Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 1 of 28 PageID #: 4390
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`NICHIA CORPORATION,
`
`Plaintiff,
`
`v.
`
`
`
`
`VIZIO, INC.
`
`Defendant.
`
`
`
`
`C.A. No. 2:16-cv-01453-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`VIZIO Ex. 1013 Page 0001
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`

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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 2 of 28 PageID #: 4391
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`
`
`I.
`II.
`III.
`
`IV.
`
`V.
`
`
`
`TABLE OF CONTENTS
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`Page
`
`BACKGROUND OF THE TECHNOLOGY ......................................................................1
`LEVEL OF SKILL IN THE ART .......................................................................................2
`LEGAL STANDARDS .......................................................................................................2
`A.
`Claim Construction ..................................................................................................2
`B.
`Indefiniteness ...........................................................................................................3
`ANALYSIS ..........................................................................................................................3
`A.
`“Concave” and “Convex” ........................................................................................3
`B.
`“Substantially Flat” ..................................................................................................9
`C.
`“Resin” ...................................................................................................................12
`D.
`“A Notch Is Formed In The Metal Part” ................................................................16
`E.
`“Inner Side Wall Surface” .....................................................................................18
`F.
`Preambles of Claims 1 & 17 of the ’250 patent .....................................................21
`G.
`“Cutting … Along” ................................................................................................21
`CONCLUSION ..................................................................................................................21
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`
`
`
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`i
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`VIZIO Ex. 1013 Page 0002
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 3 of 28 PageID #: 4392
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2008)................................................................................................15
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)................................................................................................12
`
`Backyard Nature Prods. v. Woodlink, Ltd.,
`81 Fed. Appx. 729 (Fed. Cir. 2003) ...................................................................................15, 16
`
`Bell Atl. Network Servs. v. Covad Commc’ns Grp.,
`262 F.3d 1258 (Fed. Cir. 2001)................................................................................................12
`
`Cloud Farm Assocs. LP v. Volkswagen Grp. of Am., Inc.,
`674 Fed. Appx. 1000 (Fed. Cir. 2017) ...............................................................................17, 18
`
`Cuozzo Speed Techs., LLE v. Lee,
`136 S. Ct. 2131 (2016) ...............................................................................................................8
`
`CVI/Beta Ventures, Inc. v. Tura LP,
`112 F.3d 1146 (Fed. Cir. 1997)..........................................................................................15, 17
`
`Digital Biometrics, Inc. v. Identix, Inc.,
`149 F.3d 1335 (Fed. Cir. 1998)................................................................................................17
`
`Facebook, Inc. v. Pragmatus AV, LLC,
`582 F. App’x 864 (Fed. Cir. 2014) ............................................................................................8
`
`Fin Control Sys. Pty, Ltd., v. OAM, Inc.,
`265 F.3d 1311 (Fed. Cir. 2001)................................................................................................17
`
`Hearing Components, Inc. v. Shure Inc.,
`600 F.3d 1357 (Fed. Cir. 2010)................................................................................................10
`
`Honeywell Int’l, Inc. v. ITT Indus.,
`452 F.3d 1312 (Fed. Cir. 2006)................................................................................................14
`
`Honeywell Int’l Inc. v. Universal Avionics Sys. Corp.,
`488 F.3d 982 (Fed. Cir. 2007)....................................................................................................2
`
`Irdeto Access, Inc. v. Echostar Satellite Corp.,
`383 F.3d 1295 (Fed. Cir. 2004)..................................................................................................2
`
`
`
`ii
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`VIZIO Ex. 1013 Page 0003
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 4 of 28 PageID #: 4393
`
`
`Mukherjee v. Lai,
`No. 93-1068, 1993 U.S. App. LEXIS 16042 (Fed. Cir. 1993) ................................................15
`
`Nelson A. Taylor Co., Inc. v. Ameritex Techs., Inc.,
`C.A. No. 2:03-0263-CWH, 2006 WL 2708268 (D.S.C. Sept. 20, 2006) ..................................6
`
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016)....................................................................................................8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)........................................................................2, 8, 20
`
