`
`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. IPR2018-00437
`Patent 9,537,071
`____________
`
`
`
`DECLARATION OF DR. STANLEY R. SHANFIELD IN SUPPORT OF
`PETITIONER’S REPLY AND OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND CLAIMS
`
`
`
`
`
`
`VIZIO Ex. 1017 Page 00001
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ....................................................................................... 1
`
`II. MATERIALS REVIEWED ......................................................................... 2
`
`III. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 3
`
`IV. CLAIM CONSTRUCTION ......................................................................... 4
`
`A.
`
`B.
`
`Background and Legal Standards ....................................................... 4
`
`“Resin Package Comprising a Resin Part and a Metal Part”
`(Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶¶34-48)
`........................................................................................................... 6
`
`V.
`
`THE CHALLENGED CLAIMS 1, 2, 4–9, 11-12, 15–19, 21–23, AND
`25 OF THE ’071 PATENT ARE UNPATENTABLE .................................14
`
`A.
`
`B.
`
`Legal Standards ................................................................................14
`
`Loh Discloses “a Resin Package Comprising a Resin Part and a
`Metal Part” (Ex. 2008 (Schubert Decl. Supporting PO’s
`Response), ¶¶70-77)..........................................................................14
`
`C.
`
`Conclusion ........................................................................................18
`
`VI. THE PROPOSED SUBSTITUTE CLAIMS 27-34 ARE INVALID
`FOR LACK OF WRITTEN DESCRIPTION SUPPORT ............................19
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Proposed Substitute Claims...............................................................19
`
`Legal Standard ..................................................................................23
`
`Proposed Claim 27 Is Invalid for Lack of Written Description..........23
`
`Proposed Claim 28 Is Invalid for Lack of Written Description..........42
`
`Proposed Claim 31 Is Invalid for Lack of Written Description..........53
`
`Proposed Claims 29, 30, 32-34 Are Invalid for Lack of Written
`Description .......................................................................................54
`
`VII. THE PROPOSED CLAIM AMENDMENTS IMPROPERLY
`ENLARGE THE SCOPE OF THE CLAIMS ..............................................54
`
`A.
`
`B.
`
`C.
`
`D.
`
`Legal Standard ..................................................................................54
`
`Proposed Claim 27 Is Improperly Enlarged ......................................55
`
`Proposed Claim 28 Is Improperly Enlarged ......................................55
`
`Proposed Claims 29-34 Are Improperly Enlarged .............................56
`
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`VIII. THE PROPOSED SUBSTITUTE CLAIMS 27-34 ARE
`UNPATENTABLE .....................................................................................57
`
`A.
`
`3.
`
`4.
`5.
`6.
`
`7.
`
`8.
`
`9.
`
`The Proposed Substitute Claims 27-34 Are Unpatentable Under
`§ 103 Over Hsu, Koung, Urasaki, Suenaga, Mori, Glenn, Wang
`and/or Oshio .....................................................................................57
`1.
`Overview of U.S. Patent No. 6,770,498 (“Hsu”) .....................58
`2.
`Overview of U.S. Patent Publication No. 2008/0261339
`(“Koung”) ...............................................................................64
`Overview of Japanese Patent Publication No. 2007-
`235085 (“Urasaki”) .................................................................69
`Overview of U.S. Patent No. 6,433, 277 (“Glenn”) .................72
`Overviews of Mori, Wang, and Oshio .....................................74
`Invalidity of Proposed Substitute Claim 27 Over Hsu in
`view of the Knowledge of a POSITA (Ground 1); Hsu in
`view of Urasaki (Ground 2); and Hsu in view of Koung
`and Urasaki (Ground 3) ..........................................................75
`Invalidity of Proposed Substitute Claim 28 Over Hsu in
`view of the Knowledge of a POSITA (Ground 1) and
`Hsu in view of Koung (Ground 4) ......................................... 118
`Invalidity of Proposed Substitute Claim 29 Over Hsu in
`view of the Knowledge of a POSITA (Ground 1); Hsu in
`view of Urasaki (Ground 2); and Hsu in view of Koung
`and Urasaki (Ground 3) ........................................................ 156
`Invalidity of Proposed Substitute Claim 30 Over Hsu in
`view of Suenaga (Ground 5) and Hsu in view of Koung
`and Suenaga (Ground 6) ....................................................... 157
`Invalidity of Proposed Substitute Claim 31 Over Hsu in
`view of Koung, Urasaki, Mori, and Glenn (Ground 7) .......... 162
`Invalidity of Proposed Substitute Claim 32 Over Hsu in
`view of Wang and Oshio (Ground 8) and Hsu in view of
`Koung, Wang, and Oshio (Ground 9).................................... 175
`Invalidity of Proposed Substitute Claim 33 Over Hsu in
`view of Wang and Oshio (Ground 8) and Hsu in view of
`Koung, Wang, and Oshio (Ground 9).................................... 184
`Invalidity of Proposed Substitute Claim 34 Over Hsu in
`view of Koung, Wang, and Oshio (Ground 9) ....................... 193
`
`10.
