Filed on behalf of: Nichia Corporation Paper ____
`
`
`
`
` Date filed: May 23, 2018
`
`By: Martin M. Zoltick, Lead Counsel
`Robert P. Parker (pro hac admission pending)
`
`Derek F. Dahlgren (pro hac admission pending)
`
`
`Michael H. Jones, Back-up Counsel
`
`Mark T. Rawls, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: mzoltick@rfem.com
`
` rparker@rfem.com
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` ddahlgren@rfem.com
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` mjones@rfem.com
`
` mrawls@rfem.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC AND L G SOURCING, INC.,
`Petitioners
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00601
`Patent 9,490,411
`_______________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`

`

`Case IPR2018-00601
`Patent 9,490,411
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`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iii 
`
`EXHIBIT LIST .......................................................................................................... v 
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  BACKGROUND OF THE TECHNOLOGY .................................................. 4 
`
`A.  Overview of LED Technology .............................................................. 4 
`
`B. 
`
`The ʼ411 patent ...................................................................................... 5 
`
`III.  PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`
`A. 
`
`B. 
`
`Field of the Invention/Relevant Art ...................................................... 8 
`
`Level of Ordinary Skill ......................................................................... 8 
`
`IV.  RELEVANT CLAIM TERMS AND CLAIM CONSTRUCTION ................ 9 
`
`V.  ALLEGED PRIOR ART REFERENCES ..................................................... 10 
`
`A. 
`
`Loh ....................................................................................................... 10 
`
`B.  Mori ..................................................................................................... 11 
`
`C.  Wang .................................................................................................... 11 
`
`D.  Oshio .................................................................................................... 12 
`
`VI.  GROUNDS IN THE PETITION ................................................................... 13 
`
`VII.  STATEMENT OF SPECIFIC REASONS WHY NO IPR SHOULD
`BE INSTITUTED FOR THE CHALLENGED CLAIMS ............................ 14 
`
`A.  Ground 1 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 16 
`
`B. 
`
`Ground 2 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 24 
`
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`Ground 3 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 27 
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`Case IPR2018-00601
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`C. 
`
`D.  Ground 4 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 27 
`
`E. 
`
`Ground 5 Fails to Demonstrate a Reasonable Likelihood that
`any Challenged Claim Would be Found Unpatentable ....................... 28 
`
`VIII. CONCLUSION .............................................................................................. 28 
`
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`ii
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`TABLE OF AUTHORITIES
`
`Cases 
`
`Case IPR2018-00601
`Patent 9,490,411
`
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 24
`AVX Corp. v. Greatbatch, Ltd.,
`IPR2014-00697, Paper 57 (PTAB Oct. 21, 2015) .................................................. 9
`Cohesive Techs., Inc. v. Waters Corp.,
`543 F.3d 1351 (Fed. Cir. 2008) ............................................................................ 27
`Duro-Last, Inc. v. Custom Seal, Inc.,
`321 F.3d 1098 (Fed. Cir. 2003) ............................................................................ 27
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper 12 (PTAB July 31, 2013) ................................................ 24
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................ 26
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ............................................................................ 26
`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) .............................................................................. 9
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ....................................................................................... 24, 25
`Lake Cable, LLC v. Windy City Wire Cable and Tech. Prods., LLC,
`IPR2013-00528, Paper 11 (PTAB Feb. 19, 2014) ................................................ 25
`Naughty Dog, Inc.,
`IPR2014-00197, Paper 11 (PTAB May 28, 2014) ........................................ 24, 25
`Nestle USA, Inc. v. Steuben Foods, Inc.