`Power Mosfet Techs., L.L.C. v. Siemens AG,
`378 F.3d 1396 (Fed. Cir. 2004)................................................................................................11
`
`Retractable Techs., Inc. v. Becton,
`653 F.3d 1296 (Fed. Cir. 2011)................................................................................................16
`
`SafeTCare Mfg. v. Tele-Made, Inc.,
`497 F.3d 1262 (Fed. Cir. 2007)................................................................................................12
`
`SAWT Inc. v. Joe Moore Constr. Inc.,
`C.A. No. CV14-03653 ...........................................................................................................6, 7
`
`SciMed Life Sys. v. Advanced Cardiovascular Sys.,
`242 F.3d 1337 (Fed. Cir. 2001)................................................................................................14
`
`Softspikes LLC v. MacNeil Eng’g Co., Inc.,
`C.A. No. 08-469(GMS), 2010 WL 1031657 (D. Del. Apr. 29, 2010) .......................................6
`
`Speedplay, Inc. v. Bebop Inc.,
`C.A. No. 95-00866-BTM, 1996 WL 33649180 (S.D. Cal. Sept. 25, 1996) ..............................6
`
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (Jan. 20, 2015)....................................................................................................3
`
`Thorner v. Sony Computer Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)..............................................................................................7, 8
`
`Verizon Serv. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007)................................................................................................14
`
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996)................................................................................................4, 7
`
`Wi-LAN USA, Inc. v. Apple Inc.,
`830 F.3d 1374 (Fed. Cir. 2016)................................................................................................15
`
`
`
`
`
`iii
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`VIZIO Ex. 1013 Page 0004
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 5 of 28 PageID #: 4394
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`
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`Defendants Lowe’s Home Centers, LLC and L G Sourcing, Inc. (collectively, “Lowe’s”);
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`Feit Electric Company, Inc. (“Feit Electric”); and VIZIO, Inc. (“VIZIO”) (all entities
`
`collectively, “Defendants”) respectfully submit this Responsive Claim Construction Brief
`
`pursuant to P.R. 4-5(b).1
`
`I.
`
`BACKGROUND OF THE TECHNOLOGY
`
`The asserted patents pertain generally to a light emitting diode (“LED”) package and to a
`
`method for manufacturing the same. ’250 patent at 1:17-21. An LED package is a
`
`semiconductor-based component that provides internal circuitry for an LED lighting product.
`
`An LED package consists of a light emitting element which is mounted on a lead frame made of
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`metal, light reflecting material, and a housing made of thermosetting resin. ’250 patent at 1:17-
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`21. Light emitting elements (and hence LEDs) are a type of semiconductor that can be used to
`
`generate light. Id. at 1:27-29. The light emitting element is mounted on the metal frame. The
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`lead frame is notched to provide open areas in which the metal frame has been removed.
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`Thermosetting resin is applied to the package so as to fill in the openings, or notches in the lead
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`frame, without leaving any gaps. Id. at 3:8-12.
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`Once the resin is molded to the lead frame, individual LED packages are then cut out, or
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`“singulated.” Id. at 5:15-17, 6:32-38. The resin-molded body is cut out along a notch, which
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`reduces the amount of the metal lead frame that has to be cut. Id. at 3:32-35, 6:26-31. As a
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`result of singulation by cutting along the notch, the outside surface of the package is a single
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`plane with both resin and exposed metal leads. Id. at 2:63-3:1. This allows the simultaneous
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`manufacture of multiple light emitting devices while maintaining a high adhesion between the
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`lead frame and the resin. Id. at 2:49-53.
`
`1 Defendants continue to maintain their respective objections that venue in the U.S. District Court for the Eastern
`District of Texas is improper under 28 U.S.C. § 1400(b) and reserve their positions with respect to all defenses they
`have asserted in pending motions.
`
`1
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`VIZIO Ex. 1013 Page 0005
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 6 of 28 PageID #: 4395
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`II.
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`LEVEL OF SKILL IN THE ART
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`A person of ordinary skill in the art at the time of the ’250, ’411, and ’071 patents would
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`have had a bachelor’s degree in Mechanical Engineering, Material Science, or a related degree,
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`and two years of work experience in LED packaging and design; or equivalent work experience.
