Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner
`____________
`
`Case No. 2018-00437
`Patent 9,537,071
`____________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND CLAIMS
`
`
`
`
`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`THE PROPOSED CLAIMS ARE INVALID UNDER §112 ......................... 1 
`A. 
`Proposed Claim 27 ................................................................................ 1 
`B. 
`Proposed Claim 28 ................................................................................ 7 
`C. 
`Proposed Claim 31 ................................................................................ 8 
`IMPROPER BROADENING UNDER 37 C.F.R. §42.121(A)(2)(II)............. 9 
`A. 
`Proposed Claim 27 ................................................................................ 9 
`B. 
`Proposed Claim 28 ................................................................................ 9 
`III.  THE PROPOSED CLAIMS ARE UNPATENTABLE UNDER §103 .......... 9 
`A. 
`Claim 27: Hsu + POSA (G1); Hsu + Urasaki (G2); Hsu +
`Koung and Urasaki (G3); Hsu + Lin and Urasaki (G10) .................... 10 
`Claim 28: Hsu + POSA (G1); Hsu + Koung (G4); Hsu + Lin
`(G11) .................................................................................................... 17 
`Claim 29: Hsu + POSA (G1); Hsu + Urasaki (G2); Hsu +
`Koung and Urasaki (G3); Hsu + Lin and Urasaki (G10) .................... 21 
`Claim 30: Hsu + Suenaga (G5); Hsu + Koung and Suenaga
`(G6); Hsu + Lin and Suenaga (G12) ................................................... 21 
`Claim 31: Hsu + Koung, Urasaki, Mori, and Glenn (G7); Hsu +
`Lin, Urasaki, and Glenn (G13) ............................................................ 22 
`Claim 32: Hsu + Wang and Oshio (G8); Hsu + Koung, Wang,
`and Oshio (G9); Hsu + Lin, Wang, and Oshio (G14) ......................... 23 
`Claim 33: Hsu + Wang and Oshio (G8); Hsu + Koung, Wang,
`and Oshio (G9); Hsu + Lin, Wang, and Oshio (G14) ......................... 24 
`Claim 34: Hsu + Koung, Wang, and Oshio (G9); Hsu + Lin,
`Wang, and Oshio (G14) ...................................................................... 24 
`IV.  CONCLUSION .............................................................................................. 25 
`
`
`
`D. 
`
`B. 
`
`C. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`i
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`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`AFG Indus., Inc. v. Cardinal IG Co.,
`239 F.3d 1239 (Fed. Cir. 2001) ............................................................................ 2
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ........................................................................ 6, 7
`Statutes
`35 U.S.C. §112 ................................................................................................... 1, 7, 8
`Other Authorities
`37 C.F.R. §42.121(A)(2)(II) ...................................................................................... 9
`
`
`
`ii
`
`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`GLOSSARY OF ABBREVIATIONS
`
`Shorthand
`Claims
`
`Description
`Claims 1, 2, 4-9, 11-12, 15-19, 21-23, and 25 of U.S. Patent
`9,537,071
`
`Proposed
`Claims
`
`Patent Owner’s Proposed Amended Claims 27-34
`
`IPR
`
`BRI
`
`Pet.
`
`DI
`
`PO
`
`Inter Partes Review
`
`Broadest Reasonable Interpretation
`
`IPR2018-00437, Paper 2, Petition For Inter Partes Review of U.S.
`Patent 9,537,071
`
`IPR2018-00437, Paper 17, Decision on Institution of Inter Partes
`Review
`
`Patent Owner
`
`POSA
`
`Person of Ordinary Skill in the Art
`
`POR
`
`IPR2018-00437, Paper 22, Patent Owner’s Response
`
`Mot./Motion
`
`IPR2018-00437, Paper 24, Patent Owner’s Contingent Motion to
`Amend Claims
`
`Pap.
