Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 1 of 36 PageID #: 2836
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`NICHIA CORPORATION,
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`Plaintiff,
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`v.
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`VIZIO, INC.,
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`Defendant.
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`C.A. No. 2:16-cv-01453-JRG
`(LEAD CASE)
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`Jury Trial Demanded
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`PLAINTIFF NICHIA CORPORATION’S P.R. 4-5(a)
`OPENING CLAIM CONSTRUCTION BRIEF
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`III. 
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`IV. 
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`INTRODUCTION ...............................................................................................................1 
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`SUMMARY OF THE PATENTS-IN-SUIT ........................................................................3 
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`APPLICABLE LAW ...........................................................................................................4 
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`CLAIM CONSTRUCTION ANALYSIS ............................................................................5 
`A. 
`Disputed Terms No. 1 and No. 2: “Concave” and “Convex” ..................................5 
`B. 
`Disputed Term No. 3: “Substantially Flat” ..............................................................8 
`C. 
`Disputed Term No. 4: “Resin” ...............................................................................12 
`D. 
`Disputed Term No. 5: “A Notch is Formed in the Metal Part” .............................16 
`E. 
`Disputed Term No. 6: “Cutting … Along [the at Least One Notch]” ...................21 
`F. 
`Disputed Term No. 7: The Preambles of Claims 1 and 17 of the ’250
`Patent are Limitations ............................................................................................22 
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`V. 
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`NONE OF THE ASSERTED CLAIMS ARE INVALID UNDER 35 U.S.C. § 112 ........25 
`A. 
`The Phrase “Inner Side Wall Surface” Is Not Indefinite .......................................25 
`B. 
`The Term “Substantially Flat” Is Not Indefinite ....................................................26 
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`VI. 
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`DEFENDANTS’ POSITIONS ARE INCONSISTENT WITH THEIR
`STATEMENTS TO THE PATENT OFFICE ...................................................................26 
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`VII.  AGREED CONSTRUCTIONS .........................................................................................28 
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`VIII.  CONCLUSION ..................................................................................................................29 
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`Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 3 of 36 PageID #: 2838
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`Cases 
`
`TABLE OF AUTHORITIES
`
`
`ams AG v. 511 Innovations, Inc., IPR2016-01787,
`Paper No. 15, at 6 (P.T.A.B. Mar. 15, 2017) ............................................................................ 27
`
`Aventis Pharms., Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) ................................................................................................ 17
`
`Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
`320 F.3d 1339 (Fed. Cir. 2003) ................................................................................................ 25
`
`Catalina Marketing Int’l v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) .............................................................................................. 1, 24
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................................ 8, 15
`
`GE Lighting Sols., LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014) ................................................................................................ 13
`
`Globus Med., Inc. v. Flexuspine, Inc., IPR2015-01830,
`Paper No. 11, at 9 (P.T.A.B. Feb. 25, 2016) ............................................................................. 27
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ............................................................................................ 1, 15
`
`Kaneka Corp. v. Xiamen Kingdomway Group Co.,
`790 F.3d 1298 (Fed. Cir. 2015) .................................................................................................. 7
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .................................................................................................. 14
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (U.S. 2014) ...................................................................................................... 25
`
`Nichia Corp. v. Everlight Americas, Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) ................................................................................................ 24
`
`Nichia Corp. v. Everlight Elecs. Co., Ltd.,
`No. 13-cv-702-JRG, 2014 WL 7149169 (E.D. Tex. Dec. 12, 2014) ......................................... 4
`
`Optis Cellular Tech., LLC v. Kyocera Corp.,
`2:16-cv-0059, 2017 U.S. Dist. LEXIS 18191 (E.D. Tex. Feb. 8, 2017) ................... 5, 15, 16, 22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ......................................................................................... passim
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`Renishaw PLC v. Marposs Societa' Per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ................................................................................................ 20
`
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) ................................................................................................ 22
`
`Thorner v. Sony Computer Entm't Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ........................................................................................ 2, 8, 15
`
`Statutes 
`
`35 U.S.C. § 112 ............................................................................................................... 1, 4, 25, 29
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`Rules 
`
`P.R. 4-3 ........................................................................................................................................... 1
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`P.R. 4-5(a) ....................................................................................................................................... 1
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`Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 5 of 36 PageID #: 2840
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`
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`Name1
`Appx. 1
`Appx. 2
`Appx. 3
`Dkt. 143
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`Ex. A
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`Ex. B
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`Ex. C
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`Ex. D
`Ex. E
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`Ex. F
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`Ex. G
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`Ex. H
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`Ex. I
`Ex. J
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`Abbreviation
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`’250 Patent
`’411 Patent
`’071 Patent
`Joint Statement
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`Everlight Claim
`Construction Order
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`Defendants’ 4-3(d)
`Summary
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`TABLE OF EXHIBITS
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`Description
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`U.S. Patent No. 8,530,250
`U.S. Patent No. 9,490,411
`U.S. Patent No. 9,537,071
`Joint Claim Construction and Prehearing Statement
`pursuant to P.R. 4-3, filed October 30, 2017
`Claim Construction Memorandum and Order, dated
`December 12, 2014, issued by the Court in Nichia Corp.