`
`See Declaration of Dr. Thomas Katona (“Katona Decl.”) at ¶ 6.
`
`III. LEGAL STANDARDS
`
`A.
`
`Claim Construction
`
`Claim construction is governed by the well-established principles set forth in Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Thus, “[t]he claims are of primary
`
`importance in the effort to ascertain precisely what it is that is patented.” Phillips, 415 F.3d at
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`1312 (quotation omitted). The claims, however, “are part of a fully integrated written instrument
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`consisting principally of a specification that concludes with the claims. For that reason, claims
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`must be read in view of the specification of which they are a part.” Id. at 1315 (quotation
`
`omitted). Indeed, “the specification ‘is always highly relevant to the claim construction analysis.
`
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips,
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`415 F.3d at 1315.
`
`“[I]f a disputed term has ‘no previous meaning to those of ordinary skill in the prior art[,]
`
`its meaning, then, must be found [elsewhere] in the patent.’” Irdeto Access, Inc. v. Echostar
`
`Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (quotation omitted). This is because,
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`“[w]ithout a customary meaning of a term within the art, the specification usually supplies the
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`best context for deciphering claim meaning.” Honeywell Int’l Inc. v. Universal Avionics Sys.
`
`Corp., 488 F.3d 982, 991 (Fed. Cir. 2007).
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`2
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`VIZIO Ex. 1013 Page 0006
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`

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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 7 of 28 PageID #: 4396
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`
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`B.
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`Indefiniteness
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`In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court held that “§ 112, ¶ 2 []
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`require[s] that a patent’s claims, viewed in light of the specification and the prosecution history,
`
`inform those skilled in the art about the scope of the invention with reasonable certainty.” 134 S.
`
`Ct. 2120, 2129 (2014). As the Supreme Court noted, patents are addressed “not [] to lawyers, or
`
`even to the public generally, but rather to those skilled in the relevant art.” Id. at 2128. More
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`specifically, “the definiteness inquiry trains on the understanding of a skilled artisan at the time
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`of the patent application, not that of a court viewing matters post hoc.” Id. at 2130. To evaluate
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`the understanding of a skilled artisan, a threshold determination must be made as to what the
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`level of ordinary skill in the art actually is. See Nautilus, 134 S. Ct. at 2130 (explaining that
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`“claim construction calls for ‘the necessarily sophisticated analysis of the whole document,’ and
`
`may turn on evaluations of expert testimony.”) (citing Markman v. Westview Instruments, Inc.,
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`517 U.S. 370, 373 (1996)); see also Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
`
`(Jan. 20, 2015) (confirming that whether “a certain term of art had a particular meaning to a
`
`person of ordinary skill in the art at the time of the invention” is a factual determination). Only
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`then, can a Court proceed to evaluate how that person would understand the claims.
`
`IV. ANALYSIS
`
`A.
`
`“Concave” and “Convex”
`
`Term
`“concave”
`
`“convex”
`
`
`
`Defendants
`Curved inward, like the inner
`surface of a sphere
`
`Curved outward, like the outer
`surface of a sphere
`
`Plaintiff
`The words of the claims
`should be given their plain and
`ordinary meaning
`The words of the claims
`should be given their plain and
`ordinary meaning
`
`The dispute between the parties with respect to “concave” and “convex” relates to what
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`the plain and ordinary meaning of those terms actually is. Defendants contend that both concave
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`3
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`VIZIO Ex. 1013 Page 0007
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 8 of 28 PageID #: 4397
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`and convex should be construed to mean “curved [inward/outward] like the [inner/outer] surface
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`of a sphere.” Nichia, on the other hand, contends only that the terms should be given their plain
`
`and ordinary meaning. See Br. at 5. Nichia’s “plain and ordinary meaning” position, however,
`
`does not provide the necessary guidance regarding claim scope. For instance, Nichia contends
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`that those terms “describe features that are inwardly (or in the case of convex, outwardly) sloped,
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`curved, hollowed, and/or dented.” See id. (emphasis added). Thus, Nichia’s proposal is
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`inconsistent with the typical application of “concave” and “convex” and should be rejected.