`
`G#
`
`Hsu
`
`Koung
`
`Urasaki
`
`Paper
`
`Ground #
`
`U.S. Patent No. 6,770,498, issued August 3, 2004 (Ex. 1030)
`
`U.S. Patent Publication No. 2008/0261339, published October 23,
`2008 (Ex. 1008)
`
`Japanese Patent Publication No. 2007-235085, published
`September 13, 2007, with Certified English Translation
`(Ex. 1031)
`
`Kuramoto
`
`Japanese Patent Publication No. JP2006-156704, published June
`
`iii
`
`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`Shorthand
`
`Description
`15, 2006, with Certified English Translation (Ex. 1032)
`
`Mori
`
`U.S. Patent Publication No. 2005/0211991, published September
`2, 2005 (Ex. 1005)
`
`Suenaga
`
`Japanese Patent Publication No. JP2001-036154, published
`February 9, 2001, with Certified English Translation (Ex. 1033)
`
`Wang
`
`Oshio
`
`U.S. Patent Publication No. 2008/0073662, published March 27,
`2008 (Ex. 1006)
`
`U.S. Patent Publication No. 2005/0280017, published December
`22, 2005 (Ex. 1007)
`
`Glenn
`
`U.S. Patent No. 6,433,277, issued August 13, 2002 (Ex. 1034)
`
`Lin
`
`U.S. Patent Publication No. 2007/0126020, published June 7,
`2007 (Ex. 1010)
`
`Matoba
`
`Japanese Patent Publication No. H7-99345, published April 11,
`1995, with Certified English Translation (Ex. 1035)
`
`
`Note: All emphasis herein added unless otherwise stated.
`
`
`
`iv
`
`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`LIST OF EXHIBITS
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Description
`U.S. Patent No. 9,537,071
`U.S. Patent No. 9,537,071 File History
`Declaration of Dr. Stanley R. Shanfield
`U.S. Patent Publication No. 2008/0012036 (“Loh”)
`U.S. Patent Publication No. 2005/0211991 (“Mori”)
`U.S. Patent Publication No. 2008/0073662 (“Wang”)
`U.S. Patent Publication No. 2005/0280017 (“Oshio”)
`U.S. Patent Publication No. 2008/0261339 (“Koung”)
`Japanese Patent Publication No. JP2006-093697 (“Park ’697”)
`with Certified English Translation
`U.S. Patent Publication No. 2007/0126020 (“Lin”)
`PCT Patent Publication No. WO2007/055486 (“Park ’486”)
`Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-01453-JRG, D.I.152,
`Plaintiff Nichia Corporation’s P.R. 4-5(a) Opening Claim
`Construction Brief (E.D. Tex. Nov. 22, 2017)
`Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-01453-JRG, D.I.186,
`Defendants’ Responsive Claim Construction Brief (E.D. Tex.
`Dec. 13, 2017)
`Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-01453-JRG, D.I.211,
`Joint Claim Construction Chart P.R. 4-5(D) (E.D. Tex. Jan. 8,
`2018)
`Declaration of Mary Oros in Support of Petition for Inter Partes
`Review of U.S. Patent No. 9,537,071
`Conference Call Transcript in IPR2018-00437 dated November
`7, 2018
`Declaration of Dr. Stanley R. Shanfield in Support of
`Petitioner’s Reply and Opposition to Patent Owner’s Contingent
`Motion to Amend Claims
`Excerpts from the File History of U.S. Patent Application No.
`15/360,316 (U.S. Patent No. 10,115,870)
`Reserved
`
`v
`
`

`

`Exhibit
`Ex. 1020
`Ex. 1021
`Ex. 1022
`Ex. 1023
`Ex. 1024
`Ex. 1025
`Ex. 1026
`Ex. 1027
`Ex. 1028
`
`Ex. 1029
`Ex. 1030
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`Ex. 1034
`Ex. 1035
`
`Ex. 1036
`
`Ex. 1037
`
`Ex. 1038
`Ex. 1039
`
`Ex. 1040
`
`
`
`
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`Description
`U.S. Patent Publication No. 2005/0151149 (“Chia”)
`U.S. Patent Publication No. 2004/0126913 (“Loh ’913”)
`U.S. Patent Publication No. 2005/0269587 (“Loh ’587”)
`Reserved
`Reserved
`Reserved
`Reserved
`Reserved
`Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-246-JRG, (E.D. Tex.),
`Plaintiff Nichia Corporation’s Submissions Pursuant to Local
`Patent Rules 3-1 and 3-2, dated October 20, 2016
`U.S. Patent No. 10,115,870
`U.S. Patent No. 6,770,498 (“Hsu”)
`Japanese Patent Publication No. JP2007-235085 (“Urasaki”) with
`Certified English Translation
`Japanese Patent Publication No. JP2006-156704 (“Kuramoto”)
`with Certified English Translation
`Japanese Patent Publication No. JP2001-036154 (“Suenaga”)
`with Certified English Translation
`U.S. Patent No. 6,433,277 (“Glenn”)
`Japanese Patent Publication No. JPH7-99345 (“Matoba”) with
`Certified English Translation
`IPR2017-01623, Exhibit 2727; Hirofumi Ichikawa’s Laboratory
`Notebook (public version of IPR2017-01623, Exhibit 2350)
`IPR2017-01623, Exhibit 2748; Second Declaration of Daisuke
`Yagi
`IPR2017-01623, Exhibit 2407; Patent Drawings
`IEEE Standard Glossary of Computer Hardware Terminology,
`IEEE Std 610.10-1994, October 12, 1995
`Declaration of Drago N. Gregov
`
`vi
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`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`Patent Owner’s motion should be denied because proposed claims 27-34 are
`
`unsupported (§112, ¶1), improperly broadening (Rule 42.121), and obvious (§103).