`
`11.
`
`12.
`
`13.
`
`B.
`
`The Proposed Substitute Claims 27-34 Are Unpatentable Under
`§ 103 Over Hsu, Lin, Urasaki, Suenaga, Mori, Glenn, Wang
`
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`3.
`
`4.
`5.
`6.
`
`7.
`
`8.
`
`9.
`
`and/or Oshio ................................................................................... 202
`1.
`Overview of U.S. Patent No. 6,770,498 (“Hsu”) ................... 202
`2.
`Overview of U.S. Patent Publication No. 2007/0126020
`(“Lin”) .................................................................................. 202
`Overview of Japanese Patent Publication No. 2007-
`235085 (“Urasaki”) ............................................................... 207
`Overview of U.S. Patent No. 6,433, 277 (“Glenn”) ............... 207
`Overviews of Mori, Wang, and Oshio ................................... 207
`Invalidity of Proposed Substitute Claim 27 Over Hsu, Lin,
`and Urasaki (Ground 10)....................................................... 207
`Invalidity of Proposed Substitute Claim 28 Over Hsu and
`Lin (Ground 11) .................................................................... 229
`Invalidity of Proposed Substitute Claim 29 Over Hsu, Lin,
`and Urasaki (Ground 10)....................................................... 249
`Invalidity of Proposed Substitute Claim 30 Over Hsu, Lin,
`and Suenaga (Ground 12) ..................................................... 250
`Invalidity of Proposed Substitute Claim 31 Over Hsu, Lin,
`Urasaki, and Glenn (Ground 13) ........................................... 251
`Invalidity of Proposed Substitute Claim 32 Over Hsu in
`view of Lin, Wang, and Oshio (Ground 14) .......................... 257
`Invalidity of Proposed Substitute Claim 33 Over Hsu in
`view of Lin, Wang, and Oshio (Ground 14) .......................... 261
`Invalidity of Proposed Substitute Claim 34 Over Hsu in
`view of Lin, Wang, and Oshio (Ground 14) .......................... 268
`
`10.
`
`11.
`
`12.
`
`13.
`
`C.
`
`D.
`
`
`
`Secondary Considerations ............................................................... 274
`
`Conclusion ...................................................................................... 275
`
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`Case No. IPR2018-00437
`U.S. Patent No. 9,537,071
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`I, Dr. Stanley Shanfield, have previously been asked by VIZIO, Inc.
`
`(“Petitioner”) to testify as an expert witness in this action. As part of my work in
`
`this action, I have been asked by Petitioner to respond to certain assertions offered
`
`by Nichia Corporation (“Patent Owner”) in this proceeding concerning U.S. Patent
`
`No. 9,537,071 (“the ‘071 patent”). I hereby declare under penalty of perjury under
`
`the laws of the United States of America, as follows: 1
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am the same Stanley Shanfield who provided a Declaration in this
`
`proceeding, executed on January 12, 2018 as Exhibit 1003 (“January 12, 2018
`
`Declaration”), which, including its appendices, is incorporated by reference herein
`
`in its entirety. Ex. 1003 (January 12, 2018 Declaration), ¶¶ 1-182, Appendices A-B.
`
`2. My experience and qualifications are provided along with my January
`
`12, 2018 Declaration and CV.
`
`3.
`
`I offer this declaration in rebuttal to certain assertions in (1) Patent
`
`Owner’s Response (Paper 22) (“POR”) and the Declaration of Dr. E. Fred
`
`Schubert (Ex. 2008); and (2) Patent Owner’s Contingent Motion To Amend
`
`
`1 Throughout this Rebuttal Declaration, all emphasis and annotations are added un-
`
`less noted.
