEING USED
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`Declaration of Dr. E. Fred Schubert in Support of Patent Owner’s
`Contingent Motion to Amend, dated September 18, 2018.
`
`Claims Appendix for Patent Owner’s Contingent Motion to
`Amend.
`
`Japanese Patent Publication No. JP 2008-225408.
`
`Certified Translation of Japanese Patent Publication No. JP 2008-
`225408.
`
`U.S. Patent Application Serial No. 12/737,940, filed on March 2,
`2011.
`
`Exhibit B to Complaint for Patent Infringement, Nichia Corp. v.
`Vizio, Inc., Case No. 2:16-cv-00246, Dkt. 1-2 (E.D. Tex. Mar. 21,
`2016 ) [Copy of Memorandum Opinion and Order, Nichia Corp. v.
`Everlight Elecs. Co., Case No. 2:13-cv-00702-JGR, Dkt. 193 (E.D.
`Tex. Jan. 26, 2016)].
`
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`vi
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`I.
`
`INTRODUCTION
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`
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`
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`Case IPR2018-00437
`Patent 9,537,071
`
`Nichia Corporation (“Nichia”), submits this Contingent Motion to Amend
`
`Claims. If claims 15 and/or 16 of U.S. Patent No. 9,537,071 (the “ʼ071 patent”)
`
`(Ex. 1001) are found unpatentable, substitute claims 27-34 should be entered. The
`
`substitute claims satisfy 37 C.F.R. § 42.121. Namely, the number of substitute
`
`claims is reasonable, each is responsive to the asserted grounds and is adequately
`
`supported, and no amendments enlarge the claims’ scope or add new matter.
`
`II.
`
`STATEMENT OF RELIEF REQUESTED
`
`This motion is not applicable to any original claims found patentable. But if
`
`the Board finds claims 15 and/or 16 unpatentable, Nichia respectfully requests that
`
`the Board grant this motion for the respective substitute claim 27 and/or 28. If the
`
`Board finds claim 16 unpatentable, Nichia also requests claims 29-34 be entered.
`
`III. THE SUBSTITUTE CLAIMS SATISFY 37 C.F.R. §§§§ 42.121
`
`A. The Number of Substitute Claims is Reasonable
`
`Substitute claims 27-34 correspond to claims 15-19 and 21-23. This fits the
`
`“presumption . . . that only one substitute claim would be needed to replace each
`
`challenged claim.” See 37 C.F.R. § 42.121(a)(3).
`
`B.
`
`The Substitute Claims Do Not Enlarge the Scope of the Claims
`
`Annotated versions of claims 27 and 28 are provided in the Claims
`
`Appendix showing the changes to claims 15 and 16, respectively. See Ex. 2020;
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`1
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`Patent 9,537,071
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`See also Ex. 2019, ¶¶28-29. As seen in the appendix, claims 27 and 28 do not
`
`enlarge the scope of the original claims. Instead, the amendments narrow the
`
`claims. See generally Ex. 2019, Section VI.
`
`Claim 27 narrows the device by requiring that the resin package consist of a
`
`resin part and first and second metal leads; and also requiring that the first metal
`
`lead is exposed at three outer lateral surfaces of the resin package. Other changes
`
`are made to be consistent with this, for grammatical purposes, or do not otherwise
`
`enlarge the scope of the claims.
`
`Claim 28 narrows the device by requiring that the metal part consists of first
`
`and second metal plates; and also requiring that portions of the resin parts are
`
`located above and at left and right sides of the respective exposed outer lateral
`
`surfaces of the first and second metal plates, and that these portions are integrally
`
`formed and coplanar with the exposed outer lateral surface of the respective metal
`
`plate. Other changes are made to be consistent with this, for grammatical purposes,
`
`or do not otherwise enlarge the scope of the claims.
`
`Claims 29-34 are narrower for at least the same reasons as claim 28.
`
`C. The Substitute Claims are Supported in the Foreign Priority
`Application and the Original U.S. Non-provisional Application
`
`The ʼ071 patent claims priority to U.S. App. No. 12/737,940 (the “ʼ940
`
`application”; Ex. 2023), and ultimately to JP2008-225408 (the “JP ʼ408
`
`application”; Ex. 2021). These two applications support the substitute claims.
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`2
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`Case IPR2018-00437
`Patent 9,537,071
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`
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`For this motion, Nichia identifies portions of the JP ʼ4081 and ʼ940
`
`applications providing §112 support for the substitute claims. As shown below, and
`
`in the declaration of Dr. Schubert, a POSITA would have understood the inventors
`
`to possess the subject matter of the substitute claims. Ex. 2019, Section X.