`
`I.
`
`THE PROPOSED CLAIMS ARE INVALID UNDER §112
`The Proposed Claims (see Appendix) are improper under 35 U.S.C. §112, ¶1,
`
`because independent claims 27 and 28 lack written description support. Because this
`
`deficiency affects all proposed claims 27-34, it is dispositive. Ex. 1017 ¶¶39-85.
`
`A.
`Proposed Claim 27
`There is no written description support for the combination of elements [27.B]
`
`and [27.D] to [27.H]. Claim 27 recites in part “a resin package consisting of a resin
`
`part and first and second metal leads” [27.B]. There is nothing in PO’s various cited
`
`sections of the ’071 applications (JP2008-225408; U.S. App. No. 12/737,940)
`
`reflecting that the applicants possessed this claimed subject matter in combination
`
`with the other elements of the claim. Ex. 2021; Ex. 2022; Ex. 1017 ¶¶39-65.
`
`PO asserts 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.” Mot. 3. But, PO’s cited disclosures for the fifth
`
`embodiment, including Fig. 12, fail to provide a written description of claim 27
`
`because the resin package in that embodiment does not “consist” of “a resin part and
`
`first and second metal leads” as required by [27.B]. Instead, the resin package has a
`
`1
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`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`third separate metal structure, which is excluded by the claim.1 AFG Indus., Inc. v.
`
`Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (“‘[C]losed’ transition
`
`phrases such as ‘consisting of’ are understood to exclude any elements…not
`
`specified in the claim.”). Moreover, even if the requirement of [27.B] was ignored
`
`and any two of the metal structures of Fig. 12 were considered as the claimed “first
`
`and second metal leads,” the disclosures fail to provide written description support
`
`for the combination of [27.D], [27.E], [27.F], [27.G], and [27.H].
`
`With respect to [27.B], a POSA would have understood the resin package of
`
`Fig. 12 does not “consist” of only a resin part and two leads; it includes a third metal
`
`structure that is neither the first nor second lead. Fig. 12, annotated below, shows the
`
`metal of the resin package is divided into three separate structures—two metal leads
`
`in the middle front (light blue) and middle back (not shown) and a third central metal
`
`X structure (dark blue) with legs extending to each corner on which the light emitting
`
`element (white) is mounted and connected by wires to the two leads:
`
`
`1 PO’s amendment narrows “comprising…a metal part including first and second
`
`
`
`
`
`metal plates” to “consisting of…first and second metal leads.” Ex. 2020, 1.
`
`2
`
`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`Ex. 1001, Fig. 12. PO acknowledges the symmetry of the device, that is, the front
`
`side of Fig. 12 is “substantially the same at the rear of the device.” Mot. 6-10. Thus,
`
`Fig. 12 consists of three distinct metal structures, not two. Ex. 1017 ¶¶43-45, 50.
`
`This understanding is consistent with and confirmed by descriptions in the lab
`
`notebook of applicant Hirofumi Ichikawa. A comparison of Fig. 12 (left) and a
`
`notebook figure (right) shows the notebook depicts the same fifth embodiment:
`
`
`
`Ex. 1001, Fig. 12; Ex. 1036, 92; Ex. 1037 ¶6; Ex. 1017 ¶46. The notebook also
`
`provides a detailed view of the lead frame that corresponds to the fifth embodiment,
`
`which confirms there is a third distinct metal structure in the shape of an “X”:
`
`
`Ex. 1036, 92; see also Ex. 1038, 8; Ex. 1017 ¶47. The annotated series of images
`
`below (based on the left image above) shows how the lead frame is used to
`
`manufacture Fig.12, with three separate metal structures consistent with the figure:
`
`3
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`

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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`a front metal structure (light blue), a central metal “X” structure (dark blue), and a
`
`rear metal structure (light blue), partially covered by resin (green).