`686 Fed. Appx. 917 (Fed. Cir. 2017) .................................................................... 10
`Nichia Corp. v. Everlight Ams., Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) ............................................................... 4, 8, 9, 10
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 24
`Toshiba Corp. v. Intellectual Ventures II LLC,
`IPR2014-00201, Paper 11 (PTAB May 21, 2014) ............................................... 26
`
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`iii
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`Wright Med. Tech., Inc. v. Orthophoenix, LLC,
`IPR2014-00912, Paper 9 (PTAB Dec. 16, 2014) ................................................. 25
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`Case IPR2018-00601
`Patent 9,490,411
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`
`Statutes 
`
`35 U.S.C. § 314(a) .............................................................................................. 1, 14
`
`Other Authorities 
`
`37 C.F.R. § 42.104(b) .............................................................................................. 14
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. § 42.108(c) ............................................................................................... 14
`MPEP 2111.01 § IV ................................................................................................. 10
`
`Rules 
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 14
`
`
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`iv
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`Case IPR2018-00601
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`
`EXHIBIT LIST
`
`Declaration of Dr. Stanley R. Shanfield, dated June 16, 2017, in
`IPR2017-01608 (Ex. 1003 in that IPR).
`Declaration of Dr. Stanley R. Shanfield, dated June 16, 2017, in
`IPR2017-01623 (Ex. 1103 in that IPR).
`Dandan Zhu and Colin J. Humphreys, Solid-State Lighting Based
`on Light Emitting Diode Technology, Chapter 5 (2016).
`Sheng Liu and Xiaobing Luo, LED Packaging for Lighting
`Applications: Design, Manufacturing and Testing, Chemical
`Industry Press (2011).
`Petition for Inter Partes Review of U.S. Patent No. 9,537,071 in
`IPR2018-00699, dated February 26, 2018.
`U.S. Patent No. 9,537,071.
`Declaration of Dr. Stanley R. Shanfield, dated February 20, 2018,
`in IPR2018-00699 (Ex. 1003 in that IPR).
`
`2001
`
`2002
`
`2003
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`2004
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`2005
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`2006
`2007
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`v
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`

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`I.
`
`INTRODUCTION
`
`Case IPR2018-00601
`Patent 9,490,411
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`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, Nichia Corporation
`
`(“Nichia” or “Patent Owner”), submits this Preliminary Response to the Petition
`
`for Inter Partes Review (“IPR”) of U.S. Patent No. 9,490,411 (the “ʼ411 patent”)
`
`(Ex. 1001) filed by Petitioners, Lowe’s Companies, Inc., Lowe’s Home Centers,
`
`LLC, and L G Sourcing, Inc. (collectively “Petitioners”).
`
`Petitioners are challenging claims 1-3, 5-8, 10, 13, 15-20 (the “Challenged
`
`Claims”).
`
`Petitioners have failed to meet the threshold required by 35 U.S.C. § 314(a)
`
`for instituting an IPR of the Challenged Claims of the ʼ411 patent for two reasons,
`
`and thus institution should be denied.
`
`First, the Challenged Claims require that “both a part of the metal part and a
`
`part of the resin part are disposed in a region below an upper surface of the metal
`
`part, on four outer lateral surfaces of the resin package.” E.g., Ex. 1001 at 19:45-
`
`48 (emphasis added). U.S. Patent Publication No. 2009/0012036 (“Loh”) (Ex.
`
`1004) does not disclose this limitation, Petitioners do not assert that any of the
`
`other asserted references cure that deficiency, and Petitioners make no showing
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`that such a limitation would have been obvious to a person skilled in the art.
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`Paper 1 at 15.
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`Indeed, Petitioners’ annotated Figure 7 (id.) from Loh plainly demonstrates
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`that on two alleged outer lateral surfaces of the device there is no resin part
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`disposed in a region below an upper surface of the metal part (see alleged outer
`
`lateral surfaces identifying metal leads 206 and 204). That is, the metal leads that
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`extend from the package body 230 on two sides have no resin below them. Ex.
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`1004 at Fig. 7. For at least this reason, Loh does not anticipate the Challenged
`
`Claims of the ʼ411 patent (Ground 1). And because Petitioners do not assert that
`
`any of the other asserted references cure this deficiency and make no argument as
`
`to why that limitation—and the corresponding claims—would have been obvious
`
`in view of Loh either alone (Ground 2) or in combination with other references
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`
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`2
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`

`

`(Grounds 3-5), Petitioners have failed to make the requisite showing for instituting
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`Case IPR2018-00601
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`IPR for this first, independent reason.
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`Second, the Challenged Claims of the ʼ411 patent refer to a “resin package.”