`
`1.
`
`Independent Claim 27
`
`Dr. Schubert explains that the JP ʼ408 and ʼ940 applications provide support
`
`for claim 27, at least through their disclosure of what is called the “fifth
`
`embodiment,” and corresponding descriptions of the “first embodiment” that are
`
`substantially the same in the fifth embodiment. Ex. 2019, ¶65.
`
`For example, Figures 2 and 12 (reproduced below), show a light emitting
`
`device (100) including a resin package (20, 420) that consists of a resin part (25,
`
`425) and first and second metal leads (22, 422). As shown, the resin package has
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`four outer lateral surfaces and a concave portion having a bottom surface. The
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`device further has a light emitting element (10, annotated red box), which is
`
`electrically connected by wires (50) to first and second metal leads (22, 422), and
`
`mounted on the bottom surface (27a) of the concave portion (27). See Ex. 2019,
`
`Section X(A); id. ¶¶66-76. This is also described by the applications. Id.
`
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`1 Citations are to the certified English translation included as Exhibit 2022.
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`Additionally, the perspective view above in Figure 12 shows that at least a
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`portion of an outer lateral surface of the resin part and at least a portion of an outer
`
`lateral surface of one or more of the first and second metal leads are coplanar. This
`
`coplanarity is satisfied on the four outer lateral surfaces, as apparent for example
`
`by symmetry, as well as from the disclosures of the priority applications. See Ex.
`
`2019, ¶¶77-78; see also Ex. 2022, ¶33; Ex. 2023, ¶33 (“resin part 25 and leads 22
`
`are formed in the substantially same plane in outer side surfaces 20b”). Also
`
`visible above, and described in the applications, is that the device includes a notch
`
`formed in one or more of the first and second metal leads at each of the four outer
`
`lateral surfaces; and all upper edges of the first and second metal leads are
`
`coplanar. See Ex. 2019, ¶¶81-82, 84.
`
`Specific limitations are discussed in more detail below. See generally Ex.
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`2019, Section X(A).
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`(1)
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`“a resin package consisting of a resin part and first and
`second metal leads, the resin part including a
`thermosetting resin”
`
`The JP ʼ408 application and ʼ940 application support this element. For
`
`example, the applications disclose “a light emitting device 100” that is subjected to
`
`“thermal curing” and has “a resin package 20 in which a resin part 25 and leads 22
`
`are formed,” as shown in the lead frame of Figure 3 below. Ex. 2019, ¶70-72; Ex.
`
`2022, ¶¶32-33; Ex. 2023, ¶¶32-33.
`
`
`A POSITA would have understood that when the lead frame 21 and resin
`
`body 24 are cut along notch parts 21a during singulation, the resulting devices
`
`would have two leads (and only two leads), as shown in blue and gray above. Ex.
`
`2019, ¶70. The applications further disclose that the resin part includes a
`
`thermosetting resin. Ex. 2019, ¶72; Ex. 2022, ¶46; Ex. 2023, ¶46.
`
`(2)
`
`“the first metal lead is exposed at three outer lateral
`surfaces of the resin package”
`
`The applications also support this element. Dr. Schubert has provided the
`
`following annotated version of Figure 12, which shows the first metal lead exposed
`
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`at three outer lateral surfaces of the resin package (two of the surfaces are visible,
`
`the third surface is apparent from symmetry of the device):
`
`Exposed
`surfaces of the
`first metal lead
`
`A POSITA would have understood, based on Figure 12, and the rest of the
`
`disclosure, that the first lead is exposed at three outer lateral surfaces. Ex. 2019,
`
`
`
`¶¶79-80.
`
`(3)
`
`“at a first [second] of the four outer lateral surfaces of
`the resin package, the resin part is located at left and
`right sides of an exposed surface of the first [second]
`metal lead”
`
`The applications also support this element. As shown in the annotated
`
`version of Figure 12 below, the resin part is located at left (green) and right sides
`
`(yellow) of an exposed surface of the first metal plate (blue):
`
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`A POSITA would have understood, consistent with the applications and based on
`
`symmetry, that the front side is substantially the same as the rear of the device that
`
`is not shown. Ex. 2019, ¶83. Thus, on both of these sides, the resin part is located
`
`to the left and right of the respective exposed surface of the first and second metal
`
`leads. Id.
`
`2.