`
`
`And finally, a comparison of the lead frame containing an LED element (left) and
`
`Fig. 12 (right) illustrates the internal structure of the fifth embodiment:
`
`
`
`Thus, this confirms that, as shown, Fig. 12 actually has three metal structures—
`
`instead of the required two—and therefore does not support PO’s proposed claim
`
`amendments. PO’s labeling of two structures of Fig. 12 as “the first metal lead”
`
`(Mot. 6) is thus incorrect. Ex. 1017 ¶¶46-49.
`
`
`
`To the extent PO relies on the applications’ disclosure that “[i]n the outer side
`
`surface 420b of the resin package 420, the leads 422 are separated into six. The leads
`
`422 may be separated respectively, or jointed” (Ex. 2022 ¶99; Ex. 2023 ¶99), this
`
`language does not provide the written description to satisfy claim 27. Tellingly, PO
`
`did not cite this ambiguous statement as disclosure of element 27[B]. Ex. 2020, 8.
`
`4
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`

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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`Moreover, to the extent PO argues “jointed” means the leads are connected to the
`
`third metal structure forming the X, the device would be inoperable because the
`
`anode and cathode of the light emitting device would be connected (i.e., shorted) to
`
`each other. And because the applications disclose only that the leads may be jointed
`
`at the “outer side surface 420b” (instead of being separated into six), there would
`
`not be resin on left and right sides of the exposed lead—thus the device would fail
`
`to meet the requirements of [27.H]. Ex. 2022 ¶99; Ex. 2023 ¶99; Ex. 1017 ¶51.
`
`To the extent PO relies on two of the three metal structures of Fig. 12 as the
`
`claimed “first and second metal leads” to support [27.B], despite use of the closed-
`
`ended phrase “consisting,” there is no written description support for several other
`
`claim elements. First, if the front and rear metal structures (light blue) were the first
`
`and second leads, then Fig. 12 fails to satisfy at least [27.E] because the leads have
`
`no portion at two of the four outer lateral surfaces, [27.F] because neither of the leads
`
`is exposed at three outer lateral surfaces, and [27.G] because the notch on two outer
`
`lateral surfaces is formed in the central metal structure instead of one of the leads.
`
`Second, if a front or rear metal structure (light blue) and the central metal structure
`
`(dark blue) were the first and second leads, then Fig. 12 fails to satisfy at least [27.D]
`
`because the LED element is not electrically connected to the central metal structure,
`
`and [27.H] because there would be resin at left and right sides of a lead on only one
`
`exposed outer lateral surface instead of the required two. Thus, the fifth embodiment
`
`5
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`

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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`fails to provide written description support for claim 27. Ex. 1017 ¶¶52-60.
`
`Additionally, the citations PO relies on to support limitations of claim 27
`
`improperly point to different alternative embodiments with different configurations.
`
`For example, PO asserts the “descriptions of the ‘first embodiment’ [Figs. 1-5] are
`
`substantially the same in the fifth embodiment [Fig. 12].” Mot. 3-7. But, PO is
`
`relying on multiple distinct embodiments, piecemeal, and has not shown that claim
`
`27 has proper support in any one embodiment. Ariad Pharm., Inc. v. Eli Lilly & Co.,
`
`598 F.3d 1336, 1352 (Fed. Cir. 2010) (“the specification itself [] must demonstrate
`
`possession…a description that merely renders the invention obvious does not satisfy
`
`the [written description] requirement.”). As illustrated by the comparison of Figs. 1
`
`and 12 below, PO is incorrect that the lead frame structure of the first embodiment
`
`is “substantially the same” as the fifth embodiment (Mot. 3-5). Significantly, the first
`
`embodiment (e.g., Figs. 1, 3) consists of only two metal structures (light blue), while
`
`the fifth embodiment (Fig. 12) has three metal structures, as discussed above:
`
`
`Moreover, setting aside the fifth embodiment, the remaining embodiments also fail
`
`to support PO’s claim 27 at least because they fail to disclose [27.H], which requires
`
`resin located at left and right sides of an exposed surface of a lead. Thus, PO has not
`
`6
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`

`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`shown written description support for independent claim 27, and it is invalid under
`
`§112, ¶1. Ex. 1017 ¶¶61-65.
`
`B.
