`
` Date filed: September 18, 2018
`
`Filed on behalf of: Nichia Corporation Paper ____
`
`
`
`
`By: Martin M. Zoltick, Lead Counsel
`
`Robert P. Parker, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`Michael H. Jones, Back-up Counsel
`
`Mark T. Rawls, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: mzoltick@rfem.com
`
` rparker@rfem.com
`
` ddahlgren@rfem.com
`
` mjones@rfem.com
`
` mrawls@rfem.com
`
`
`
`
`
`
`
`
`
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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 RESPONSE
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF CONTENTS ........................................................................................... i
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`EXHIBIT LIST .......................................................................................................... v
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`THE ’071 PATENT ......................................................................................... 1
`
`A. Overview ............................................................................................... 1
`
`B.
`
`C.
`
`The ’071 Patent Claims ......................................................................... 2
`
`Prosecution History of the ’071 Patent ................................................. 4
`
`III.
`
`INSTITUTION DECISION ............................................................................ 4
`
`A.
`
`Instituted Grounds ................................................................................. 4
`
`B.
`
`Person of Ordinary Skill in the Art ....................................................... 5
`
`IV. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`B.
`
`Each of the Terms “Resin Package,” “Resin Part,” and “Metal
`Part” (Leads) is Expressly Defined in the Specification ....................... 7
`
`The Term “a Resin Package Comprising a Resin Part and a
`Metal Part” is also Implicitly Defined in the Specification
`Through Its Use ...................................................................................10
`
`V.
`
`SUMMARY OF RELIED-UPON REFERENCES .......................................15
`
`A.
`
`Loh (Ex. 1004) ....................................................................................15
`
`B. Mori (Ex. 1005) ...................................................................................16
`
`C. Wang (Ex. 1006) .................................................................................16
`
`D. Oshio (Ex. 1007) .................................................................................16
`
`VI. THE CHALLENGED CLAIMS OF THE ’071 PATENT ARE NOT
`UNPATENTABLE ........................................................................................16
`
`i
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`A.
`
`B.
`
`The Independent Claims Are Not Anticipated by Loh (Ground
`1) ..........................................................................................................17
`
`The Independent Claims Would Not Have Been Obvious in
`view of Loh (Ground 2) ......................................................................18
`
`VII. CONCLUSION ..............................................................................................20
`
`
`
`
`
`
`
`ii
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`TABLE OF AUTHORITIES
`
`Cases
`
`AVX Corp. v. Greatbatch, Ltd.,
`IPR2014-00697, Paper 57 (Oct. 21, 2015) ............................................................. 5
`
`Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc.,
`262 F.3d 1258 (Fed. Cir. 2001) ............................................................................10
`
`Douglas Dynamics, L.L.C. v. Meyer Prods. LLC,
`2017 Pat. App. LEXIS 12979 (P.T.A.B. March 1, 2017).....................................12
`
`Edward Lifescienes LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) ............................................................................12
`
`Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016) ..................................................................... 12, 15
`
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ..................................................................... 11, 12
`
`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) .............................................................................. 5
`
`Irdeto Access, Inc. v. Echostar Satellite Corp.,
`383 F.3d 1295 (Fed. Cir. 2004) ............................................................................11
`
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 398 (2007) ..............................................................................................19
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009) .............................................................................. 9
`
`Nestle USA, Inc. v. Steuben Foods, Inc.
`686 F. Appx. 917 (Fed. Cir. 2017).......................................................................... 8
`
`Nichia Corp. v. Everlight Americas, Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) ........................................................................6, 12
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 9
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ............................................................................10
`
`Sinorgchem Co. v. ITC,
`511 F.3d 1132 (Fed. Cir. 2007) .............................................................................. 8
`
`iii
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013) .............................................................................. 8
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ............................................................................11
`
`Other Authorities
`
`37 C.F.R. § 42.120(a) ................................................................................................. 1
`
`MPEP 2111.01 § IV ................................................................................................... 9
`
`
`
`
`
`
`
`iv
`
`