`v. Everlight Electronics Co., Ltd., Case No. 2:13-CV-
`702-JRG (Dkt. 79) (“Everlight Order”)
`Defendants’ Summary of Expert Testimony Pursuant to
`Patent Local Rule 4-3(d), served October 30, 2017
`Concave, Math Open Reference
`http://www.mathopenref.com/concave.html (last
`accessed Oct. 10, 2017)
`U.S. Patent No. 6,627,482 (“Wang”)
`McGraw-Hill Dictionary of Scientific and Technical
`Terms, 6th ed. (2003)
`Resin, Merriam-Webster
`https://www.merriam-webster.com/dictionary/resin (last
`accessed Oct. 10, 2017)
`Resin, American Heritage Dictionary
`https://ahdictionary.com/word/search.html?q=resin (last
`accessed Oct. 10, 2017)
`Webster’s Unabridged Dictionary of the English
`Language (2001)
`The New Oxford American Dictionary, 2d Ed. (2005)
`Lowe’s Companies, Inc., Lowe’s Home Centers, LLC
`and L G Sourcing, Inc. v. Nichia Corp., Paper No. 2,
`Petition for Inter Partes Review (P.T.A.B. Aug. 29,
`
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`1 The “Ex.” numbers refer to the Exhibits attached to the Declaration of Michael H. Jones, dated
`November 21, 2017, and filed concurrently herewith.
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`Ex. K
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`-
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`Spangler Decl.
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`2017).
`VIZIO, Inc. v. Nichia Corp., Papper No. 2, Petition for
`Inter Partes Review (P.T.A.B. June 16, 2017)
`Declaration of Dr. Leland J. Spangler in Support of
`Nichia’s Opening Claim Construction Brief
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`Plaintiff Nichia Corporation (“Plaintiff” or “Nichia”) submits this Opening Claim
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`Construction Brief pursuant to P.R. 4-5(a) and the Amended Docket Control Order (Dkt. 91).
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`I.
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`INTRODUCTION
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`On October 30, 2017, the parties submitted their Joint Claim Construction and Prehearing
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`Statement pursuant to P.R. 4-3 (Dkt. 143). The parties dispute the construction of seven terms:
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`“concave,” “convex,” “substantially flat,” “resin,” “a notch is formed in the metal part, cutting . .
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`. along [the at least one notch],” and whether the preambles of claims 1 and 17 of the ’250 Patent
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`are limitations. See Section IV below. Defendants also argue that the terms “inner side wall
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`surface” and “substantially flat” are invalid under 35 U.S.C. § 112. See Section V below. The
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`parties have agreed to the construction of several terms, as explained in Section VII.