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`U.S. Patent No. 9,537,071
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`Claims (Paper 24) (“Motion to Amend”) and the Declaration of Dr. E. Fred
`
`Schubert (Ex. 2019).
`
`II. MATERIALS REVIEWED
`
`4.
`
`In connection with my study of the POR, the Motion to Amend, and
`
`supporting declarations and reaching the conclusions stated herein, I have reviewed
`
`a number of additional documents. In addition to those mentioned in my previous
`
`declaration, I have reviewed the following additional documents:
`
`• POR and its accompanying exhibits
`
`• Motion to Amend and its accompanying exhibits
`
`• All other documents referenced herein.
`
`5. My opinions are also based upon my education, training, research,
`
`knowledge, and personal and professional experience.
`
`6.
`
`I hereby declare that all statements made herein are of my own
`
`knowledge, are true, and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under 18 U.S.C. §1001. If called to testify as to the truth
`
`of the matters stated herein, I could and would testify competently.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`7.
`
`In my January 12, 2018 Declaration, I opined that a person of ordinary
`
`skill in the art (“POSITA”) as of September 3, 2008 (the claimed priority date of
`
`the ‘071 patent) would have a minimum of a Bachelor’s degree in Physics,
`
`Electrical Engineering, Material Science, or a related field, and approximately 5
`
`years of professional experience in the field of semiconductor technology,
`
`including manufacturing and packaging processes for light emitting devices. Ex.
`
`1003 (Declaration), 17. Additional graduate education could substitute for
`
`professional experience, or significant experience in the field could substitute for
`
`formal education. Id. I have reviewed Dr. Schubert’s opinion regarding the level of
`
`skill of a POSITA with respect to the ‘071 patent (requiring (i) a Ph.D. degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 3 years of practical experience in industry; (ii) a Master’s degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 5 years of practical experience in industry; or (iii) a Bachelor’s degree in
`
`Electrical Engineering, Applied Physics, Materials Science, or a related field, and
`
`about 10 years of practical experience in industry.”). Ex. 2008 (Schubert
`
`Declaration in Support of POR) 29; Ex. 2019 (Schubert Declaration In Support of
`
`Patent Owner’s Contingent Motion to Amend). Under either my definition or Dr.
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`Schubert’s definition, I met or exceeded the level of skill required as of September
`
`3, 2008, and my opinions are the same.
`
`IV. CLAIM CONSTRUCTION
`
`A. Background and Legal Standards
`
`8.
`
`In the January 12, 2018 Declaration, I had been asked to assume that
`
`all claim terms have their plain and ordinary meaning under the broadest
`
`reasonable interpretation consistent with the specification. I offered no opinion on
`
`the merits of claim constructions; however, I reserved my right to so in the future.
`
`See January 12, 2018 Declaration §VI.C. I understand that the Board has since
`
`provided claim construction analysis of “resin package” but did not formally
`
`construe the term. Inst. Dec. §III.A. I further understand that Dr. Schubert
`
`subsequently proposed a constructions of that term. Ex. 2008 (Schubert Decl.
`
`Supporting PO’s Response), ¶¶34-48.
`
`9.
`
`I have been advised that for purposes of this Inter Partes Review, the
`
`standard for claim construction of terms within the claims of the patent is that
`
`claim terms are generally given their plain and ordinary meaning under the
`
`broadest reasonable interpretation in light of the specification, which is a different
`
`standard than federal district court litigation.
`
`10.
`
`I have been advised that claims must be construed in light of and
`
`consistent with the patent’s intrinsic evidence. Intrinsic evidence includes the
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`claims themselves, the written disclosure in the specification, and the patent’s
`
`prosecution history, including the prior art that was considered by the United States
`
`Patent and Trademark Office (“PTO”).
`
`11.
`
`I have been advised that the language of the claims helps guide the
`
`construction of claim terms. The context in which a term is used in the claims can
`
`be highly instructive.
`
`12.
`
`I have been advised that the specification of the patent is the best
`
`guide to the meaning of a disputed claim term. Embodiments disclosed in the
`
`specification help teach and enable those of skill in the art to make and use the
`
`invention, and are helpful to understanding the meaning of claim terms.