`
`That term is expressly defined in the ʼ411 patent to refer to “singulated light
`
`emitting device[s].” Ex. 1001 at 3:33-36. However, Loh does not disclose a
`
`singulated light emitting device. Instead, it describes only an individual modular
`
`device and makes no reference to singulation of multiple devices. Ex. 1004 at ¶7
`
`(“Embodiments of the invention provide a modular package for a light emitting
`
`device.”); cf. Ex. 2001 at ¶ 58 (Declaration of Dr. Stanley R. Shanfield, dated June
`
`16, 2017, in IPR2017-01608 (Ex. 1003 in the foregoing IPR) (referring to
`
`“singulate” or “individualize”)); Ex. 2002 at ¶ 37 (Declaration of Dr. Stanley R.
`
`Shanfield, dated June 16, 2017, in IPR2017-01623 (Ex. 1103 in the foregoing
`
`IPR)). Because of this fundamental difference—which is not surprising given that
`
`the ʼ411 patent is focused on a singulated light emitting device, which Loh does
`
`not describe—Loh does not anticipate the Challenged Claims of the ʼ411 patent
`
`(Ground 1). Moreover, Petitioners make no argument as to why that limitation—
`
`and the corresponding claims—would have been obvious in view of Loh either
`
`alone (Ground 2) or in combination with other references (Grounds 3-5). As such
`
`Petitioners have failed to establish a reasonable likelihood that at least one
`
`challenged claim is unpatentable for this second, independent reason.
`
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`3
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`II. BACKGROUND OF THE TECHNOLOGY
`A. Overview of LED Technology
`The ʼ411 patent is directed to the design of a singulated LED device with
`
`particular features and benefits over prior LED technology. See generally Ex.
`
`1001 at 3:26-37. LEDs are used in a variety of applications, including LCD
`
`backlighting for cell phones, laptops computers, and televisions; video display
`
`applications, such as billboards and scoreboards; automotive applications, such as
`
`interior and exterior vehicle lighting; and general lighting, such as lightbulbs. Id.
`
`at 1:18-22.
`
`The light emitting component of an LED is a semiconductor “chip” that
`
`emits light when a current is applied. Id. at 1:26-30. In most instances, one or
`
`more LED chips are encompassed in a larger structure called the LED “package,”
`
`resulting in a packaged “LED device.” See Nichia Corp. v. Everlight Ams., Inc.,
`
`855 F.3d 1328, 1332-33 (Fed. Cir. 2017). The LED package protects the chip(s)
`
`from environmental damage, determines the propagation and color of the emitted
`
`light, provides an electrical and structural connection with the product in which the
`
`LED device is used, manages heat dissipation, and performs other functions. Id.;
`
`see also Ex. 2003 at 93, Zhu and Humphreys, Solid-State Lighting Based on Light
`
`Emitting Diode Technology (2016) (“LED packaging is also critical to achieve
`
`high luminous efficiency, dissipate heat generated from the LED chip, improve
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`reliability and lifetime and control the colour for specific requirements, as well as
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`to protect the LED chips from damages due to electrostatic discharge, moisture,
`
`high temperature and chemical oxidation.”). Each element of the package design
`
`can affect the LED device’s operation. Ex. 2003 at 102.
`
`The ʼ411 patent
`
`B.
`The ʼ411 patent claims novel, non-obvious singulated light emitting devices,
`
`
`
`which are made using a simple, low-cost method that is significantly more efficient
`
`than prior methods. An embodiment is shown in FIGs. 1 and 2, reproduced below:
`
`
`Ex. 1001. The specification of the ʼ411 patent describes the light emitting device
`
`100 as follows:
`
`
`
`
`
`
`
`
`
`*
`
`*
`
`*
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`A light emitting device 100 … has a resin package 20 in which
`a resin part 25 and leads 22 are formed in the substantially same plane
`in outer side surfaces 20b.
`
`
`
`
`The resin package 20 is formed with the resin part 25 which
`mainly contains a light reflecting material 26, and the leads 22. The
`resin package 20 has the outer bottom surface 20a in which the leads
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`*
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`*
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`*
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`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. In the resin package 20, the concave part
`27 having an inner bottom surface 27a and inner side surface 27b is
`formed. The 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. In the concave part 27 of the resin package 20, a sealing
`member 30 which covers the light emitting element 10 is arranged.