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`Nichia’s proposed constructions of “substantially flat” and “a notch is formed in the
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`metal part” are correct because they are supported by the intrinsic record – including the plain
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`language of the claims and the specification – and are consistent with the extrinsic evidence.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (“The construction that
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`stays true to the claim language and most naturally aligns with the patent’s description of the
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`invention will be, in the end, the correct construction.”). For the same reasons, it is proper to
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`consider the preambles of claims 1 and 17 of the ’250 Patent as claim limitations. Catalina
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`Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (a preamble is
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`considered limiting when it “recites essential structure or steps, or if it is ‘necessary to give life,
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`meaning, and vitality’ to the claim’”). The remainder of the terms (concave, convex, resin, and
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`“cutting along at least one notch”) need not be construed, as their plain and ordinary meaning
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`would be readily understood by a jury. Moreover, there is no disavowal or re-definition in the
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`intrinsic record that would warrant deviation from the plain and ordinary meaning of these terms.
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`See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1373 (Fed. Cir. 2014) (“[T]o deviate
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`1
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`from the plain and ordinary meaning of a claim term to one of skill in the art, the patentee must,
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`with some language, indicate a clear intent to do so in the patent.”). Finally, all of the asserted
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`claims would inform those skilled in the art about the scope of the claimed inventions with
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`reasonable certainty.
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`Defendants’ proposed constructions of the disputed terms are improper because they add
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`extraneous limitations to common, well understood terms such as “concave,” “convex,” “resin,”
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`and “cutting.” See Dkt. 143. Deviation from the plain meaning of claim terms is allowed only in
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`two circumstances:
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`The words of a claim are generally given their ordinary and customary meaning
`as understood by a person of ordinary skill in the art when read in the context of
`the specification and prosecution history. There are only two exceptions to this
`general rule: 1) when a patentee sets out a definition and acts as his own
`lexicographer, or 2) when the patentee disavows the full scope of a claim term
`either in the specification or during prosecution.
`
`Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (emphasis
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`added) (internal citations omitted). “The standard for disavowal of claim scope is . . . exacting.”
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`Id. at 1366. Defendants’ constructions violate these rules by improperly emphasizing extrinsic
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`evidence that is inconsistent with the claim language and the specification, as well as abundant
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`extrinsic evidence that supports the claim terms’ plan meaning.
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`
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`Finally, in at least two instances, Defendants’ proposed constructions are contrary to the
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`Court’s Markman order in Nichia Corp. v. Everlight Elecs. Co., Ltd., No. 13-cv-702 (E.D. Tex.
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`Dec. 12, 2014) (the “Everlight Claim Construction Order”). Jones Decl., Ex. A. Defendants’
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`argument that the term “cutting” should be limited to “sawing,” and Defendants’ contention that
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`the preambles of the asserted claims are not limiting, are virtually identical to positions that the
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`Court rejected in the Everlight case. Everlight Claim Construction Order, pp. 54-55 and 68-69.
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`2
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`Defendants have identified no errors in the Court’s previous analysis that would warrant
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`deviation from its prior rulings.
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`For at least these reasons, and discussed further below, the Court should adopt Nichia’s
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`constructions, reject Defendants’ constructions, and determine that no claim is indefinite.
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`II.
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`SUMMARY OF THE PATENTS-IN-SUIT
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`This case involves three patents: U.S. Patent Nos. 8,530,250 (the ’250 Patent); 9,490,411
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`(the ’411 Patent); and 9,537,071 (the ’071 Patent) (collectively the “Patents-in-Suit”). The ’411
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`and ’071 Patents are continuations of the ’250 Patent, which claims priority to Japanese
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`Application 2008-225408, filed September 3, 2008. Each of the Patents-in-Suit is titled “Light
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`emitting device, resin package, resin-molded body, and methods for manufacturing light emitting
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`device, resin package and resin-molded body.”
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`The Patents-in-Suit relate to “light emitting device[s] used for light equipment, a display,
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`a backlight of a mobile telephone, a movie lighting auxiliary light source, and other general
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`consumer light sources, and to a method for manufacturing a light emitting device.” See, e.g.,
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`’250 Patent, 1:16-21.2 An embodiment is shown in FIGs. 1 and 2, reproduced below:
`
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`2 Because the ’411 and ’071 Patents share substantially the same specification and figures as the
`’250 Patent, for ease of reference, citations are to the ’250 Patent specification, except for
`citations to a specific patent’s claims.