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`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996) (Noting that “words in a
`
`claim are generally given their ordinary and customary meaning” (citations omitted)).
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`Defendants proposed constructions of “concave” and “convex” are supported by the
`
`patents’ specification. The single dictionary entry filed along with Nichia’s opening brief, as
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`well as each and every one of the dictionaries cited by Defendants, supports Defendants’
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`proposed constructions. See Ex. A, Webster’s II New College Dictionary (2001) (concave:
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`“curved like the inner surface of a ball”); Ex. B, Webster’s New World College Dictionary (3rd
`
`Ed. 1997) (concave: “hollow and curved like the inside of a bowl”); Ex. C, Oxford Dictionary of
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`Physics (6th Ed. 2009) (concave: “curving inwards”); Ex. D, The American Heritage Science
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`Dictionary (2nd Ed. 2011) (concave: “curved inward, like the inside of a circle or sphere”); Dkt.
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`152-8, http://www.mathopenref.com/concave.hmtl (showing a curved surface). Indeed, nowhere
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`in the written description of the asserted patents is any “concave” or “convex” feature described
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`as not being curved. Rather, the ’250 patent describes a “concave part” as “mortar-shaped” and
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`“expand[ing] in the opening direction.” See, e.g., ’250 patent at 7:8-9 (“The concave part 27
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`preferably expands in the opening direction…”); 7:66-67 (same); 17:24 (“having a mortar-
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`4
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`VIZIO Ex. 1013 Page 0008
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 9 of 28 PageID #: 4398
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`shaped concave part...”).2 A “mortar” is a bowl, for use with a pestle, and thus a “mortar-shape”
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`is a curved shape. Thus, the specification supports Defendants’ proposed construction.
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`Nichia focuses on Figure 2, asserting that because it does not depict curved lines, it is an
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`example of a non-curved concave feature. See Br. at 6 (citing ’250 patent at 6:12-19, Fig. 2). In
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`this regard, Nichia points to the patents’ description of a “generally conic trapezoidal concave
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`part,” asserting this disclosure demonstrates the concave feature shown in Figure 2 is not curved.
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`See Br. at 7. Again, Nichia is incorrect. First, the disclosure cited by Nichia refers to the
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`embodiment depicted in Figure 9, not Figure 2. See ’250 patent at 13:66-14:6 (describing a third
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`embodiment depicted in figures 9 and 10). Instead, the only description of the shape of the
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`concavity depicted in Figure 2 is that it is “mortar-shaped”—i.e., curved. (Id. at 17:22-24 (“The
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`resin package 20 has a generally rectangular parallelepiped shape having a mortar-shaped
`
`concave part 27.” (emphasis added))). Second, a feature can be both “generally conic
`
`trapezoidal” and curved, as shown by the figures depicting the very embodiment cited by Nichia:
`
`
`
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`2 The asserted patents disclose that “[t]he concave part 27 can adopt a generally circular shape,
`generally oval shape, or generally polygonal shape.” ’250 patent at 7:10-12. This is a reference
`to the top-down view of the LED package, not the shape of the concavity.
`
`5
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`VIZIO Ex. 1013 Page 0009
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 10 of 28 PageID #: 4399
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`Figure 9 illustrates a feature that is simultaneously generally trapezoidal, conic, and curved. It
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`therefore illustrates a feature that is “curved inward, like the surface of a sphere,” consistent with
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`both the plain and ordinary meaning of “concave” and Defendants’ construction.
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`Tellingly, Nichia does not dispute that Defendants’ dictionary definitions are consistent
`
`with the plain and ordinary meaning of the disputed terms. See Br. at 5-9. Nor could it. When
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`confronted with similar claim terms in other patents, numerous courts, using similar dictionary
`
`definitions, have construed “concave” and “convex” nearly identically to Defendants’ proposed
`
`constructions. See SAWT Inc. v. Joe Moore Constr. Inc., C.A. No. CV14-03653 JAK(AGRx),
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`2015 WL 12746709, at *9-10 (C.D. Cal. Mar. 16, 2015) (construing “convex” consistent with its
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`dictionary definition: “curved or rounded outward like the exterior of a sphere or circle.”); id.