`
`Nevertheless, in most cases, preferred embodiments and examples appearing in the
`
`specification should not be read into the claims.
`
`13. While claim terms are generally given their plain and ordinary
`
`meaning, I have been advised that the plain and ordinary meaning may not apply
`
`where the patentee disavows the full scope of the claim term either in the
`
`specification or during prosecution.
`
`14.
`
`I also have been advised that a patentee’s intent to disavow claim
`
`scope must be clear and unmistakable when considered in the context of the
`
`prosecution history as a whole.
`
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`15.
`
`I have been advised that statements made by the inventor during
`
`continued prosecution of a related patent application can be relevant to claim
`
`construction.
`
`16. While dictionaries might be relevant to claim construction, I have
`
`been advised that dictionary definitions should not be applied if they conflict with
`
`the intrinsic record, including the claims, specification, and prosecution.
`
`17.
`
`I have been advised that claim constructions that do not exclude
`
`preferred embodiments disclosed in the specification are preferred over claim
`
`constructions that exclude preferred embodiments.
`
`18. For the reasons discussed further below, in my opinion Dr. Schubert’s
`
`proposed construction of “a resin package comprising a resin part and a metal part”
`
`is incorrect.
`
`B.
`
`“Resin Package Comprising a Resin Part and a Metal Part”
`(Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶¶34-48)
`
`19. Dr. Schubert opines that the term “a resin package comprising a resin
`
`part and a metal part” is defined as referring to a resin package, a resin part, and a
`
`metal part for “a singulated light emitting device” both expressly (Ex. 2008
`
`(Schubert Decl. Supporting PO’s Response), ¶¶35-38), and implicitly (Ex. 2008
`
`(Schubert Decl. Supporting PO’s Response), ¶¶39-48). For the reasons explained
`
`below, I disagree. The term “resin package comprising a resin part and a metal
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`part” should be given its plain and ordinary meaning because the claims and
`
`specification uses the term consistent with that meaning.
`
`20. The claim language supports the plain meaning. All of the
`
`Challenged Claims (claims 1, 2, 4–9, 11, 12, 15–19, 21–23, and 25 of the ’071
`
`patent) are apparatus claims that recite the structure of “a light emitting device”
`
`comprising “a resin package comprising a resin part and a metal part.” Ex. 1001
`
`(’071 patent), 19:17, 20:29, 20:47. The claims do not recite “singulated” and do
`
`not recite forming a light emitting device from “multiple devices.” The applicant
`
`was clearly aware of the word “singulated” and the concept of forming a single
`
`LED device from multiple LED devices, because those concepts are discussed in
`
`the specification, but the applicant did not include the word or concept in the
`
`claims. Because the claims do not recite singulation, or the general concept of
`
`cutting to obtain multiple devices, the claim language does not support Dr.
`
`Schubert’s proposed construction.
`
`21. The intrinsic record also supports the plain meaning. The terms “resin
`
`package,” “resin part,” or “metal part” are not defined anywhere in the ’071
`
`patent’s specification. In addition, the figures in the specification that show “a
`
`resin package” are consistent with my understanding of the plain meaning of the
`
`term as used in the field. E.g., Ex. 1001 (’071 patent), 6:37 (“a resin package 20”),
`
`Figs. 1, 2, 6, 9, 11, 12, 13; Ex. 1039 (IEEE Standard Glossary of Computer
`
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`Hardware Terminology (1995)), 66 (“package: An external container, substrate, or
`
`platform used to hold a semiconductor or circuit.”).
`
`22. Moreover,
`
`I understand
`
`that U.S. Patent Application No.
`
`2005/0151149 to Chia et al. (“Chia’) is cited on the face of the ’071 patent. Ex.
`
`1020. Even though Chia includes no disclosure of multiple devices or singulation,
`
`a POSITA would have understood that the reference discloses a “resin package.” I
`
`understand that during prosecution of the ’870 patent, which is in the same family
`
`as the ’071 patent, the Examiner found that Chia discloses an LED “including a
`
`resin package including a resin part.” Ex. 1018 (’870 File History, Office Action),
`
`8. Specifically, the Examiner found that Chia discloses a resin portion 525 and
`
`first and second leads 520 and 515. Ex. 1018 (’870 File History, Office Action),
`
`8-9. Thus, consistent with intrinsic record and the term’s plain and ordinary
`
`meaning, the term “resin package” does not require singulation, a post-singulation
`
`device, or a resin package formed from multiple light emitting devices.