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`3
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`Referring to these figures, the Court previously summarized the ’250 Patent as follows:
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`
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`The specification states that “[t]he resin package 20 has the outer bottom
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`surface 20a in which the leads 22 are arranged, outer side surfaces 20b in which
`part of the leads 22 are exposed, and the outer upper surface 20c in which an
`opening concave part 27 is formed.” Id. The specification adds that the concave
`part 27 has an inner bottom surface 27a and inner side surface 27b, and that “[t]he
`leads 22 are exposed in the inner bottom surface 27a of the resin package 20 and
`the light emitting element 10 is placed on the leads 22.” Id. The specification
`further states that “[i]n the concave part 27 of the resin package 20, a sealing
`member 30 which covers the light emitting element 10 is arranged.” Id.
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`The specification also discloses that “[t]he light emitting element 10 is
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`electrically connected with the leads 22 through wires 50,” and that “[t]he leads
`22 are not arranged on the outer upper surface 20c of the resin package 20.” Id.
`The specification further states that notch parts are provided in a lead frame, and
`“the lead frame 21 is cut along the notch parts 21a and, therefore, the cut part of
`the lead frame 21 is a part which is exposed from the resin package 20.” Id.
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`Everlight Claim Construction Order, pp. 11-12 (bracketed text in original).
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`
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`A detailed summary of the Patents-in-Suit and related technology background is provided
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`in Nichia’s Technology Tutorial, filed concurrently herewith.
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`III. APPLICABLE LAW
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`The Court is familiar with the general principles regarding claim construction and 35
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`U.S.C. § 112. See, e.g., Nichia Corp. v. Everlight Elecs. Co., Ltd., No. 13-cv-702-JRG, 2014
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`WL 7149169 (E.D. Tex. Dec. 12, 2014) (Gilstrap, J.) (Everlight Claim Construction Order);
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`Optis Cellular Tech., LLC v. Kyocera Corp., No. 2:16-cv-0059, 2017 U.S. Dist. LEXIS 18191, at
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`4
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`*8-13 (E.D. Tex. Feb. 8, 2017) (Payne, J.). Nichia will therefore address specific points of law
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`as necessary to the discussion of particular issues.
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`IV. CLAIM CONSTRUCTION ANALYSIS
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`A.
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`Disputed Terms No. 1 and No. 2: “Concave” and “Convex”
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`Nichia’s Proposed Construction
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`Defendants’ Proposed Construction
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`Concave: Plain and ordinary meaning. No
`construction necessary.
`Convex: Plain and ordinary meaning. No
`construction necessary.
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`Concave: curved inward, like the inner surface
`of a sphere.
`Convex: curved outward, like the outer surface
`of a sphere.
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`
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`There is no need to construe the terms “concave” and “convex,” which are found in the
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`’250 Patent (claims 7, 11, and 12); the ’411 Patent (claims 1 and 8); and the ’071 Patent (claims
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`1, 12, 14, 15, 16, and 18). In these claims, the terms “concave” and “convex” are used according
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`to their plain and ordinary meaning to refer to several different features, including the concave
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`portion of the resin package where the light emitting element is located (’250 Patent, claim 7;
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`’411 Patent, claim 1; ’071 Patent, claims 1, 14, 15, and 16), the concave and convex portions of
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`the lead plate or metal part of a light emitting device (’250 Patent, claim 11; ’411 Patent, claim
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`8; ’071 Patent, claims 12 and 18), and the concave portions on the inner side wall surface of the
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`lead frame surrounding the at least one notch (’250 Patent, claim 12). In all of these contexts,
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`the use of “concave” and “convex” is the same—i.e., the terms describe features that are
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`inwardly (or in the case of convex, outwardly) sloped, curved, hollowed, and/or dented. See,
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`e.g., ’250 Patent, FIGS. 1, 2, 4, and 11; 5:21-23; 6:12-19; 8:49-62; 14:54-55; see also Spangler
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`Decl. ¶ 45 (the varied uses of concave and convex in the Patents-in-Suit “reflect an intent by the
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`inventors to give the terms their plain and ordinary meanings, which includes surfaces and
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`shapes that are sloped and surfaces and shapes that are curved (whether like a sphere or not),
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`meaning that such surfaces and shapes will include in a vertical cross-section straight lines,
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`curved lines, or a combination of either.”). These terms are well understood in the field, and
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`would similarly be well understood by a jury.3
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`Defendants’ assertion that the terms “concave” and “convex” refer only to surfaces that
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`are “curved … like the inner [or outer] surface of a sphere” contradicts the specification, which
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`describes concave shapes made up of flat surfaces, curved surfaces, or a combination of either.