`

`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).
`
`v
`
`

`

`Exhibit
`
`2010
`
`Case IPR2018-00437
`Patent 9,537,071
`
`Description
`
`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).
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`EXHIBIT NUMBER NOT BEING USED
`
`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)].
`
`vi
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`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.120(a), Patent Owner, Nichia Corporation
`
`(“Nichia” or “Patent Owner”), submits this 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”). Patent Owner
`
`respectfully requests that the Board find that all challenged claims are patentable.
`
`All of the Challenged Claims require “a resin package comprising a resin
`
`part and a metal part.” This term is defined – both expressly and through its
`
`consistent use – as referring to a resin package, a resin part, and a metal part
`
`(leads) of “a singulated light emitting device.” See Ex. 1001 at 3:33-36; see also
`
`Section IV. Loh does not disclose a singulated light emitting device and Petitioner
`
`does not assert that any of the other art of record cures this deficiency. See Section
`
`VI; see also Ex. 2008, ¶¶ 70-77 (Declaration of Dr. E. Fred Schubert (the
`
`“Schubert Decl.”)). The Challenged Claims are patentable for at least this reason.
`
`II. THE ’071 PATENT
`
`A. Overview
`
`
`
`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. Schubert Decl., ¶¶ 21-25; Ex. 1001, 3:25-30 (“In view of the
`
`1
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`

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`Patent 9,537,071
`
`above problems, an object of the present invention is to provide a simple and low-
`
`cost method for manufacturing, in a short time, multiple light emitting devices
`
`which has high adhesion between a lead frame and a thermosetting resin
`
`composition.”). Not only is the disclosed method more efficient, but the resultant
`
`devices do not suffer from delamination problems that existed at the time of the
`
`invention. See, e.g., Ex. 1001, 2:32-37, 3:51-55, 6:12-16, 16:42-45; Schubert
`
`Decl., ¶¶ 21-25, 38-48.
`
`B. The ’071 Patent Claims
`
`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
`
`wherein each of the first and second metal plates is substantially flat.
`
`2
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`*
`
`*
`
`*
`
`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,
`
`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,
`
`3
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`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`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, 20:29-21:3 (emphasis added).
`
`C. Prosecution History of the ’071 Patent
`
`The ’071 Patent was filed October 30, 2015, and issued January 3, 2017.
`
`The ’071 Patent is a continuation of application No. 13/969,182, filed August 16,
`
`2013, which is a continuation of application No. 12/737,940, filed as application
`
`No. PCT/JP2009/004170 on August 27, 2009, now U.S. Patent No. 8,530,250 (the
`
`“’250 Patent”). The ’071 Patent also claims the benefit of JP 2008-2254408, filed
`
`September 3, 2008. A Notice of Allowance was issued on October 13, 2016. Ex.
`
`1002, p. 234.
`
`III.
`
`INSTITUTION DECISION
`
`A. Instituted Grounds
`
`The Board instituted inter partes review of the Challenged Claims on
`
`Grounds 1-5, as summarized below:
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claim(s)
`
`Ground 1 Loh
`
`§ 102
`
`1, 4, 8-9, 11-12, 15-18, and 25
`
`4
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`

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`Case IPR2018-00437
`Patent 9,537,071
`
`Ground 2 Loh
`
`§ 103
`
`1, 4, 8-9, 11-12, 15-18, and 25
`
`Ground 3 Loh and Mori
`
`§ 103
`
`2 and 19
`
`Ground 4 Loh and Wang
`
`§ 103
`
`5-7 and 21-23
`
`Ground 5 Loh, Wang, and Oshio § 103
`
`5-7 and 21-23
`
`
`Institution Decision, pp. 7, 18. Thus, the only challenge to the independent claims
`
`is based on Loh alone.
`
`B. Person of Ordinary Skill in the Art
`
`The Institution Decision does not specifically define the level of skill and
`
`education of a Person of Skill in the Art (“POSITA”) at the time of the invention.
`
`Patent Owner does not challenge Petitioner’s definition for purposes of this
`
`proceeding. See Petition, p. 13.
`
`
`
`Patent Owner notes that Petitioner has opted for a lower level of skill than as
`
`set forth in the definition adopted by the district court in the Everlight case. “[I]n
`
`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
`
`5
`
`