`Proposed Claim 28
`For similar reasons described above with respect to claim 27, there is no
`
`written description support for the combination of elements [28.A], [28.D], [28.E],
`
`[28.F], [28.G], and [28.H]. Proposed claim 28 recites in part: “a resin package
`
`comprising a resin part and a metal part, said metal part consisting of first and
`
`second metal plates” [28.A]. As with claim 27, PO relies on the fifth embodiment
`
`of the JP ʼ408 and ʼ940 applications. Mot. 7-10.2 However, the descriptions of the
`
`fifth embodiment fail to provide a written description of claim 28 because the metal
`
`part in that embodiment does not “consist” of only “first and second metal plates”
`
`as required by [28.A]. Instead, the metal part in the fifth embodiment has a third
`
`separate metal plate, which is excluded by the claim.3 Supra I.A; Ex. 1017 ¶¶66-70.
`
`Moreover, even if the requirement of [28.A] was ignored and any two of the
`
`
`2 As discussed, PO’s attempt to mix the fifth and first embodiments is improper
`
`(Ariad Pharm., 598 F.3d at 1352); and all other embodiments fail to support claim
`
`28 at least because they fail to disclose [28.F], [28.H]. Ex. 1017 ¶¶80-82.
`
`3 PO’s proposed amendment narrows the element from “including at least two metal
`
`plates” to “consisting of first and second metal plates.” Ex. 2020, 2.
`
`7
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`metal structures of the fifth embodiment were considered as the claimed “first and
`
`second metal plates,” the disclosures fail to provide written description support for
`
`the combination of [28.D], [28.E], [28.F], [28.G], and [28.H]. First, if the front and
`
`rear metal structures (light blue) were the claimed first and second metal plates, then
`
`the device fails to satisfy at least [28.D] because the plates have no portion at two of
`
`the four outer lateral surfaces, [28.E] because the notch on two outer lateral surfaces
`
`is formed in the central metal structure instead of one of the first and second plates,
`
`and [28.G] because neither of the first and second plates are directly under the LED
`
`element. Second, if a front or rear metal structure (light blue) and the central metal
`
`structure (dark blue) were the claimed first and second metal plates, then the device
`
`fails to satisfy at least [28.F] and [28.H] because there would not be resin located at
`
`left and right sides of an exposed metal plate on two outer lateral surfaces. Thus, PO
`
`has not shown written description support for proposed independent claim 28, and
`
`this claim and claims 29-34 that depend from it are invalid under §112, ¶1. Ex. 1017
`
`¶¶71-79.
`
`C.
`Proposed Claim 31
`There is no written description support for an “etched concave portion on an
`
`[upper/bottom] surface.” As discussed in the ’411 Reply in IPR2018-00386 (pp. 9-
`
`11), the concavity/convexity in Fig. 11 is a side surface, not an upper or bottom
`
`surface. Ex. 1017 ¶¶83-84.
`
`8
`
`

`

`II.
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`IMPROPER BROADENING UNDER 37 C.F.R. §42.121(A)(2)(II)
`A.
`Proposed Claim 27
`PO’s proposed claim 27 improperly replaces the term “metal plate” with the
`
`broader term “metal lead.” Ex. 2020. For example, under the heading of “Lead and
`
`Lead Frame,” the ’071 specification discloses that “a metal plate” is “a flat plate
`
`shape … which [may have] differences in level or concavity and convexity.” Ex.
`
`1001, 9:21-24. In contrast, “metal lead” is not so limited. Thus, PO’s proposal would
`
`improperly broaden claim 27. 37 C.F.R. §42.121(a)(2)(ii); IPR2012-00027, Pap. 27
`
`at 5; Ex. 1017 ¶¶86-87.
`
`B.
`Proposed Claim 28
`PO’s proposed claim 28 improperly broadens the claim by replacing the term
`
`“the resin part” with the term “portions of an outer lateral surface of the resin part.”
`
`Original claim 16 recites “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.” Ex. 1001, 20:65-
`
`67. In contrast, PO’s proposed amended claim recites “at a [first/second] of the four
`
`outer lateral surfaces of the resin package, portions of an outer lateral surface of the
`
`resin part are located above and at left and right sides of an exposed outer lateral
`
`surface of the [first/second] metal plate.” In the proposed amendment, the recited
`
`spatial requirement is now limited to just “portions” of the resin part. Thus, PO’s
`
`proposal would improperly broaden claim 28 and its dependents. Ex. 1017 ¶¶88-89.
`
`III. THE PROPOSED CLAIMS ARE UNPATENTABLE UNDER §103
`
`9
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`

`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`The references are prior art under §102(a), (b), and/or (e). Ex. 1017 ¶¶91-381.