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`For example, the specification describes element 27 as the “concave part,” (see ’250 Patent,
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`19:25), but the figures show that element 27 is not “curved … like the inner surface of a sphere.”
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`Instead, the inner side surface 27b of “concave part” 27 is inwardly sloping, but does not have
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`curved lines in its cross-section. See, e.g., ’250 Patent, 6:12-19, FIG. 2. Indeed, annotated FIG.
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`2, shown below, confirms that neither inner side surface 27b and nor inner bottom surface 27b of
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`concave part 27 is curved:
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`3 Additionally, it would have been clear to a person of ordinary skill in the art that the term
`“convex” simply refers to the opposite of “concave.” See Spangler Decl., ¶ 43. Defendants
`appear to agree, as their proposed constructions are opposites of each other (i.e., “inward” vs.
`“outward”). See Dkt. 143 at Ex. A, p. 1.
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`The shape shown above (i.e., the shape of concave part 27) is referred to as “[a] generally
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`conic trapezoidal concave part,” and conical trapezoids are well understood not to have surfaces
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`curved like the inner surface of a sphere, as illustrated by the straight (not curved) lines when
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`viewed in cross-section as in FIG. 2.4 See, e.g., ’250 Patent, 14:54-55; see also FIG. 1 (sloped
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`sides) and FIG. 9. Importantly, the concave part 27 of this embodiment is the very same
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`“concave portion” recited in the independent claims of the ’411 and ’071 Patents. See, e.g., ’411
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`Patent, claim 1. There is no reason to adopt a construction, as Defendants propose, that
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`contradicts the specification. Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298,
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`1304 (Fed. Cir. 2015) (“A claim construction that excludes a preferred embodiment is rarely, if
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`ever, correct.”) (internal quotations and citation omitted). In sum, when viewing a vertical
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`cross-section of a “concave” portion of the claimed light emitting device, one would find straight
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`lines, curved lines, or a combination of both, which might or might not correspond to surfaces
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`that are curved like the inner surface of a sphere.
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`This is consistent with the plain and ordinary meaning of the terms “concave” and
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`“convex” as they would be understood by one of ordinary skill. See Spangler Decl., ¶¶ 38-49; id.
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`at ¶ 47 (“[T]he ordinary meanings of ‘concave’ and ‘convex’ refer to whether there are sides
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`(lines in a cross-section) that slope inward or outward; the terms do not limit the shape of those
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`sides (e.g., spherical versus conical or cylindrical).”). Indeed, extrinsic evidence describes both
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`concave and convex polyhedrons, i.e., shapes that have no curved surfaces whatsoever. See id.
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`Nothing in the intrinsic record serves as a disclaimer that would limit these terms in the manner
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`argued by Defendants, or suggests that Nichia is not entitled to the full scope of the terms’
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`4 A conic trapezoid has two planar circles of differing diameter and one conical side surface.
`The vertical cross-section of a conic trapezoid has straight lines. See, e.g., Spangler Decl. at ¶44,
`n.2.
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`7
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`typical meaning. Thorner, 669 F.3d at 1365 (“the patentee must ‘clearly express an intent’ to
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`redefine the term”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
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`(“we indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary
`
`meaning”). Defendants’ construction is improper and should be rejected.