`
`23. Dr. Schubert’s proposed construction incorrectly requires that the
`
`resin package must be for “a singulated light emitting device” formed from
`
`“multiple devices.” Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶¶20,
`
`23, 35, 38-39, 46-48. These additional limitations are not found in the claim.
`
`24. Dr. Schubert opines that “[t]he Detailed Description section of
`
`the ’071 Patent begins with a summary of the problems solved by aspects of the
`
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`invention, as well as a set of definitions for key terms used throughout the
`
`specification.” Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶36 (citing
`
`Ex. 1001 (’071 patent), 3:26-36). Dr. Schubert further asserts that that the terms
`
`“resin package,” “resin part,” and “metal part” were expressly defined as referring
`
`to parts of a singulated light emitting device. Ex. 2008 (Schubert Decl. Supporting
`
`PO’s Response), ¶¶35-38. I disagree. The quoted portion of the specification relied
`
`on by Dr. Schubert states that “[i]n this description, terms such as leads, a resin
`
`part, and resin package are used for a singulated light emitting device.” Ex. 1001
`
`(’071 patent), 3:33-37. This statement, however, does not define the terms “resin
`
`package,” “resin part,” and “metal part.” Rather, the sentence provides context for
`
`the specification’s discussions that include those terms. Therefore, contrary to Dr.
`
`Schubert’s opinion that “it would be clear to a POSITA that the ’071 Patent
`
`expressly defines these terms to refer to a singulated light emitting device” (Ex.
`
`2008 (Schubert Decl. Supporting PO’s Response), ¶35), the term “resin package”
`
`is not expressly defined in the ’071 patent.
`
`25. Patent Owner asserts that I used the cited statement from the
`
`specification to understand the term “resin package” and that I have now taken a
`
`different position. POR 9-10 (citing Ex. 2009 (Shanfield May 21, 2018 Dep. Tr.),
`
`45:2-58:2, 44:16-45:1). This is incorrect, and Patent Owner misrepresents my
`
`testimony. I did not agree that the specification defines the term “resin package.”
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`Indeed, my testimony following Patent Owner’s quoted portion made clear that the
`
`terms such as “resin package” are not defined by the cited language in the
`
`specification (corresponding to Ex. 1001 (’071 patent), 3:33-37):
`
`Q And the part that you read to me in Column 2, lines 59 to 62,
`
`that's your understanding. Correct? That's how you use those terms.
`
`Correct? [¶] … A No. That’s not what I said. [¶] … Q Did you use the
`
`terms "resin-molded body" and "resin package" as they are described
`
`in Column 2, lines 59 to 62, in doing your analysis and opinions you
`
`gave in this case? [¶] A No. What I was explaining earlier is, I used
`
`their explanation in Column 2, 59 through 65, 64, to understand and
`
`interpret what the '250 patent is explaining and saying.
`
`Ex. 2009 (Shanfield May 21, 2018 Dep. Tr.), 46:18-47:21.
`
`26. Dr. Schubert’s proposed construction is also inconsistent with the
`
`patent’s claims to a single “light emitting device” instead of multiple devices. In
`
`his declaration, Dr. Schubert repeatedly relies on disclosures in the specification of
`
`“multiple” devices. E.g., Ex. 2008 (Schubert Decl. Supporting PO’s Response),
`
`¶¶20 (“the ’071 Patent discloses a product made by ‘singulation’ in which multiple
`
`devices are cut to form a plurality of singulated resin packages”), 23 (“multiple
`
`light emitting devices”), 24 (“The following illustration (based on FIG. 5) shows
`
`how multiple singulated devices can result from a single molded lead frame”), 36
`
`(“multiple light emitting devices”), 38 (“The patent repeatedly discusses that
`
`manufacturing multiple light emitting devices quickly and efficiently is a stated
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`goal.”), 44 (“results in multiple devices upon cutting”), 48 (“it is possible to
`
`manufacture multiple light emitting devices”). This further demonstrates that the
`
`applicant could have claimed multiple devices, but did not. The applicant instead
`
`elected to claim “[a] light emitting device.” Ex. 1001 (’071 patent), 19:17, 20:29,
`
`20:47.