`
`Independent Claim 28
`
`Dr. Schubert explains that the JP ʼ408 and ʼ940 applications provide support
`
`for claim 28, at least through their disclosure of what is called the “fifth
`
`embodiment,” and corresponding descriptions of the “first embodiment” that are
`
`substantially the same in the fifth embodiment. Ex. 2019, ¶86. Furthermore,
`
`because the fifth embodiment was also used to show support for claim 27,
`
`elements between the claims that are the same or substantially similar also find
`
`support in the fifth embodiment for the same reasons. Ex. 2019, ¶87.
`
`As explained above, for example from Figures 2 and 12 and the
`
`corresponding descriptions of the same, the applications disclose a light emitting
`
`device having a resin package including a resin part and a metal part comprising
`
`first and second metal plates. The resin package has four outer lateral surfaces and
`
`a concave portion having a bottom surface in which a light emitting element is
`
`mounted. The light emitting element is electrically connected by wires to the
`
`metal part. Also, at least a portion of an outer lateral surface of the resin part and
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`at least a portion of an outer lateral surface of the metal part are coplanar at each of
`
`the four outer lateral surfaces, and a notch is formed in the metal part at each of the
`
`four outer lateral surfaces. Ex. 2019, Section X(B); id. ¶¶88-95, 98-103.
`
`The annotated version of Figure 2 above also shows that a lower surface of
`
`the metal part (20a) is exposed from the resin part (25, 425) in a region directly
`
`under the light emitting element (10). Ex. 2019, ¶¶106-107.
`
`Specific limitations are discussed in more detail below. See generally Ex.
`
`2019, Section X(B).
`
`(1)
`
`“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”
`
`The applications provide support for this element. For example, as seen in
`
`Figure 2, it is clear that the coplanarity of the resin part (25) and metal part (22)
`
`exists at an outer bottom surface of the resin package (20a). Ex. 2019, ¶¶96-97.
`
`(2)
`
`“at a first [second] of the four outer lateral surfaces of
`the resin package, portions of the outer lateral surface of
`the resin part are located above and at left and right
`sides of an exposed surface of the first [second] metal
`plate”
`
`The applications provide support for this element. With respect to “located
`
`… at left and right sides,” see above at Section III(C)(i)(3). The addition of
`
`“located above” is addressed here. The annotated version of Figure 12, reproduced
`
`below, shows this configuration.
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`A POSITA would have understood that the front side is substantially the same as
`
`the rear of the device that is not shown, due to symmetry and consistent with the
`
`rest of the disclosure. Ex. 2019, ¶¶104-105. On both of these sides, portions of the
`
`outer lateral surface of the resin part are located above (in red) as well as to the left
`
`(in green) and right (in yellow) of the respective exposed surfaces of the first and
`
`second metal plates (in blue). Ex. 2019, ¶¶104-105.
`
`(3)
`
`“the portions of the outer lateral surface of the resin part
`that are located above and at left and right sides of the
`exposed outer lateral surface of the first [second] metal
`plate are integrally formed and are coplanar with the
`exposed outer lateral surface of the first [second] metal
`plate”
`
`The two applications also support this element. The annotated Figure 12
`
`above shows that, on two sides, portions of the outer lateral surface of the resin
`
`part are located above (in red) as well as to the left (in green) and right (in yellow)
`
`of the respective are coplanar with the exposed outer lateral surface of the
`
`respective (first or second) metal plate. Ex. 2019, ¶¶108-109. The applications also
`
`recite that the lead frame may be integrally molded with the thermosetting resin.
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`Ex. 2019, ¶¶108-109; Ex. 2022, Figs. 4, ¶¶41, 51, 62-78, 104, 108; Ex. 2023, Figs.
`
`4, ¶¶41, 51, 62-78, 104, 108.
`
`3.
`
`Dependent Claims 29-34
`
`Claim 29 recites a resin part made using a thermosetting resin. A POSITA
`
`would have understood the applications to disclose this limitation for the reasons
`
`set forth in Section III(c)(i)(1). Ex. 2019, ¶¶110-11.
`
`Similarly, a POSITA would have understood the applications to disclose the
`
`limitations of claim 30: a first metal plate having a first step portion that is exposed
`
`on the outer lateral surface of the first metal plate on a first side of the resin
`
`package and a second metal plate having a second step portion that is exposed on
`
`the outer lateral surface of the second metal plate on a second side of the resin
`
`package. These limitations are illustrated in the annotated Figure 12 below:
`
`Step portion that is exposed on the outer lateral surface
`of the first metal plate
`
`
`A POSITA would have understood that the front side is substantially the same at
`
`the rear of the device that is not shown, based on symmetry and consistent with the
`
`rest of the disclosure. Ex. 2019, ¶112. Thus, a POSITA would have understood the
`
`first and second metal plates to have a respective step portion (shown in blue) on
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`the outer lateral surface of the respective metal part on first and second sides of the
`
`resin package. Id.