`

`Case IPR2018-00437
`Patent 9,537,071
`
`there are a multitude of considerations ranging from heat, optical and electrical
`
`conduction and mechanical challenges, not to mention manufacturing issues.
`
`Nichia Corp. v. Everlight Americas, Inc., 855 F.3d 1328, 1332-33, 1337 (Fed. Cir.
`
`2017).
`
`In particular, the field of the invention relates to LED package design, where
`
`multiple design challenges must be addressed, including electrical, optical, heat
`
`conduction, adhesion, and mechanical challenges. See Nichia Corp., 855 F.3d at
`
`1332-33. These competing considerations can often be contradictory and can pull
`
`the design in different directions. Id. 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
`
`unpredictable results and because design considerations often pull in multiple
`
`directions.”); see also Schubert Decl., ¶¶ 27-33.
`
`IV. CLAIM CONSTRUCTION
`
`
`
`The term “a resin package comprising a resin part and a metal part,” which
`
`is in each of the independent claims, when properly construed, is neither disclosed
`
`6
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`Case IPR2018-00437
`Patent 9,537,071
`
`nor would have been suggested by the Loh reference. As Petitioner has made no
`
`obviousness arguments that would remedy this deficiency of Loh, adoption of
`
`Nichia’s proposed construction would mean that all Challenged Claims are
`
`patentable.
`
`
`
`In the ’071 Patent, the term “a resin package comprising a resin part and a
`
`metal part” is defined – both expressly and through its consistent use – as referring
`
`to a resin package, a resin part, and a metal part (leads) of “a singulated light
`
`emitting device.” Ex. 1001, 3:33-36. The patent’s use of a singulation process to
`
`form the claimed resin package addresses a need in the LED industry for cost
`
`efficient devices, which is identified as an object of the invention. See Ex. 1001,
`
`3:26-30 (“an object of the present invention is to provide a simple and low-cost
`
`method for manufacturing, in a short time, multiple light emitting devices which
`
`has high adhesion…”); Schubert Decl., ¶¶ 23, 38-48. Indeed, this object of the
`
`invention immediately precedes the definitional language, making clear the
`
`intended scope of this claim term.
`
`A. Each of the Terms “Resin Package,” “Resin Part,” and
`“Metal Part” (Leads) is Expressly Defined in the
`Specification
`
`
`
`The Detailed Description section of the ’071 Patent begins with a summary
`
`of problems solved by aspects of the invention, as well as a set of set of definitions
`
`for key terms used throughout the specification:
`
`7
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`
`
`In view of the above problems, an object of the present
`
`invention
`
`is
`
`to provide a simple and
`
`low-cost method for
`
`manufacturing, in a short time, multiple light emitting devices which
`
`has high adhesion between a lead frame and a thermosetting resin
`
`composition.
`
`
`
`The present invention is earnestly studied and as a result is
`
`finally completed.
`
`
`
`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.
`
`Ex. 1001, 3:26-36 (emphasis added). This lexicography should govern the scope
`
`of the term “a resin package comprising a resin part and a metal part.”
`
`
`
`“Although words in a claim are generally given their ordinary and customary
`
`meaning, a patentee may choose to be his own lexicographer . . . .” Nestle USA,
`
`Inc. v. Steuben Foods, Inc. 686 F. Appx. 917, 919 (Fed. Cir. 2017) (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); MPEP
`
`2111.01 § IV. The definitional language of the ’071 Patent is deliberate, having its
`
`own section at the start of the Detailed Description and stating unequivocally that
`
`the listed terms are used for singulated devices. See, e.g., Sinorgchem Co. v. ITC,
`
`511 F.3d 1132, 1137-38 (Fed. Cir. 2007); SkinMedica, Inc. v. Histogen Inc., 727
`
`F.3d 1187, 1195-96, 1199-1200 (Fed. Cir. 2013) (“the scope of the claim, ‘as
`
`expressed in the specification, is regarded as dispositive’”) (quoting Phillips v.
`
`8
`
`