`
`27. Dr. Schubert’s proposed construction is also inconsistent with the
`
`specification. For example, the patent discloses that “singulation is started from
`
`the outer upper surface of the resin package.” Ex. 1001 (’071 patent) 15:9-13. This
`
`statement indicates that “resin package” can refer to a device that has not yet been
`
`singulated. Thus, the specification uses the term “resin package” in a way that is
`
`inconsistent with Dr. Schubert’s proposed construction.
`
`28. Dr. Schubert’s proposed construction would also change the scope of
`
`the claims, which are apparatus claims, to depend on how the light emitting device
`
`is manufactured. I have been advised that it is improper to construe an apparatus
`
`claim in a way that would depend on how the light emitting device is manufactured.
`
`As Dr. Schubert has repeatedly acknowledges, “singulation” or “singulating” is a
`
`manufacturing process. For example, Dr. Schubert equates the specification’s use
`
`of the “cutting” process to “singulation” and explains that “Cutting a molded lead
`
`frame to produce multiple, individual devices is a type of singulation.” Ex. 2008
`
`(Schubert Decl. Supporting PO’s Response), ¶44 (citing Ex. 1001 (’071 patent),
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`16:42-51, 17:20-23, 17:56-59). Dr. Schubert also refers to a singulated device as
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`being “post-singulation.” Ex. 2008 (Schubert Decl. Supporting PO’s Response),
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`¶¶35, 37, 38, 41, 71, 73, 76. In addition, Dr. Schubert explains that the “first three
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`embodiments …result in many singulated devices upon singulation.” Ex. 2008
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`(Schubert Decl. Supporting PO’s Response), ¶43. In a footnote, Dr. Schubert
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`makes clear that “the act of singulation refers to creating multiple individual
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`devices.” Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶44 n.3. Thus,
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`Dr. Schubert’s construction would improperly add manufacturing steps into the
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`apparatus claims.
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`29. On the other hand, if Dr. Schubert or Patent Owner argues that they
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`are not interpreting the claims to cover a manufacturing process, then Dr.
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`Schubert’s proposed construction fails to describe what would be required by the
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`structure of a resin package for “a singulated light emitting device” beyond what is
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`already expressly stated in the claims. For example, neither Patent Owner nor Dr.
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`Schubert has asserted that the final structure of a resin package, resin part, or metal
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`part themselves would necessarily be any different depending on whether or not
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`the device was singulated from multiple light emitting devices. Dr. Schubert states
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`only that “[a] singulated device … is a unit that has been individualized from a
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`larger batch.” Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶44 n.3.
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`However, the structure of the claimed light emitting device could be manufactured
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`without “singulat[ing] from … multiple, pre-singulation devices.” POR 12 (citing
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`Ex. 2008 (Schubert Decl. Supporting PO’s Response), ¶¶ 42-48). Dr. Schubert is
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`improperly reading limitations from the manufacturing process described in the
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`specification into the apparatus claims, which recite “[a] light emitting device.” Ex.
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`1001 (’071 patent), 19:17, 20:29, 20:47.
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`30. Dr. Schubert opines that “the term ‘a resin package comprising a resin
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`part and a metal part’ … is implicitly defined through its repeated, consistent, and
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`exclusive use in the specification.” Ex. 2008 (Schubert Decl. Supporting PO’s
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`Response), ¶39. I disagree. As explained above, Dr. Schubert fails to account for
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`the express claim language directed to a single device, or the fact that the claims
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`are apparatus claims rather than method claims. Moreover, as explained above, the
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`specification did not consistently use the term. For example, the patent discloses
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`that “singulation is started from the outer upper surface of the resin package.” Ex.
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`1001 (’071 patent) 15:9-13. This usage is inconsistent with Dr. Schubert’s
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`proposed construction. As explained above, other parts of the intrinsic record
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`further support the plain meaning and are inconsistent with Dr. Schubert’s proposal.
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`31. For these reasons, the term “resin package comprising a resin part and
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`a metal part” should be given its plain and ordinary meaning, and should not be
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`construed to require that the device be “singulated” from “multiple light emitting
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`devices.”