`
`Substitute claim 31 is also supported. First, a POSITA would have
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`understood that the sealing member may contain two or more kinds of phosphors.
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`Ex. 2019, ¶¶113-114; see also Ex. 2022, ¶61; Ex. 2023, ¶61 (“[b]y using one kind
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`alone or two or more kinds in combination, these phosphors can realize blue,
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`green, yellow and red”). Second, a POSITA would have understood the
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`applications to disclose first and second metal plates each including a etched
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`concave portion on an upper surface and on a lower surface of the respective metal
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`plate wherein the concave portions are curved. Ex. 2019, ¶¶115-119. Dr. Schubert
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`has explained that these etched curved concave portions result from the particular
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`etching disclosed in the applications (where concave-convex shapes are formed in
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`the cross-section of the notch parts), such as shown in Figure 11 (etched concave
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`portions identified in yellow and red). Id.
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`Claims 32-34 are also supported. Dr. Schubert has explained that the
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`applications disclose silver plating (e.g., electrolytic plating) of all surfaces of the
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`lead frame prior to molding, which would result in the metal part including a base
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`portion (copper-based lead frame) and a metal layer (silver plating) disposed on the
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`top and bottom surfaces, that this metal layer is disposed at all surfaces of the
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`metal part except an exposed outer lateral surface (due to cutting during
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`singulation), and that this results in the resin part disposed over a portion of the
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`plating on the upper surface, and another portion of the plating being exposed from
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`the resin part. Ex. 2019, ¶¶120-126.
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`D. The Substitute Claims are Responsive to One or More Grounds of
`Unpatentability Involved in this Proceeding
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`The substitute claims are responsive to the grounds in this IPR. Petitioner
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`has asserted that the alleged prior art discloses aspects of claims 15 and 16, which
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`this motion contingently seeks to amend with claims 27 and 28. Substitute claims
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`29 and 32-34 are amended to reflect their dependency and to track the language
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`used in claim 28, and to correct a typographical error in claim 32. They are
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`responsive to the grounds of unpatentability for the same reasons as claim 28.
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`Substitute claims 30 and 31 are also amended to further support their patentability.
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`1.
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`Person of Ordinary Skill in the Art
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`Nichia does not challenge Petitioner’s definition for purposes of this motion.
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`See also Ex. 2019, ¶¶36-42.
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`(1) Claim Construction
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`For purposes of this motion, the claim terms should be given their ordinary
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`and customary meaning as would have been understood by a POSITA in view of
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`the intrinsic record. Because the PTAB applies the BRI standard, Nichia does not
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`concede any particular construction under the Phillips standard.
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`(2) Alleged Prior Art References
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`The device described in Loh is fundamentally different than the device
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`recited by the contingent substitute claims. The other references relied on (Mori,
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`Wang, and Oshio), are relied on for narrow purposes, and these references do not
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`cure the deficiencies of Loh, and are not themselves suitable to be primary
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`references in an obviousness combination. Ex. 2019, Section XI(A), ¶¶127-133.
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`(3) Grounds in the Petition
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`There are five grounds in the IPR: (1) Claims 1, 4, 8-9, 11-12, 15-18, and 25
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`anticipated by Loh; (2) Claims 1, 4, 8-9, 11-12, 15-18, and 25 obvious over Loh;
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`(3) Claims 2 and 19 obvious over Loh and Mori; (4) Claims 5-7 and 21-23 obvious
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`over Loh and Wang; (5) Claims 5-7, 21-23 obvious over Loh and Wang and Oshio.
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`As set forth in more detail below, none render the substitute claims unpatentable.
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`IV. The Claims are Patentable Over the Grounds in this IPR
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`As noted above, the substitute claims add various limitations not found in
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`the alleged prior art references. For example, substitute claim 27 requires that (1) a
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`resin package consist of a resin part and first and second metal leads, the resin part
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`including a thermosetting resin; and (2) the first metal lead is exposed at three
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`outer lateral surfaces of the resin package. Claim 28 in turn requires that (1) a resin
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`package comprise a resin part and metal part, said metal part consisting of first and
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`second metal plates; (2) at respective first and second outer lateral surfaces of the
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`resin package, portions of an outer lateral surface of the resin part are located
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`above and at left and right sides of an exposed outer lateral surface of the
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`respective metal plate; and (3) portions of the resin parts located above and at left
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`and right sides of the respective exposed outer lateral surfaces of the first and
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`second metal plates are integrally formed and coplanar with the exposed outer
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`lateral surface of the respective metal plate.