`
`A. Claim 27: Hsu + POSA (G1); Hsu + Urasaki (G2); Hsu + Koung
`and Urasaki (G3); Hsu + Lin and Urasaki (G10)
`Elements [27.Pre], [27.A]: Hsu discloses “[a] light emitting device” (e.g.,
`
`“a light emitting diode (LED) package”) and “a light emitting element” (e.g., “a
`
`white LED die 20”). E.g., Ex. 1030, 1:7-10, 3:11-13; Ex. 1017 ¶¶90-122, 262-75.
`
`Element [27.B]: Hsu discloses “a resin package (e.g., “Cut…each of the
`
`cell 11...such that LED packages 60 are made”) consisting of a resin part (e.g., “a
`
`reflecting ring 30…with plastic materials”; “an encapsulant 50…with epoxy resin”)
`
`and first and second metal leads (e.g., “[T]he first terminal 70 is…metal. The
`
`second terminal 80…is…metal.”), the resin part including…resin” (e.g., “an
`
`encapsulant 50…with epoxy resin”).
`
`
`
`E.g., Ex. 1030, 3:43-67, 4:1-13, 3:23-30, Fig. 10-12. Ex. 1017 ¶¶123-124, 276.
`
`A POSA would have been motivated and found it obvious and a
`
`straightforward and beneficial design choice, to use thermosetting resin in
`
`forming the resin part taught by Hsu to provide better heat resistance, light
`
`resistance, and adhesion. E.g., Ex. 1032 ¶10, 52, 135; Ex. 1017 ¶125; Pet. 3, 36.
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`10
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`To the extent further disclosure of a resin part is required, Koung discloses
`
`“a resin package (e.g., “cutting…to form…LED packages (330)”) consisting of a
`
`resin part (e.g., “The reflective base (230) may be…resin….”) and first and second
`
`metal leads (e.g., “Each unit has at least one pair of electrodes (220)….”), the resin
`
`part including a…resin” (e.g., “may be resin”).
`
`
`
`E.g., Ex. 1008 ¶¶18, 20, 21, 24, 30, Figs. 2B-C, 4F. A POSA would have been
`
`motivated and found it obvious and straightforward to use Koung’s teachings of a
`
`resin part having a tall, wide, reflective concave portion in implementing Hsu’s
`
`device to beneficially (1) direct light vertically, increasing brightness and luminance,
`
`(2) shield the phosphors, reducing cross-talk, and (3) simplify the mold, reducing
`
`manufacturing time and expense. E.g., id.; Ex. 1035 ¶¶8, 14; Ex. 1017 ¶¶126-29. A
`
`POSA also would have been motivated and found it obvious and straightforward to
`
`use Koung’s advantageous teaching of a resin part with four outer lateral surfaces
`
`having coplanar resin and metal formed by a “once-molding technique,” as expressly
`
`taught by Koung, in implementing Hsu’s device to provide for “a packaging method
`
`that can save time and cost.” E.g., 1008 ¶¶24-25, Figs. 2C, 4F; Ex. 1017 ¶129.
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`Alternatively, it would have been obvious to combine Lin’s similar disclosures for
`
`similar reasons. E.g., Ex. 1010 ¶25, Figs. 2b, 3a, 4g; Ex. 1017 ¶¶277-80.
`
`To the extent further disclosure of a thermosetting resin is required, Urasaki
`
`discloses “the resin part including a thermosetting resin” (e.g., “light reflecting
`
`thermosetting resin composition”). E.g., Ex. 1031 ¶¶23, 24; Ex. 1017 ¶130. A POSA
`
`would have been motivated and found it obvious and a straightforward and
`
`beneficial design choice, to use a thermosetting resin, as expressly taught by
`
`Urasaki, in forming the resin part taught by Hsu, or Hsu in view of Koung or Lin, to
`
`provide better heat resistance, light resistance, and adhesion compared to non-
`
`thermosetting resins. Ex. 1032 ¶10, 52; Ex. 1031 ¶25; Ex. 1017 ¶¶131-32, 281-82;
`
`Pet. 3, 36.
`
`Element [27.C]: Hsu discloses “said resin package has four outer lateral
`
`surfaces (e.g., “Cut…to the size of each of the cell 11”; “The encapsulant 50 has a
`
`rectangle base 51”) and has a concave portion having a bottom surface” (e.g.,
`
`“The reflecting ring 30…. a slope facing upward with an angle of 45°”).