`The sealing member 30 contains a fluorescent material 40. The light
`emitting element 10 is electrically connected with the leads 22
`through wires 50. The leads 22 are not arranged on the outer upper
`surface 20c of the resin package 20.
`
`
`
`
`
` …
`
` In a method for manufacturing a light emitting device which is
`described below, notch parts 21a are provided in a lead frame 21 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.
`
`
`In the resin package 20, the leads 22 are exposed from the four
`corners. The leads 22 are exposed in the outer side surfaces 20b, and
`are not subjected to plating processing….
`
`Ex. 1001 at 6:38–7:13.
`
`According to some embodiments, the lead frame used to form the devices is
`
`etched. This etching may result in concavities in the side surfaces of the notches.
`
`Ex. 1001 at 9:37-39. Moreover, when singulated, resin is present in the regions
`
`below the exposed metal leads at the outer lateral surfaces in some embodiments.
`
`This improves adhesion of the resin part to the metal leads, which is one of the
`
`stated goals of the ʼ411 patent. See, e.g., Ex. 1001 at 16:51-54 (“An etched lead
`
`
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`frame is used for the leads 322. In the cut surface of the resin-molded body, the
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`Case IPR2018-00601
`Patent 9,490,411
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`etched leads 322 have a concavity and convexity. This concavity and convexity
`
`improve adhesion between the resin part and leads.”); 9:37-42 (“However, etching
`
`can form concave-convex shapes in the entire sectional (etched part) part of the
`
`lead frame, so that it is possible to increase a bonding area between the lead frame
`
`and resin-molded body and mold a resin package of better adhesion”); and 2:32-37.
`
`Claim 1 is the only challenged independent claim and recites
`
`1. A light emitting device comprising:
`
`a resin package comprising a resin part and a metal part including at
`least two metal plates, said resin package having four outer lateral
`surfaces and having a concave portion having a bottom surface; and
`
`a light emitting element mounted on the bottom surface of the
`concave portion and electrically connected to the metal part,
`
`wherein at least a portion of an outer lateral surface of the resin part
`and at least a portion of an outer lateral surface of the metal part are
`coplanar at an outer lateral surface of the resin package,
`
`wherein both a part of the metal part and a part of the resin part are
`disposed in a region below an upper surface of the metal part, on
`four outer lateral surfaces of the resin package, and
`
`wherein a notch is formed in the metal part at each of the four outer
`lateral surfaces of the resin package.
`
`Ex. 1001 at 19:33-50 (emphasis added).
`
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`III. PERSON OF ORDINARY SKILL IN THE ART
`A.
`Field of the Invention/Relevant Art
`The field of invention relates to LED package design. Multiple design
`
`challenges must be addressed, including electrical, optical, heat conduction,
`
`adhesion, and mechanical challenges, which can be contradictory and can pull the
`
`design in different directions. See Nichia Corp., 855 F.3d at 1332-33. This was
`
`particularly true as of the time of the invention. Moreover, at the time of the
`
`invention, textbooks on LED package design were very limited, and Patent Owner
`
`is not aware of any seminal text focusing on LED packaging applications. Ex.
`
`2004 at 15. Indeed, the field of invention was very unpredictable at the time of the
`
`invention of the ʼ411 patent. Nichia Corp., 855 F.3d at 1339 (district court’s
`
`finding on a motivation to combine was not clearly erroneous because “artisans in
`
`this field face myriad design challenges because small design changes may cause
`
`unpredictable results and because design considerations often pull in multiple
`
`directions.”).
`
`B.
`Level of Ordinary Skill
`The definition adopted by the district court in the Everlight case involves a
`
`higher level of skill than indicated by the Petitioners. Nevertheless, Patent Owner
`
`does not challenge Petitioners’ definition for purposes of this preliminary response.
`
`Indeed, “in general, a lower level of skill in the art favors a determination of
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`nonobviousness, while a higher level of skill favors a finding of obviousness.”