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`(construing “concave” consistent with its dictionary definition: “hollowed or rounded inward like
`
`the inside of a bowl.”); Softspikes LLC v. MacNeil Eng’g Co., Inc., C.A. No. 08-469(GMS),
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`2010 WL 1031657, at *3-4 (D. Del. Apr. 29, 2010) (construing “convex” as “curved or rounded
`
`like the exterior of a sphere or circle”); Nelson A. Taylor Co., Inc. v. Ameritex Techs., Inc., C.A.
`
`No. 2:03-0263-CWH, 2006 WL 2708268, at *7 (D.S.C. Sept. 20, 2006) (“The correct
`
`construction of generally convex is consistent with the dictionary meaning of convex, which is
`
`curved outward like the exterior of a sphere.”); Speedplay, Inc. v. Bebop Inc., C.A. No. 95-
`
`00866-BTM, 1996 WL 33649180 (S.D. Cal. Sept. 25, 1996) (“Therefore, the court also
`
`construes the terms convex and concave, using the common definition, as follows: 1) convex—
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`generally curved or rounded as the exterior or a section of a spherical or circular form; and 2)
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`concave—a hollow within a mass or in a surface.”).
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`Nichia concedes that there are only two circumstances in which a claim term is not given
`
`its plain and ordinary meaning: (1) when the patentee acts as his own lexicographer; or (2) when
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`6
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`VIZIO Ex. 1013 Page 0010
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 11 of 28 PageID #: 4400
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`the patentee disavows the full scope of a claim term. See Dkt. 152 at 2 (citing Thorner v. Sony
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`Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal citations omitted)). But
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`Nichia gets it backwards—there is no disavowal needed for this Court to adopt Defendants’
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`constructions, which are consistent with the plain and ordinary meaning of “concave” and
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`“convex.” Rather, it is Nichia, the party seeking to broaden the plain and ordinary meaning of
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`the claims through claim construction, who must establish that it acted as its own lexicographer
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`and redefined “concave” and “convex.” See Thorner, 669 F.3d at 1365.
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`According to Nichia, because there is no clear disavowal, Defendants’ construction
`
`cannot be the correct one. See Br. at 7-8. But this makes no sense. Disavowal is an “intent to
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`deviate from the ordinary and accustomed meaning of a claim term.” See Thorner, 669 F.3d at
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`1366 (emphasis added). Here, however, Defendants proposed constructions are the plain and
`
`ordinary meanings of “concave” and “convex.” See, e.g., SAWT, 2015 WL 12746709, at *9-10.
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`Therefore, whether or not there was a “disavowal” is irrelevant.
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`To the contrary, although Nichia agrees that the plain and ordinary meaning of “concave”
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`and “convex” should be applied, it argues in its brief for an interpretation of those terms that
`
`extends beyond their plain and ordinary meaning. See Br. at 5-9. Unless the specification
`
`demonstrates lexicography, Nichia’s proposed broadening construction is improper. See
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`Vitronics, 90 F.3d at 1582. It is well-settled that “[t]o act as its own lexicographer, a patentee
`
`must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary
`
`meaning.” Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
`
`(quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). “It is not
`
`enough for a patentee to simply disclose a single embodiment or use a word in the same manner
`
`in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id.
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`7
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`VIZIO Ex. 1013 Page 0011
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 12 of 28 PageID #: 4401
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`(quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)).
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`There is nothing in the specification of the asserted patents to indicate that Nichia has acted as its
`
`own lexicographer. See id. As discussed above, Nichia resorts to identifying aspects of the
`
`specification that do not even support their proposed interpretation of the claim terms. These
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`statements do not amount to a clear definition other than the terms’ plain and ordinary meanings.