`
`E.g., Ex. 1030, 3:43-67, 3:22-30, Fig. 7, 11-12; Ex. 1017 ¶¶133-34.
`
`
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`12
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`To the extent further disclosure of a resin package having a concave portion
`
`
`
`is required, Koung discloses “said resin package has four outer lateral surfaces
`
`(e.g., “separating the reflective bases (230) of the cell matrix (320)…to obtain
`
`multiple individual packages (330)”) and has a concave portion having a bottom
`
`surface” (e.g., “recess (233)…has a reflective bottom (231)”).
`
`
`E.g., Ex. 1008 ¶¶18, 24, 30, Figs. 2A, 2C; [27.B] (motivation); Ex. 1017 ¶¶135-37.
`
`Alternatively, it would have been obvious to combine Lin’s similar disclosures. E.g.,
`
`Ex. 1010 ¶¶27, 31, 33, Figs. 2e, 2b; [27.B] (motivation); Ex. 1017 ¶¶283-86.
`
`Element [27.D]: Hsu discloses “the light emitting element is mounted on
`
`the bottom surface of the concave portion (e.g., “The LED die 20…is smoothly
`
`bonded to a top surface of the main plate 16 of the first terminal 70”; “The reflecting
`
`ring 30…surrounds the die 20….”) and electrically connected to the first and
`
`second metal leads” (e.g., “the LED die 20 is electrically connected to the first
`
`terminal 70”; “The conductive wire 40 is connected between…die 20 and…the
`
`second terminal 80.”). E.g., Ex. 1030, 4:13-15; Ex. 1017 ¶¶138-39.
`
`To the extent further disclosure of a concave portion is required, Koung
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`13
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`discloses “the light emitting element is mounted on the bottom surface of the
`
`concave portion (“attaching LED chips (240) onto the dissipating boards (210)”)
`
`and electrically connected to the first and second metal leads” (e.g., “bonding
`
`conductive wires (250)”). E.g., Ex. 1008 ¶18, Fig. 2A; [27.B] (motivation); Ex. 1017
`
`¶¶140-42. Alternatively, it would have been obvious to combine Lin’s similar
`
`disclosures. E.g., Ex. 1010 ¶¶27-28, Fig. 2e; [27.B] (motivation); Ex. 1017 ¶287-90.
`
`Element [27.E]: Hsu discloses this element.
`
`E.g., Ex. 1030, Figs. 11-12; Ex. 1017 ¶¶143-44.
`
`
`
`To the extent it is argued further disclosure of a resin part is required, Koung
`
`discloses this element.
`
`
`E.g., Ex. 1008 ¶¶18, 20, 21, 24, Fig. 2C; [27.B] (motivation); Ex. 1017 ¶¶145-47.
`
`Alternatively, it would have been obvious to combine Lin’s similar disclosures. E.g.,
`
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`Ex. 1010 ¶¶26, 31, Fig. 2b; [27.B] (motivation); Ex. 1017 ¶¶291-94.
`
`Element [27.F]: Hsu discloses this element.
`
`
`E.g., Ex. 1030, 4:5-7, 2:67-3:11, 3:43-54, 3:64-67, Figs. 4, 12; Ex. 1017 ¶¶148-49.
`
`To the extent it is argued further disclosure of a resin package (with a resin
`
`part) is required, Koung discloses this element.
`
`
`E.g., Ex. 1008 ¶¶18, 20, 21, 24, Figs. 2B-C; [27.B] (motivation); Ex. 1017 ¶¶150-
`
`52. Alternatively, it would have been obvious to combine Lin’s similar disclosures.
`
`E.g., Ex. 1010 ¶¶26, 31, Fig. 2b; [27.B] (motivation); Ex. 1017 ¶¶295-98.
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`Element [27.G]: Hsu discloses this element.
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`E.g., Ex. 1030, 2:58-3:11, 3:43-54, 3:64-67, Figs. 4, 12; Ex. 1017 ¶¶153-54.
`
`
`
`To the extent it is argued further disclosure of a resin package (with a resin
`
`part) is required, Koung discloses this element. E.g., Ex. 1008 ¶¶18, 20, 21, 24,
`
`Figs. 2B-C, 4B; [27.B] (motivation); Ex. 1017 ¶¶155-57. Alternatively, it would
`
`have been obvious to combine Lin’s similar disclosures. E.g., Ex. 1010 ¶¶26, 31,
`
`Figs. 2b, 4b; [27.B] (motivation); Ex. 1017 ¶¶299-302.