`

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`
`AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)). The definition is
`
`unambiguous, requiring that such terms are “for a singulated light emitting
`
`device.” Id. Given the inventors’ clear intent, their explicit definition should not
`
`be disregarded. Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380
`
`(Fed. Cir. 2009) (“When a patentee explicitly defines a claim term in the patent
`
`specification, the patentee’s definition controls.”); Phillips, 415 F.3d at 1316
`
`(“[T]he specification may reveal a special definition given to a claim term by the
`
`patentee that differs from the meaning it would otherwise possess. In such cases,
`
`the inventor’s lexicography governs.”). One of skill in the art would have
`
`recognized the passage at 3:33-36 as a clear, deliberate definition of the term “resin
`
`package.” See Schubert Decl., ¶ 37 (“the language used is unequivocal”).
`
`
`
`Indeed, Dr. Shanfield (Petitioner’s expert) knew to use this language to
`
`understand the meaning of the term “resin package.” See Ex. 2009, 45:2-58:2.1
`
`Petitioner’s expert agreed as follows:
`
`Q: And you understand also that the ’250 patent specification and
`
`claims also uses the term “resin package.” Is that correct?
`
`A: Yes.
`
`
`1 Dr. Shanfield’s references to “Column 2, line 59 through 64” of U.S. Patent No.
`
`8,530,250 (the ’250 Patent) is the same definitional language found at 3:33-36 of
`
`the ’071 Patent. The ’250 Patent is the parent of the ’071 Patent.
`
`9
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`Patent 9,537,071
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`Q: Okay. And the resin package that’s referred to, you understand
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`that it’s referring to a singulated light-emitting device. Correct?
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`A: That is correct.
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`Ex. 2009, 44:16-45:1 (emphasis added). Should Dr. Shanfield now take a different
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`position, his initial understanding (before recognizing the implications for
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`Petitioner) should not be disregarded.
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`B. The Term “a Resin Package Comprising a Resin Part and a
`Metal Part” is also Implicitly Defined in the Specification
`Through Its Use
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`To the extent it is determined that the term “a resin package comprising a
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`resin part and a metal part” is not expressly defined by the above-identified
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`lexicography, the meaning of this term (i.e., that it is the resin package, the resin
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`part, and the metal part of “a singulated light emitting device”) is implicitly defined
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`through its consistent use in the specification. See, e.g., SciMed Life Sys., Inc. v.
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`Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001) (“[T]he
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`written description can provide guidance as to the meaning of the claims, thereby
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`dictating the manner in which the claims are to be construed, even if the guidance
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`is not provided in explicit definitional format.”); Bell Atl. Network Servs., Inc. v.
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`Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1268-71 (Fed. Cir. 2001) (“[A] claim
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`term may be clearly redefined without an explicit statement of redefinition....”)
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`(citations omitted) (internal quotation marks omitted). The terms “resin package,”
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`“resin part,” and “metal part” refer to a singulated light emitting device every time
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`they are used the ’071 Patent. Schubert Decl., ¶ 41 (“references to singulation
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`abound and permeate the disclosure”).2
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`
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`The Federal Circuit has made clear that “[e]ven when guidance is not
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`provided in explicit definitional format, the specification may define claim terms
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`by implication such that the meaning may be found in or ascertained by a reading
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`of the patent documents.” In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1150
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`(Fed. Cir. 2012) (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d
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`1295, 1300 (Fed. Cir. 2004)) (reversing PTO’s determination that an “explicit
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`disclaimer” was required to narrow claim term). This is the case where a patent
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`“repeatedly, consistently, and exclusively” describes a term in the same way, such
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`that it gives rise to an implicit definition. See id., see also Trs. of Columbia Univ.
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`v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“case law does not
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`require explicit redefinition or disavowal”); Eon Corp. IP Holdings LLC v. Silver
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`2 The ’071 Patent describes six embodiments and an example. Ex. 1001, 6:25-
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`13:41 (“First Embodiment”), 13:42-14:48 (“Second Embodiment”), 14:50-16:13
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`(“Third Embodiment”), 16:14-16:51 (“Fourth Embodiment”), 16:52-17:23 (“Fifth
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`Embodiment”), 17:24-17:59 (“Sixth Embodiment”), and 17:60-19:15 (“Example”).
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`Each describes a singulated light emitting device. Schubert Decl., ¶¶ 42-48
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`(explaining embodiments).
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`Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016) (“A party is … ‘not
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`entitled to a claim construction divorced from the context of the written description
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`and prosecution history.’ Ordinary meaning is not something that is determined ‘in
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`a vacuum.’ To the contrary, ‘a word describing patented technology takes its
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`definition from the context in which it was used by the inventor.’”). Every
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`embodiment of the ’071 Patent describes a device singulated from a lead frame
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`molded with multiple, pre-singulation devices. See, e.g., Ex. 1001, FIGs. 1, 3, and
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`5-13; Edward Lifescienes LLC v. Cook Inc., 582 F.3d 1322, 1329-30 (Fed. Cir.
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`2009); Schubert Decl., ¶¶ 42-48. There are no non-singulated resin packages
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`described with respect to the inventions of the ’071 Patent. See id.
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`
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`This principle has been applied by the Patent Office in post-grant
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`proceedings, including IPR. See, e.g., Douglas Dynamics, L.L.C. v. Meyer Prods.