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`As a last resort, Nichia alleges that Defendants’ concave and convex constructions are
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`“inconsistent” with statements made to the U.S. Patent Office during the several inter partes
`
`review (“IPR”) petitions filed against Nichia’s asserted patents. See Br. at 26. But Nichia gives
`
`the game away by conceding that the “standard for claim construction in district court is different
`
`than before the Patent Office.” See Br. at 28. Nichia is correct: unlike district courts, the Patent
`
`Office applies a “broadest reasonable interpretation” standard when construing claims. PPC
`
`Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 756 (Fed. Cir. 2016)
`
`(“The Board applies the broadest reasonable construction standard even in IPRs which are
`
`litigation-like contested proceedings before the Board. . . . Thus, it is possible to have two
`
`different forums construing the same term in the same patent in a dispute involving the same
`
`parties but using different standards.”); see also Cuozzo Speed Techs., LLE v. Lee, 136 S. Ct.
`
`2131 (2016) (upholding the PTAB’s “broadest reasonable interpretation” standard). And this
`
`“broadest reasonable interpretation” standard applied before the Patent Office is broader than the
`
`Phillips “plain and ordinary meaning” standard for claim construction in district court.
`
`Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 868-69 (Fed. Cir. 2014) (“The
`
`broadest reasonable interpretation of a claim term may be the same as or broader than the
`
`construction of a term under the Phillips standard. But it cannot be narrower. Therefore, any
`
`statements made by a subset of Defendants during IPR proceedings involving the accused
`
`8
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`VIZIO Ex. 1013 Page 0012
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`Case 2:16-cv-01453-JRG Document 186 Filed 12/13/17 Page 13 of 28 PageID #: 4402
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`patents are not inconsistent with Defendants’ constructions—they simply apply a different,
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`broader standard.
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`For all of the above reasons, this Court should adopt Defendants’ plain and ordinary
`
`constructions of “concave” as “curved inward like the surface of a sphere,” and “convex” as
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`“curved outward like the surface of a sphere.”
`
`B.
`
`“Substantially Flat”
`
`Term
`“substantially flat”
`
`The parties dispute whether “substantially flat” satisfies the definiteness requirement
`
`Defendants
`indefinite
`
`Plaintiff
`Not bent
`
`of § 112. Here, the term “substantially flat” is indefinite because it does not inform a person of
`
`ordinary skill in the art about the scope of the invention with reasonable certainty.3 Katona
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`Dec’l., ¶¶ 46-56. The unmodified term “flat” is used throughout the specification to describe the
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`shape of the metal plates that comprise the lead frame. See, e.g., ’071 patent, 18:43-45. The
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`specification also contrasts “flat” metal plates with those that have “differences in level or
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`concavity and convexity.” ’071 patent, 9:22-24. But the specification provides zero guidance
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`regarding how flat a metal plate must be to be “substantially flat.” Indeed, the phrase
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`“substantially flat” appears only in the claims and did not have a well-known meaning to one of
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`skill in the art at the time the asserted patents were filed. Katona Dec’l, ¶ 47.
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`The claims of the ’071 patent require a light emitting device to have metal parts that (1)
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`are “substantially flat,” (2) have a “step portion, a concave portion, and/or a convex portion,” and
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`(3) have a “means for providing a difference in level” ’071 patent, claims 1, 12, and 13. Thus,
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`the term “substantially flat” does not appear in isolation with reference to the shape of the metal
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`parts. The specification distinguishes “flat” metal plates from those that have “differences in
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`3 The term “substantially flat” appears in claim 3 of the ’411 patent and claim 1 of the ’071 patent.
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`level or concavity and convexity” (’071 patent, 9:22-24), and, thus, the term “substantially”
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`must refer to some measure or degree of the metal plate that is flat versus some measure or
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`degree of metal plate that has convexities, concavities, or differences in level. Katona Dec’l.
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`¶¶ 49-50. The specification, however, does not provide any standard by which to measure the
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`amount (or degree) of flatness required for a surface to be “substantially flat.”
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`The specification includes embodiments with metal parts that represent varying degrees
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`of flatness. For example, the figures below (with metal parts highlighted) depict embodiments
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`whose metal parts from left to right have increasing levels of flatness, if measured by the
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`proportion of lead frame that has differences in level. Katona Dec’l., ¶ 51.