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`According to Defendants’ P.R. 4-3 submission, they will not be providing any testimony
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`from an expert that a POSITA would have understood the common meaning of “concave” and
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`“convex” to be limited to “curved” surfaces. See Jones Decl., Ex. B. Rather, Defendants rely on
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`cherry-picked certain dictionary definitions, while ignoring both the intrinsic record and
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`dictionary definitions that are contrary to their constructions. See, e.g., Jones Decl., Ex. C (“A
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`shape is concave if part of it is pushed inward, or ‘caved in’. It is the opposite of convex, where
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`all parts of the figure point outwards.”); Spangler Decl., ¶ 46 (discussion of concave/convex
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`polyhedra). It is well settled that dictionary definitions should not contradict or override the
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`intrinsic evidence, particularly where alternative definitions from extrinsic sources are consistent
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`with the meaning derived from the patent itself. See, e.g., Phillips, 415 F.3d at 1322-24.
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`B.
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`Disputed Term No. 3: “Substantially Flat”
`
`Nichia’s Proposed Construction
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`Defendants’ Proposed Construction
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`Not bent
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`Indefinite
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`The proper construction of the term “substantially flat” is “not bent.” This term is found
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`in the ’411 Patent (claim 3) and the ’071 Patent ( claim 1), and describes the shape of the claimed
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`metal plates. See ’411 Patent, claim 3 (“each of the at least two metal plates is substantially
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`flat”) ’071 Patent, claim 1 (“wherein each of the first and second metal plates is substantially
`
`flat”). Nichia’s proposed construction is correct because it accurately reflects the distinction
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`between bent and unbent lead frames and leads (or “metal parts”), and is consistent with the
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`VIZIO Ex. 1012 Page 0014
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`Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 15 of 36 PageID #: 2850
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`claim language, the specification, and prosecution histories of the patents in which the term
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`appears.
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`It was well known at the time of the invention that the process of making some LED
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`packages used a bent or “formed” lead frame (resulting in bent leads in the singulated LED
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`packages), while others used an unbent or “flat” lead frame (resulting in flat leads in the
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`singulated LED packages). Spangler Decl, ¶¶ 50-63. It would have been clear to one of skill in
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`the art, reading the Patents-in-Suit, that the claims reciting “substantially flat” are directed to the
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`latter. That is, “substantially flat” is used to mean the opposite of bent.
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`Examples of bent lead are provided, for instance, in the “Background Art” section of the
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`Patents-in-Suit, which discusses the prior art devices shown in FIGS. 14-16. FIGS. 15 and 16,
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`illustrating leads that are bent after singulation, are reproduced below (yellow coloring to leads
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`and arrow added):
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`In addition, U.S. Patent No. 6,627,482 (“Wang”) (Jones Decl., Ex. D), which is listed
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`among the “References Considered” for the ’411 and ’071 Patents, also shows bent leads. Wang
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`FIG. 15 is reproduced below:
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`Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 16 of 36 PageID #: 2851
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`See also Wang 3:27-31 (“Four preformed bent metal frames are used for contacts 41, 42, 43,
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`
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`44.”). Dr. Spangler explains that LED packages with bent leads (such as described in the
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`“Background Section” or in Wang) have metal plates that are not substantially flat and have
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`protruding leads that are not planar with the original unbent portion of the lead frame:
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`In other LED packages that use bent leads, the leads that protrude from the side of
`the package body are formed or bent such that the protruding leads are no longer
`planar with the original unbent portion of the lead frame. This type of bent lead
`frame would allow, for example, the LED package to be placed on a surface such
`that the bottom surface of the bent portion of the lead frame is on a different plane
`than the bottom surface of the unbent portion of the lead frame. See, e.g., ’250
`Patent, FIGs. 15 and 16 (reproduced below [referring to figures above]). In such
`a device, the metal plates that form the leads are not substantially flat, but rather,
`are bent.
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`Spangler Decl., ¶ 57.
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`
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`In view of the foregoing, a POSITA reading the Patents-in-Suit would have understood
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`that the phrase “substantially flat” when applied to a metal part refers to a metal part that is not
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`bent. See ’250 Patent, 8:49-9:3. Indeed, all of the lead frames described in the Patents-in-Suit
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`are flat, un-bent, plate-like lead frames. See FIGs. 3, 5, 7, 8, and 10. Also, all of the
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`embodiments described in the Patents-in-Suit depict a flat lead structure, where the metal parts of
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`the singulated LEDs are un-bent. See, e.g., FIGs. 1, 6, 9, 11, 12, and 13. Nichia’s proposed
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`construction is thus consistent with the repeated and consistent depiction of the lead frames in
`
`the Patents-in-Suit.