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`Patent 9,490,411
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`AVX Corp. v. Greatbatch, Ltd., IPR2014-00697, Paper 57 at 8 n.4 (PTAB Oct. 21,
`
`2015) (citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323
`
`(Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a
`
`determination of nonobviousness, and thus the patentee, while a higher level of
`
`skill favors the reverse.”)). This is particularly true in a challenging field like LED
`
`design where a multitude of considerations ranging from heat, optical and
`
`electrical conduction and mechanical challenges, not to mention manufacturing
`
`issues. Nichia Corp., 855 F.3d at 1332-33 and 1337.
`
`IV. RELEVANT CLAIM TERMS AND CLAIM CONSTRUCTION
`
`There are two phrases used in the Challenged Claims that dispose of the
`
`Petition. First, the claim limitation “both a part of the metal part and a part of the
`
`resin part are disposed in a region below an upper surface of the metal part, on
`
`four outer lateral surfaces of the resin package” in claim 1 is not present in any
`
`asserted reference. Ex. 1001 at 19:45-48 (emphasis added). Patent Owner
`
`identifies this phase only because it is missing from the asserted references.
`
`Notably, Petitioners did not put forth any definition for this claim limitation, much
`
`less anything that would arguably read on Loh or the other asserted references.
`
`
`
`Second, the Challenged Claims also refer to a “resin package.” That phrase
`
`is expressly defined in the ʼ411 patent as referring to “a singulated light emitting
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`device.” Ex. 1001 at 3:33-36. Lexicography, such as the foregoing, applies even
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`Case IPR2018-00601
`Patent 9,490,411
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`under the broadest reasonable interpretation (“BRI”) standard used by the PTAB.
`
`Nestle USA, Inc. v. Steuben Foods, Inc., 686 Fed. Appx. 917, 918-19 (Fed. Cir.
`
`2017); MPEP 2111.01 § IV. Moreover, the asserted reference to a singulated light
`
`emitting device is not trivial. The ʼ411 patent addresses issues with singulated
`
`devices such as adhesion after singulation, see, e.g., Ex. 1001 at 2:35-37, and
`
`provides significant improvements over existing LED technology. See, e.g.,
`
`Nichia Corp., 855 F.3d at 1332-33 and 1336-37; Ex. 1001 at 3:26-30.
`
`
`
`Finally, as the PTAB applies BRI, Patent Owner does not concede any
`
`particular construction under the Phillips standard applicable in other forums,
`
`either expressly or implicitly through any arguments contained herein and reserves
`
`the right to take different positions on claim construction under the different claim
`
`construction standard used in other forums.
`
`V. ALLEGED PRIOR ART REFERENCES
`A. Loh
`The device described in Loh is fundamentally different than the device
`
`recited by the Challenged Claims. Whereas the ʼ411 patent claims singulated light
`
`emitting devices, Loh discloses only individually manufactured LEDs. Ex. 1004 at
`
`abst. and ¶7 (referring to a “modular package” for a light emitting device). Loh is
`
`completely silent regarding singulation. The differences in the designs are
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`deliberate. In Loh, the concern is how to get heat away from the device using a
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`heat sink. Ex. 1004 at ¶ 63. In contrast, the ʼ411 patent claims novel, non-obvious
`
`singulated light emitting devices that allow for significant manufacturing volumes,
`
`efficiently, at low cost and without sacrificing adhesion between the resin and
`
`metal parts. See, e.g., Ex. 1001 at 19:33-50.
`
`B. Mori
`Mori discloses a light emitting device. In the Petition, Petitioners rely on
`
`Mori for the disclosure of the use of two kinds of phosphors in a sealing member.
`
`Paper 1 at 16-17. Petitioners do not assert that Mori cures the above-described
`
`deficiencies of Loh.
`
`C. Wang
`Wang also discloses an LED package, but one that is different than that
`
`
`
`claimed in the ʼ411 patent. This is illustrated below in Figure 4:
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`Paper 1 at 19. In the Petition, Petitioners rely on Wang for the disclosure of
`
`electroplating the entire lead frame on all surfaces and cutting the lead frame after
`
`molding to separate the light emitting device. Id. at 18-19. Again, Petitioners do
`
`not assert that Wang cures the above-described deficiencies of Loh.