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`A. None of Petitioner’s Grounds Teach or Suggest the Additional
`Limitations Recited in Claims 27 and 28
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`The grounds of unpatentability in this IPR are based on Loh, Mori, Wang
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`and Oshio. Claims 27 and 28 are addressed below in turn. Claims 15 and 16 were
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`only challenged based on Loh alone (under §§ 102 and 103); nevertheless, Nichia
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`addresses the other grounds with respect to claims 27 and 28.
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`1.
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`Substitute Claim 27
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`With respect to substitute claim 27, none of the references, alone or in
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`combination, teaches or suggests a light emitting device having (1) a resin package
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`consisting of a resin part and first and second metal leads, the resin part including
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`thermosetting resin; and (2) the first metal lead is exposed at three outer lateral
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`surfaces of the resin package. See Ex. 2019, Section XI(B)(1); id. ¶¶136-139, 141.
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`(1)
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`Loh does not disclose a resin package consisting of a
`resin part and first and second metal leads
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`Loh discloses a resin package having more than two metal leads. Indeed, Dr.
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`Shanfield admits that Loh “discloses that the metal part includes eight metal
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`plates,” and thus does not disclose this limitation. See, e.g., Ex. 1003 at ¶83; see
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`also Ex. 1004 at ¶75 (noting eight leads). Figs. 2A and 10C also disclose at least
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`eight separate leads extending from a thicker metal central portion, as opposed to
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`the two metal leads required by claim 27. Ex. 2019, Section XI(B)(1)(a)(1), ¶139.
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`Because “consisting of” excludes any element, step, or ingredient not specified in
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`the claim, the requirement that the resin package consists of a resin part and first
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`and second metal leads means that there cannot be more than two metal leads
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`belonging to the resin package. Accordingly, Loh does not disclose this element
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`and cannot anticipate the claim. Additionally, Loh provides no motivation to
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`reduce the number of leads from eight to two, and actually suggests that there are
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`reasons not to do so. Ex. 2019, ¶¶142-146. Moreover, modifying Loh in this way
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`would lead to a fundamental change in the Loh device, and a POSITA would not
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`have had any reasonable expectation of success based on the change. Id. For at
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`least this reason, claim 27 is patentable over Loh.
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`(2)
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`Loh does not disclose a first lead exposed on three outer
`lateral surfaces of the resin package
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`Loh also fails to teach or suggest this limitation. Ex. 2019, ¶140. As Figs.
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`2A and 10C illustrate, the resulting metal leads are exposed on only one outer
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`lateral surface of the resin package. Id. In Fig. 6, the metal leads are exposed on at
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`most two outer lateral surfaces of the resin package. Id. The annotated version of
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`Fig. 6 reproduced below illustrates this. Id.
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`No lead is exposed at three
`outer lateral surfaces
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`Exposed metal lead
`surfaces
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`Accordingly, Loh does not disclose this element and cannot anticipate the claim.
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`Additionally, Loh provides no motivation to modify any of the leads such that one
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`would be exposed at three outer lateral surfaces, and doing so would be impractical
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`with Loh’s lead frame design. Ex. 2019, ¶147. Moreover, modifying Loh in this
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`way would lead to a fundamental change in the Loh device, and a POSITA would
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`not have had any reasonable expectation of success based on the change. Id.
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`(3)
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`The secondary references do not cure the deficiencies of
`Loh
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`Mori, Wang and Oshio do not cure these deficiencies. These references are
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`relied on for narrow purposes (e.g., to show plating or use of two or more
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`phosphors), and they otherwise differ in material respects from claim 27 and
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`provide no indication as to how Loh would be modified to meet claim 27. Ex.
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`2019, Section XI(A); id. ¶¶148-150. Additionally, none of these secondary
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`references discloses a first metal lead that is exposed at three outer lateral surfaces,
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`and none provide any motivation for making such a change. Ex. 2019, Section
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`XI(B)(1)(c); id. ¶148-150.
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`In sum, because the references used in the grounds of this proceeding fail to
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`disclose or suggest these features, much less the specific combination of claim 27,
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`the claim is patentable over the grounds.
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`2.
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`Substitute Claim 28
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`With respect to substitute claim 28, none of the references, alone or in
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`combination, teach or suggest a light emitting device having (1) a resin package
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`including a metal part, said metal par