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`LLC, 2017 Pat. App. LEXIS 12979 (P.T.A.B. March 1, 2017) (IPR); In re Abbott
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`Diabetes Care, Inc., 696 F.3d at 1143 (ex parte reexamination).
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`
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`Moreover, the patent’s references to a singulated light emitting device are
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`not trivial. The ʼ071 Patent addresses issues with singulated devices such as
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`adhesion after singulation, see, e.g., Ex. 1001, 2:32-37, and provides significant
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`improvements over existing LED technology. See, e.g., Nichia Corp., 855 F.3d at
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`1332-33, 1336-37; Ex. 1001, 3:26-30; Schubert Decl., ¶¶ 38-40. Indeed, an object
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`of the invention is “manufacturing, in a short time, multiple light emitting
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`devices.” Ex. 1001, 3:28-29 (emphasis added).
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`Specifically, the ’071 Patent provides a process where, rather than
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`individually molding and trimming a single LED (e.g., as in Loh), multiple devices
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`are formed together (e.g., in an array) and then cut to form a plurality of singulated
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`devices (i.e., “resin packages”). See, e.g., Ex. 1001, FIG. 5 (illustrating bulk-
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`formed LEDs according to an embodiment):
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`
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`
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`See also Ex. 1001, 3:33-36, 13:25-27 (“The resin-molded body 24 in which a
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`plurality of concave parts 27 are formed is cut in the longitudinal direction and
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`lateral direction….”); Schubert Decl., ¶¶ 23-24, 38-48. The following illustration
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`(based on FIG. 5) shows an example of a “singulation” process in the patent:
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`(cutting)
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` Schubert Decl., ¶ 24.
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`
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`As stated by Dr. Schubert:
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`the patent explains that “[i]t is not necessary to apply plating
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`processing per singulated light emitting device and it is possible to
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`simplify a manufacturing method.” The patent repeatedly discusses
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`that manufacturing multiple light emitting devices quickly and
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`efficiently is a stated goal. The stated benefit of making many devices
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`at once—such as, in some embodiments, by cutting a resin-molded
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`body (a contiguous, molded array comprising a plurality of pre-
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`singulation devices)—is consistent with the proposed construction of
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`“a resin package comprising a resin part and a metal part” as being
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`limited to a singulated (or post-singulation) device.
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`Schubert Decl., ¶ 38 (internal citations omitted).
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`In sum, the ’071 Patent discloses a method for manufacturing large numbers
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`of LED packages quickly and efficiently, while preserving the structural and
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`mechanical integrity of the individual LED packages upon singulation into
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`separate packages. See, e.g., Ex. 1001, 3:26-6:25; 5:24-26 (“it is possible to
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`manufacture multiple light emitting devices at one time and greatly improve
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`productive efficiency”). If not interpreted as the resin package of “a singulated
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`light emitting device,” the meaning of the term “resin package,” and the terms
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`“metal part” and “resin part,” would be untethered to the specification. See, e.g.,
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`Eon Corp., 815 F.3d at 1320-21; Schubert Decl., ¶¶ 39-48.
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`V. SUMMARY OF RELIED-UPON REFERENCES
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`A. Loh (Ex. 1004)
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`The device described in Loh is fundamentally different than the device
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`recited by the Challenged Claims, both in terms of its modular processing as well
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`as its use of resin.
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`Whereas the ʼ071 Patent claims singulated light emitting devices, Loh
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`discloses only individually manufactured LEDs. Ex. 1004, Abstract, ¶ [0007]
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`(referring to a “modular package” for a light emitting device). Loh is completely
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`silent regarding singulation. The differences in the designs are deliberate. In Loh,
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`the concern is how to get heat away from the device using a heat sink. Ex. 1004, ¶
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`[0063]; Schubert Decl., ¶ 64. In contrast, the ʼ071 Patent claims novel, non-
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`obvious singulated light emitting devices that allow for significant manufacturing
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`volumes, efficiently, at low cost and without sacrificing adhesion between the resin
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`and metal parts.
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`B. Mori (Ex. 1005)
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`Petitioner relies on Mori for its purported disclosure of the use of two kinds
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`of phosphors in a sealing member. Petition, pp. 17-18 and 43-45. Petitioner does
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`not argue that Mori remedies any deficiency of Loh with respect to the independent
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`claims. See id.; Institution Decision, p. 7.
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`C. Wang (Ex. 1006)
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`
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`Petitioner relies on Wang for its purported disclosures regarding plating.
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`Petition, pp. 19-21 and 47-66. Petitioner does not argue that Wang remedies any
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`deficiency of Loh with respect to the independent claims. See id.; Institution
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`Decision, p. 7.
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`D. Oshio (Ex. 1007)
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`
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`Petitioner also relies on Oshio for its purported disclosures regarding plating.
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`Petition,