`
`Element [27.H]: Hsu discloses this element.
`
`E.g., Ex. 1030, 2:67-3:11, 3:43-54, 3:64-67, Fig 12; Ex. 1017 ¶¶158-59.
`
`
`
`To the extent it is argued further disclosure of a resin part is required, Koung
`
`discloses this element.
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`
`E.g., Ex. 1008 ¶¶18, 20, 21, 24, Fig. 2C; [27.B] (motivation); Ex. 1017 ¶¶160-62.
`
`Alternatively, it would have been obvious to combine Lin’s similar disclosures. E.g.,
`
`Ex. 1010 ¶¶26, 31, Fig. 2b; [27.B] (motivation); Ex. 1017 ¶¶303-06.
`
`Element [27.I]: Hsu discloses “all upper edges of the first and second
`
`metal leads are coplanar” (e.g., “provide a plate-like frame 10, which is
`
`substantially rectangle”). E.g., Ex. 1030, 2:58-60, Fig. 11; Ex. 1017 ¶¶163, 307.
`
`B. Claim 28: Hsu + POSA (G1); Hsu + Koung (G4); Hsu + Lin (G11)
`Element [28.Pre]: Hsu discloses. See, e.g., [27.Pre]; Ex. 1017 ¶¶164, 308.
`
`Element [28.A]: Hsu discloses this element. To the extent it is argued further
`
`disclosure of a resin part having a concave portion is required, Koung discloses this
`
`element. Alternatively, it would have been obvious to combine Lin’s similar
`
`disclosures. See, e.g., [27.B], [27.C]; Ex. 1017 ¶¶165-71, 309-13.
`
`Element [28.B]: Hsu discloses this element. To the extent it is argued further
`
`disclosure of a concave portion is required, Koung discloses this element.
`
`Alternatively, it would have been obvious to combine Lin’s similar disclosures. See,
`
`e.g., [27.D]; Ex. 1017 ¶¶172-76, 314-17.
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`Element [28.C]: Hsu discloses this element.
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`
`E.g., Ex. 1030, 3:43-48, 4:41-46, 4:26-29, Fig. 11; Ex. 1017 ¶¶177-78.
`
`To the extent it is argued further disclosure of a resin part is required, Koung
`
`discloses this element.
`
`
`E.g., Ex. 1008 ¶21, Fig. 2A; [27.B] (motivation); Ex. 1017 ¶¶179-81. Alternatively,
`
`it would have been obvious to combine Lin’s similar disclosures. E.g., Ex. 1010 ¶26,
`
`Fig. 2e; [27.B] (motivation); Ex. 1017 ¶¶318-21.
`
`Element [28.D]: Hsu discloses this element.
`
`E.g., Ex. 1030, Figs. 11-12; Ex. 1017 ¶¶182-83.
`
`
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`18
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`To the extent it is argued further disclosure of a resin part is required, Koung
`
`discloses this element.
`
`
`E.g., Ex. 1008 ¶¶18, 20, 21, 24, Fig. 2C; [27.B] (motivation); Ex. 1017 ¶¶184-86.
`
`Alternatively, it would have been obvious to combine Lin’s similar disclosures. E.g.,
`
`Ex. 1010 ¶¶26, 31, Fig. 2b; [27.B] (motivation); Ex. 1017 ¶¶322-25.
`
`Element [28.E]: Hsu discloses this element. To the extent it is argued further
`
`disclosure of a resin package (with a resin part) is required, Koung or alternatively
`
`Lin disclose this element. See, e.g., [27.G]; Ex. 1017 ¶¶187-91, 326-29.
`
`Element [28.F]: Hsu discloses this element.
`
`
`E.g., Ex. 1030, 2:67-3:11, 3:43-54, 3:64-67, Figs. 12, 11; Ex. 1017 ¶¶192-93.
`
`To the extent it is argued further disclosure of a resin part is required, Koung
`
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`discloses this element.
`
`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
`
`
`E.g., Ex. 1008 ¶18, 20, 21, 24, Fig. 2C; [27.B] (motivation); Ex. 1017 ¶¶194-96.
`
`Alternatively, it would have been obvious to combine Lin’s similar disclosures. E.g.,
`
`Ex. 1010 ¶¶26, 31, Fig. 2b; [27.B] (motivation); Ex. 1017 ¶¶330-33.
`
`Element [28.G]: Hsu discloses “a lower surface of the metal part is
`
`exposed from the resin part in a region directly under the light emitting
`
`element” (e