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`Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 17 of 36 PageID #: 2852
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`
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`The specification also describes how the Patents-in-Suit solve certain problems (e.g.,
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`adhesion) uniquely associated with flat, un-bent leads and lead frames, for instance, through the
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`use of notches and etching to improve adhesion. See Spangler Decl., ¶ 59; ’250 Patent, col. 2:30-
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`35 (describing adhesion problem with flat plate shape lead frames); 4:36-41 (describing
`
`embodiment that improves adhesion using notches in a lead frame); 8:49-53 (“punching or
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`etching a metal plate of a flat plate shape”); see also, 12:49-57; FIG. 4. Indeed, the Patents-in-
`
`Suit explain that etching may be used to form notches and/or grooves in the flat, unbent lead
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`frame. Id. A POSITA would have recognized that the solutions of the Patents-in-Suit are
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`discussed by reference to, and particularly beneficial in the context of, un-bent lead frames (and
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`thus, un-bent metal parts or leads after singulation of the processed lead frame into individual
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`devices).
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`Additionally, Nichia’s construction is consistent with the claims themselves. For
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`instance, claims 1, 12, and 13 of the ’071 Patent read:
`
`1. A light emitting device comprising:
`
` a
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` 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 …
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`wherein each of the first and second metal plates is substantially flat.
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`12. The light emitting device according to claim 1, wherein the metal part has a
`step portion, a concave portion, and/or a convex portion.
`
`13. The light emitting device according to claim 1, wherein the metal part has
`means for providing a difference in level to expand a bonding area with a
`conductive material upon mounting.
`
`
`’071 Patent, claims 1, 12, and 13 (emphases added). That is, the metal part of claims 12 and 13
`
`is both substantially flat and contains one or more of a step portion, a concave portion, a convex
`
`portion, and a difference in level to expand a bonding area with a conductive material upon
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`Case 2:16-cv-01453-JRG Document 152 Filed 11/22/17 Page 18 of 36 PageID #: 2853
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`mounting. Thus, the claim language confirms that “substantially flat” does not refer to a lack of,
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`for example, concavities and convexities, but rather, refers to the fact that the metal part is not
`
`formed by bending. See Spangler Decl., ¶ 54; Phillips, 415 F.3d at 1315 (claim differentiation).
`
`
`
`
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`For all of the foregoing reasons, “substantially flat” should be construed as “not bent.”
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`Defendants provide no proposed construction for “substantially flat” and argue that this
`
`term is indefinite. As discussed above, “substantially flat” – read in light of the intrinsic
`
`evidence – informs a POSITA about the scope of the invention with reasonable certainty. See
`
`discussion, infra at Section V(B). It means not bent.
`
`C.
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` Disputed Term No. 4: “Resin”
`
`Nichia’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`Plain and ordinary meaning. No construction
`necessary.
`
`
`Thermosetting resin
`
`The term “resin” is in the ’250 Patent (claims 1, 2, 7, 15, and 17); the ’411 Patent (claims
`
`1, 2, 6, 7, 15, 18, and 19); and the ’071 Patent (claims 1, 4, 7, 8, 11, 14, 15, 16, 17, 23). In the
`
`Everlight case, the Court held that the term should be given its plain and ordinary meaning. See
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`Everlight Claim Construction Order, p. 61 (“the terms ‘lead frame,’ ‘resin,’ resin part,’ ‘resin
`
`package,’ and ‘resin-molded body’ will be given their plain and ordinary meaning.”).
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`The term “resin” requires no construction. Indeed, the dispute between the parties is not
`
`over what a “resin” is, but rather, whether the term resin should be limited only to thermosetting
`
`resins. Because “resin” is used throughout the specifications and claims in a manner consistent
`
`with its plain and ordinary meaning, and there is no inventor lexicography or disavowal requiring
`
`that “resin” be construed as only a particular type of