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`
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`The metal part in the fourth embodiment above (figure 1) is flat, and therefore should also be
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`considered “substantially flat.” But the specification does not provide any guidance or standard
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`to evaluate whether any or all of the remaining embodiments have metal parts that are
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`“substantially flat.” Without such a standard, how is a POSITA to determine whether a product
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`is infringing or falls fairly outside the scope of the patent because it is not “substantially flat”?
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`See Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010) (“Not all
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`terms of degree are indefinite. However, the specification must ‘provide[] some standard for
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`measuring that degree.’”). This guessing game renders “substantially flat” indefinite. Katona
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`Dec’l., ¶¶ 52-53.
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`Even if the court concludes that “substantially flat” is not indefinite, it should
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`nevertheless reject Nichia’s proposed construction for at least two reasons. First, Nichia’s
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`proposed construction is inconsistent with the claim language. Nichia argues that “substantially
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`flat” means “not bent,” and that there is no “need to evaluate a degree of flatness. . . .” Dkt. 152-
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`04, Spangler Dec’l., ¶ 62. But such a construction reads “substantially”—a term of degree—out
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`of the claims. See Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir.
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`2004) (“[I]nterpretations that render some portion of the claim language superfluous are
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`disfavored.”).
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`Second, Nichia’s construction conflates the shape of metal plates with the process by
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`which they are formed. To illustrate, Nichia’s expert states that “substantially flat “refers to
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`whether a metal part is formed according to a bending process.” Dkt. 152-04, Spangler Dec’l., ¶
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`62. Nichia points to the Wang prior art reference4 and argues that its leads are not “substantially
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`flat” because they are bent into their final shape. Dkt. 152, Pl’s Opening Br. at 9-10. But the
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`same shape could be created by cutting or etching a larger metal plate. Katona Dec’l., ¶¶ 55-56.
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`Under Nichia’s proposed construction, the lead in the Wang reference (left) would not be
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`“substantially flat” because it is bent into its final shape. But an identical lead formed by cutting
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`or etching along the red lines of a larger metal plate (right) would be “substantially flat” under
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`4 U.S. Patent No. 6,627,482.
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`Nichia’s proposed construction, since it is “not bent.” If, as both parties agree, the term
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`“substantially flat” refers to the shape of the metal part, Nichia’s construction cannot be correct.
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`C.
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`“Resin”
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`Term
`“resin”
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`Defendants
`Thermosetting Resin
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`Plaintiff
`Plain and ordinary meaning.
`No construction necessary
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`
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`The parties dispute whether the claimed resin can be any type of resin or whether it
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`means, as applicants asserted, a “thermosetting resin” as distinct from “thermoplastic resin.”5
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`Consistent with Defendants’ proposed construction, the inventors made clear that their alleged
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`invention was directed to an LED package using a thermosetting resin to which they ascribed the
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`claimed beneficial improvements.
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`“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
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`artisan after reading the entire patent.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358
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`(Fed. Cir. 2017) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc)).
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`Defendants’ construction relies on the specification to “understand what the patentee has claimed
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`and disclaimed.” SafeTCare Mfg. v. Tele-Made, Inc., 497 F.3d 1262, 1270 (Fed. Cir. 2007).
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`Here, the specification is replete with emphases of the purported advantages and improved uses
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`of thermosetting resin, along with the disapproval of thermoplastic resin in the prior art. These
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`repeated and unequivocal statements evidence a clear intent by the patentees to describe the
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`invention as being directed to the use of a thermosetting resin. See id. at 1270-71 (finding that
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`patentee disclaimed a pulling force where the “written description repeatedly emphasizes that the
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`motor of the patented invention applies a pushing force”); Bell Atl. Network Servs. v. Covad
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`5 The term “resin” appears in claims 1, 2, 7, 15, and 17 of the ’250 patent, claims 1, 2, 6, 7, 15,
`18, and 19 of the ’411 patent, and claims 1, 4, 7, 8, 11, 14, 15, 16, 17, 23, and 25 of the ’071
`patent.
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