`
`D. Oshio
`Oshio also discloses an LED package, but one that is different than that
`
`claimed in the ʼ411 patent. This is again shown in Figure 4:
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`Id. at 20. In the Petition, Petitioners rely on the disclosure in Oshio of plating the
`
`entire lead frame on all surfaces and cutting the plated lead frame to form an
`
`unplated outer side surface on the lead in manufacturing an LED package. Paper 1
`
`at 19-21. Once again, Petitioners do not assert that Oshio cures the above-
`
`described deficiencies of Loh.
`
`VI. GROUNDS IN THE PETITION
`
`There are five different grounds in the present Petition. Each fails to meet
`
`the threshold for instituting an IPR as discussed in more detail herein.
`
`A. Ground 1 – Claims 1-3, 5-8, 13, 15 and 19-20 anticipated by Loh
`(§ 102)
`
`B. Ground 2 – Claims 1-3, 5-8, 13, 15 and 19-20 rendered obvious by
`Loh (§ 103)
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`C. Ground 3 – Claim 10 rendered obvious by Loh in view of Mori
`(§ 103)
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`D. Ground 4 – Claims 16-18 rendered obvious by Loh in view of Wang
`(§ 103)
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`E. Ground 5 – Claim 18 rendered obvious by Loh in view of Wang and
`Oshio (§ 103)
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`VII. STATEMENT OF SPECIFIC REASONS WHY NO IPR SHOULD BE
`INSTITUTED FOR THE CHALLENGED CLAIMS
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`A petition for IPR may be granted when “the information presented in the
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`petition … shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
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`§ 314(a); see 37 C.F.R. § 42.108(c). Petitioners bear the burden of showing that
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`this statutory threshold has been met. See 37 C.F.R. § 42.104(b); Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) (hereinafter
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`“Practice Guide”) (“The Board … may institute a trial where the petitioner
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`establishes that the standards for instituting the requested trial are met….”).
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`Here, Petitioners have failed to make the requisite showing. As discussed in
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`more detail below, Ground 1 fails because Petitioners have not identified two
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`distinct claim limitations of the ʼ411 patent in Loh:
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`“both a part of the metal part and a part of the resin part are disposed
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`(1)
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`in a region below an upper surface of the metal part, on four outer lateral
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`surfaces of the resin package,” (Ex. 1001 at 19:45-48); and
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`(2)
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`a singulated light emitting device.
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`Ground 2 similarly fails because Petitioners have only engaged in a cursory
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`obviousness analysis, without including a discussion of the scope and content of
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`the prior art, the differences between the claimed invention and the prior art, any
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`specific modifications to correspond to the limitations of the Challenged Claims,
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`and any motivation for making such a change along with establishing a reasonable
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`expectation of success. Indeed, for claim Element 1.D, Petitioners simply cite to
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`the discussion of Element 1.C and state that “[i]t would have been obvious to a
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`POSITA, that the regions between the leads (see Fig. 7) are filled with resin.”
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`Paper 1 at 31. That is not even what Claim 1 requires.
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`Grounds 3-5 similarly fail. Petitioners never assert that the additional
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`references—Mori, Wang and Oshio—cure the deficiencies of Loh. Because
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`Petitioners have not established that those limitations are present in any of the
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`asserted references, they have failed to carry their burden.
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`A. Ground 1 Fails to Demonstrate a Reasonable Likelihood
`that any Challenged Claim Would be Found Unpatentable
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`Petitioners allege that claims 1-3, 5-8, 13, 15 and 19-20 are anticipated by
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`Loh. Petitioners are wrong for at least two independent reasons.
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`First, claim 1—the only independent claim—requires that both a part of the
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`metal part and a part of the resin part are disposed in a region below an upper
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`surface of metal part on four outer lateral surfaces. In Loh, there is no resin that is
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`below the upper surface of the metal part on at least two of the outer lateral
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`surfaces of the device.