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`V. THE CHALLENGED CLAIMS 1, 2, 4–9, 11-12, 15–19, 21–23, AND 25
`OF THE ’071 PATENT ARE UNPATENTABLE
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`A. Legal Standards
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`32. My understanding of the applicable legal standards is discussed in the
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`January 12, 2018 Declaration. Ex. 1003 (January 12, 2018 Declaration), ¶¶56-61.
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`B.
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`Loh Discloses “a Resin Package Comprising a Resin Part and a
`Metal Part” (Ex. 2008 (Schubert Decl. Supporting PO’s Response),
`¶¶70-77)
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`33. As I discussed in my January 12, 2018 Declaration, Loh discloses and
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`renders obvious this limitation. January 12, 2018 Declaration ¶¶56-60. Dr.
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`Schubert opines that “Loh does not disclose a light emitting device comprising a
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`resin package, as claimed.” Ex. 2008 (Schubert Decl. Supporting PO’s Response),
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`¶¶70-73. I disagree. As discussed in Section IV.B, Dr. Schubert’s proposed
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`construction of “resin package comprising a resin part and a metal part”
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`improperly narrows the term to be limited to a “singulated” device formed from
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`“multiple light emitting devices.” Under the plain and ordinary meaning, Loh
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`discloses a “resin package comprising a resin part and a metal part.”
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`34. As explained in my January 12, 2018 Declaration and as shown in the
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`figures below, Loh discloses a resin package (e.g., “package 260”) comprising a
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`resin part (e.g., “package body 230,” in green) and a metal part including at least
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`two metal plates (e.g., “leads 204a-d and 206a-d,” in blue). Ex. 1003 (January 12,
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`2018 Declaration) ¶¶82-86; Ex. 1004 (Loh) ¶¶74-77, 79-80, 103, Figs. 5-8.
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`Ex. 1004 (Loh), Fig. 5.
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`
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`Ex. 1004 (Loh), Fig. 7.
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`35. Loh also discloses a “resin package comprising a resin part and a
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`metal part” even under Dr. Schubert’s incorrect proposed construction, which
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`would require that the resin package must be for “a singulated light emitting device”
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`formed from “multiple devices.”
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` For example, Loh repeatedly discloses
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`“package(s).” Ex. 1004 (Loh), ¶¶2, 7, 17, 37, 85, 87. Loh further discloses that its
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`leadframe “may be made, for example, by milling, stamping, and/or rolling a metal
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`strip to form a leadframe having areas of different cross-sectional thickness.” Ex.
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`1004 (Loh), ¶93. A POSITA would have understood from Loh’s express
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`disclosure of a “metal strip” that Loh’s light emitting device is formed from
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`multiple light emitting devices on a single lead frame, which are then singulated.
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`In addition, this is confirmed by publications that Loh incorporates by reference.
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`For example, Loh incorporates by reference U.S. Patent Application Publications
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`2004/0126913 and 2005/0269587 (also both to Loh), which each depict examples
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`of such metal strips and show that the final device is singulated from a strip
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`containing multiple devices. Ex. 1004 (Loh), ¶3; Ex. 1022 (U.S. 2005/0269587);
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`Ex. 1021 (U.S. 2004/0126913). Similar to Loh, the ’587 publication discloses a
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`“leadframe strip” that is “fabricated by stamping” or “using a chemical etching or
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`milling processes.” Ex. 1022 (U.S. 2005/0269587), ¶36. As the ’587 publication
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`further discloses and shows, “a leadframe strip can be fabricated to manufacture
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`multiple light emitting die packages simultaneously”:
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`E.g., Ex. 1022, (U.S. 2005/0269587), ¶35, Fig. 3C. Also similar to Loh, the ’913
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`publication discloses a “leadframe die” that is “fabricated by stamping” or “using
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`etching processes.” Ex. 1021 (U.S. 2004/0126913), ¶28. The ’913 publication
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`further discloses and shows that “a leadframe die can be fabricated to manufacture
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`multiple light emitting die packages simultaneously”:
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`E.g., Ex. 1021, (U.S. 2004/0126913), ¶28, Fig. 3. This confirms that a POSITA
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`would have understood that Loh’s “metal strip” is used to manufacture multiple
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`light emitting die packages simultaneously. Thus, under either the proper
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`construction or Dr. Schubert’s improperly narrow proposed construction, Loh
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`discloses “a resin package comprising a resin part and a metal part.”
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`C. Conclusion
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`36.
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`In summary, and as outlined in t