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`In the relied-upon embodiment of Loh, there is both resin material, which is
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`shown in blue, and metal parts (i.e., “leads”), which are shown in grey:
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`See Paper 1 at 30 (without annotations); Ex. 1004, FIG. 7 (color added), ¶¶ [0080]-
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`[0082] (referring to “package body 230” and “the second electrical leads 204,
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`which extend from a side of the package opposite the first electrical leads 206”).
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`However, there is not “both a part of the metal part and a part of the resin part …
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`disposed in a region below an upper surface of the metal part, on four outer
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`lateral surfaces of the resin package,” as required by claim 1 (emphasis added).
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`Indeed, Petitioners admit that Loh only discloses regions between the leads filled
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`with resin. Paper 1 at 31.
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`With respect to this feature of claim 1, the Petition has identified the
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`following surfaces, highlighted in yellow, as the “outer lateral surface[s].”
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`See Paper 1 at 30 (without annotations); Ex. 1004, FIG. 7 (color added). The upper
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`surfaces of the metal part at one of these surfaces are circled in red below:
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`Ex. 1004, FIG. 7 (color and annotations added). As is clear from the foregoing,
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`and contrary to the Petition’s assertions, there is no “part of the resin part …
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`disposed in a region below an upper surface of the metal part,” at all four of the
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`outer lateral surfaces, as is required by claim 1. Rather, two of the alleged outer
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`lateral surfaces identified by Petitioners (marked with leads 206 and 204) have
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`only metal below the upper surface of the metal part, as illustrated in purple in the
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`following:
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`Ex. 1004, FIG. 7 (color added). Accordingly, Loh fails to teach, and would not
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`have suggested, this feature of claim 1. Moreover, Petitioners admit that Loh
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`discloses regions between the leads filled with resin. Paper 1 at 31.
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`Instead of resin below an upper surface of the metal part on all four outer
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`lateral surfaces of the resin package, what is shown in Loh is only resin to the “left
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`and right sides” of a metal part on two of the four alleged outer lateral surfaces.
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`Indeed, this was recognized by Petitioners in related IPR2018-00699 regarding the
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`ʼ071 patent, in which Petitioners pointed to the exact same features as allegedly
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`disclosing “the resin part is located at left and right sides of a portion of the metal
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`part”:
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`Ex. 2005 at 14-15 (emphasis added); cf. Ex. 2006 at 19:31-33. For comparison
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`purposes, Petitioners’ argument with respect to the present claim is shown below:
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`Paper 1 at 29 (emphasis added). As Petitioners explains in the later filed Petition
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`directed to the ʼ071 patent, “the resin part is located at left and right sides of a
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`portion of the metal part” (Ex. 2005 at 30-31 (emphasis added)); it is not disposed
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`in a region below an upper surface of the metal part, as required by the Challenged
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`Claims of the ʼ411 patent. The inconsistent positions taken by Petitioners in the
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`two Petitions is further evidence that Petitioners’ position is incorrect. This is only
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`reinforced by Petitioners’ admission that Loh discloses resin between the leads.
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`Paper 1 at 31.
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`The testimony of Petitioners’ expert, Dr. Shanfield, is similarly unhelpful to
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`Petitioners on this issue and obviousness. For instance, at ¶ 90, Dr. Shanfield
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`states the following:
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`Moreover, alternatively, at minimum, as discussed above with respect
`to Element 1.C (¶ 84), it would have certainly been obvious to a
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`POSITA, that the regions between the leads in Loh (as shown in
`Figure 7 above) are filled with resin, such that a part of the metal part
`and a part of the resin part are disposed below an upper surface of the
`metal part on four lateral surfaces of the resin package.
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`Ex. 1003 (emphasis added). Thus, the only testimony regarding obviousness with
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`respect to this feature is that it would have been obvious to have resin next to leads
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`(i.e., “between the leads”), rather than “in a region below,” as required by claim 1.
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`Indeed, Dr. Shanfield provided nearly identical testimony in the related IPR to
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`explain why this aspect of Loh discloses “left and right”:
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`Moreover, alternatively, at minimum, as discussed above with respect
`to Element 1.C (¶ 94), it would have certainly been obvious to a
`POSITA, that the regions between the leads in Loh (as shown in
`Figure 7 above) are filled with resin, such that the resin part is loc